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Newsletter no. 6 – Hong Kong, May 2009Foreword
Welcome to the sixth issue of the Newsletter of the IPRs Desk in Hong Kong.
We have continued our report on the recent Civil Justice Reform. In this issue we focus on the points to note on the
new rules on case management. This marks a significant change in the attitude of the courts. As such parties and
practitioners should pay attention to the new litigation culture when considering their cases.
In respect of new IP cases, we have reported one revocation regarding the use of the Chinese mark of Dettol. There
are also two interesting patent cases. Octopus Cards v ODD.HK is a case of successfully revoking two short-term patents
involving circuit chip case and electronic purse in which the Court confirmed the tests for novelty and inventiveness of short-
term patents. In Abbott v Pharmareg Consulting Co. Ltd. and Yin’s Trading Co. Ltd., the Court granted an interlocutory
injunction in favour of the plaintiffs against the defendants in an infringement claim. The case provides useful reference for
application for interlocutory injunctions.
As to the series of comparing Hong Kong and Macao laws, we have introduced the design laws in both regions in
this issue. The similarities and differences between the laws in both jurisdictions are listed in a table for easy reference.
Finally we conclude this issue with news from the IP scene of Hong Kong last month including the results of the
Survey on Business Attitudes to Intellectual Property, invitation to practitioners to participate in the Survey on Filing of
Trademark Applications in the Mainland and the World Intellectual Property Day.
Dr. Graziano Severini
Head of Intellectual Property Rights Desk
Hong Kong
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Newsletter no. 6 – Hong Kong, May 2009
Civil Justice Reform – Case Management
As reported in the previous issue of our newsletter, the
underlying objectives of the Civil Justice Reform aim to
enhance cost-effectiveness of practice and procedure and to
ensure that a case is dealt with as expeditiously as possible to
achieve justice.
In order to realise the objectives under Order 1A of the
Rules of High Court, Order 1B vests the Court with express
power to actively manage the case so that it would not be party-
led. The Court now has the active power to make an order to
do the following:
a) Extend or shorten the time for compliance;
b) Adjourn or bring forward a hearing;
c) Require a party or a party’s legal representative to attend
the Court;
d) Stay the whole or part of any proceedings;
e) Consolidate proceedings; and
f) Exclude an issue from consideration.
Where appropriate, the Court could impose on their
order, a condition to pay a sum of money into court as security
for any sum payable by that party to any other party and specify
the consequences of failure to comply with the order or a
condition.
The Court may also make an order at is own motion (i.e.
without application from the parties) with or without a hearing.
In fact, before the Court has made any orders, parties
are required to set out issues to be decided at a very early
stage. According to Order 25, each party shall, within 28 days
after the pleadings in an action are deemed to be closed,
complete and exchange a questionnaire in the prescribed form.
The form of the comprehensive questionnaire is set out
in the Practice Direction. It requires confirmation from the
parties if they have any intention to settle, whether any
amendments would be made to the pleadings, any further and
better particulars would be requested and whether list of
evidence or witness has been filed. One thing to note is that
the questionnaire is in fact a declaration to be made by the
parties or their legal representatives and should therefore be
completed with great care.
After the questionnaire is completed, the Court may give
directions relating to the management of the case, fix the
timetable or fix a case management conference if it thinks fit.
The timetable fixed will consist of milestone dates which include
the date of a case management conference, a pre-trial review
or the trial itself. A milestone date will not be altered unless
there are exceptional circumstances justifying the variations.
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Newsletter no. 6 – Hong Kong, May 2009As for non-milestone dates, they could be altered by
means of a consent summons procured by the parties or, in the
absence of any agreement, the parties could apply for a Court
order to alter the date. A Court order, however, would not be
granted lightly. The Court would not order a change unless
there are sufficient grounds.
Recently, in the District Court where similar rules are
adopted, the Judge criticised harshly on the non-compliance of
the parties on the deadlines to adduce expert evidence reports
in a personal injury case (Ip Sau Lin v Hospital Authority
[DCEC584/2007]). The District Court was particularly annoyed
by the fact that the parties not only missed the relevant
deadlines but the Court was also not duly notified with the non-
compliance. The Judge opined that if the Court was kept in the
dark, the purpose of efficient and active case management
would not be achieved as the case would be party-led instead
of being actively managed by the Court. The Judge also
cautioned the parties that the Court could refuse extensions of
time in these circumstances.
Furthermore, the parties in that case had, at a direction
hearing, failed to adduce relevant supporting documents,
leaving the Court no choice but to adjourn the hearing. The
Judge warned that a wasted hearing may well be visited with
costs and other sanctions.
The District Court case was heard in late March, a few
days before the Reform came into effect on 2 April.
Nevertheless, the judgment gives an important reference as to
the attitude of the Courts. In summary, active case
management will have the following impact on litigation:
Stricter deadlines
– although one could appeal for relief of sanctions, it
now appears that the Court would not allow delays
lightly.
Advanced preparation
– as the comprehensive questionnaire requires lots of
information and confirmations from the parties at the
very early stage, unmeritorious claims would have to be
discarded and evidence should be in place well in
advance.
Court-led case management
-It should be born in mind that the Court now plays a
very active role in case management and the parties
should always assist the Court and keep the Court
informed on the progress of the case in particularly non-
compliance of the Court’s order.
As quoted from the judgment: “disobeying court-
imposed case management directions and timetable without
good reason is not only breach of court order,… but is also a
serious subversion of the entire case management system
envisaged by the CJR.” ■Page 3
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Newsletter no. 6 – Hong Kong, May 2009Recent intellectual property cases
“滴露” (“Di Lu” in mandarin)(“Dettol”) [HCA2073/2008]
This is a High Court case of passing off between the
Reckitt & Coleman group and two Chinese individuals over the
unauthorised use of the marks of “滴露”, the Chinese name of
“Dettol”, a commercial liquid antiseptic.
The facts are simple: The plaintiffs have been using the
mark “滴露” on their disinfectant and cleansing products in
Hong Kong for decades. The 2nd defendant registered two
marks of the words “滴露” with the Hong Kong Trade Marks
Registrar in 2006 and 2007 and assigned the registered marks
to the 1st defendant. Both defendants later requested the
plaintiffs to pay HK$4 million for the registrations or else they
would seek injunction against the marketing of the plaintiffs’ the
products. The 1st defendant later proceeded to commence an
infringement action against the plaintiffs.
In this action, the plaintiffs seek remedy of passing off
against the defendants. In order to establish a case of passing
off, the plaintiffs have to show (1) they enjoy reputation and
goodwill in the mark; (2) the defendants have made
misrepresentation or threatened to make a misrepresentation
that their goods are related to the plaintiffs’ and (3) the plaintiffs
have suffered or likely to suffer damages due to the defendants’
misrepresentation.
In this case, the plaintiffs had no difficulty in proving their
use of the marks in Hong Kong. The Court of First Instance
also found that there had obviously been misrepresentation as
the defendants were aware of the plaintiffs’ reputation in the use
of the marks when they applied for registration and the use of
the marks by the defendants would be confusing to customers.
The Court also found that needless to say such
misrepresentation was likely to cause damages to the plaintiffs.
Eventually, the plaintiffs succeeded in establishing a
case of passing off. The Court ordered the registered marks to
be transferred to the plaintiffs and ordered that the plaintiffs
were entitled to costs on indemnity of HK$540,000. Costs on
indemnity basis means all reasonable costs would be awarded.
This is a more generous award and is usually ordered for cases
brought for improper purposes.
A major lesson of this case is that again, foreign
businesses should register their Chinese names as early as
possible, preferably before entering into the Chinese market.
Furthermore, it is interesting to note that the applications for
registration of such a famous mark by mere individuals were
accepted by the Registrar in the first place. Under these
circumstances, individual applicants should be required to
adduce proof that the marks are not applied for registration in
bad faith under section 11(5)(b) of the Trade Marks Ordinance.
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Newsletter no. 6 – Hong Kong, May 2009
The judgment obtained in this case is a summary
judgment. Application for a summary judgment by a
plaintiff in a case or claimant in a counterclaim of the case
is an expedite way to dispose of obviously unmeritorious
case. Such judgment would be granted if there is no
defence and the Court has to be satisfied that there is no
triable issue.
Octopus Cards Limited v ODD.HK Limited -
Revocation of short-term patents No. HK1086445 and
No. HK1086155 [HCMP 104/2007]
The plaintiff, Octopus Cards Limited, applied to
revoke two short-term patents, namely patent no.
HK1086445 (“chip case”) and patent no. HK1086155
(“electronic purse“) of the defendant on the grounds that
both patents lack novelty and inventive step.
The Court confirmed that the test for novelty should
follow the English case The General Tire & Rubber
Company v The Firestone Tyre and Rubber Company Ltd
[1972] RPC 457 . To determine if a patentee’s claim has
been anticipated by an earlier publication, comparison
should be made between the earlier publication (as interpreted
at the date of publication) and the patentee’s claims (as
interpreted as at the date of the publication of the patent). If the
earlier publication discloses the same device as construed by
the patentee’s claim, the patentee’s claim has been anticipated.
Whether the patentee’s claim is new is a question of fact. It is
possible that the languages used are different but the same
device is resulted as the patentee and the prior inventor may
have approached the same device from different starting points.
Therefore, despite the different use of languages, if carrying out
the directions in the prior inventor’s publication will inevitably
amount to infringement of the patentee’s claim should the
patent be valid, the patent’s claim would not be considered
novel.
As to the test whether a patent involves an inventive step,
the Court adopted the test in the English case Pozzoli SpA v
BDMO SA[2007] FSR37. First of all, the notional “person
skilled in the art” and the relevant common general knowledge
of that person should be identified. Next, the inventive concept
of the claim in question should be identified or construed. The
inventive concept so identified or construed should then be
compared with the matter cited as forming part of the “state of
the art” to see if any differences between them exist. Finally,
one has to ask whether such differences are obvious to the
person skilled in the art who has no knowledge of the alleged
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Newsletter no. 6 – Hong Kong, May 2009invention as claimed or whether those differences constitute
steps that needs any degree of invention. If such differences
are obvious to the person skilled in the art, no inventive steps
would be considered being involved,
The plaintiff has adduced evidence of prior inventions
including those that are patented or unpatented of very similar
nature. It is not surprised that in applying the tests, the Court
found that both patents lacked novelty and were obvious as the
patents in question were relatively simple devices and the
claims drafted were wide in scope.
It is the correct strategy adopted by the plaintiff to initiate
the revocation proceedings. Otherwise, there will be risk that
the plaintiff’s products could infringe the patents in question.
The Octopus Cards Limited operates the well-known
Octopus cards in Hong Kong, a contact-less smart card that
could be used to pass over a reader to ride on almost every
train, bus or ferry, for retail transactions and parking. The card
could also be used to access schools, office buildings and
housing estates. According to the statistics of the company at
http://www.octopuscards.com, over 19 million Octopus cards
are now in circulation with 95% of the population aged between
16 to 65 possessing the card. Additionally, over 10 million
transactions are processed by the Octopus cards per day,
valued at HK$85 million.
Page 6
Abbott GMBH and Abbot Laboratories Limited v Pharmareg
Consulting Co. Ltd. and Yin’s Trading Co. Ltd.
[HCA166/2009]
The remedy of injunction against infringing activities is
often found to be useful in protecting intellectual property rights
and preventing further damages from infringers.
The plaintiffs in this case applied for an interim injunction
to prevent the defendants from manufacturing, putting into
market, using or importing the infringing products before trial.
Their patent (No. HK1006002) concerned covers the use
of a chemical compound commonly known as Sibutramine in
the making of medicines for treating obesity. The defendants
have imported and distributed products with the active
ingredient Sibutramine and were claimed by the plaintiffs as
having infringed their patent.
The Court confirmed that the plaintiffs need not prove “at
least a high likelihood of success at trial”. It would suffice if the
plaintiff could show “at least good prospects of success at trial”.
Having considered the evidence, the Court was convinced that
the products obtained by means of the process protected by the
patent had been imported, possessed and then put on the
market in Hong Kong. As such the Court was satisfied that the
plaintiffs were highly likely to succeed in establishing
infringement at trial.
»다섯째 수준
Newsletter no. 6 – Hong Kong, May 2009Another issue discussed was whether damages would be
adequate for the loss of the plaintiffs. Here the patent involved
would expire in November 2009. The plaintiffs testified that
upon expiration of a drug patent, other manufacturers and
distributors would launch their much cheaper generic equivalent
of the drug. To meet competition, the patent holder would
usually launch a lower-priced equivalent of their patented drug
about 6 months prior to expiry. However, as the defendants
were selling infringing drugs in 2008, the plaintiffs were forced
to bring forward the launch to mid-2008 and suffered
considerable losses. The Court was satisfied that unless the
defendants were restrained, they would be able to build up a
position of strength in the market during the remaining term of
the patent and had an edge over the plaintiffs after expiry. On
this basis, the Court found that the damage to the plaintiffs was
incapable of assessment and damages would not be an
adequate remedy. The interlocutory injunction was granted
against the defendants.
The Court dismissed the defendants’ argument that
there had been delay on the plaintiffs’ part in applying for the
injunction as it had been shown that the plaintiffs were only able
to obtain sufficient evidence at a later date.■
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Newsletter no. 6 – Hong Kong, May 2009
Design Laws of Macao Special Administrative Region
The registration of industrial models and designs in
Macao is governed by the Industrial Property Code.
In general, the industrial model and design registration
is a “first to file” system.
The registration of industrial model or design shall be
limited to creations whose appearance represents a product in
whole or in part by virtue of such characteristics as lines,
contours, colours, forms, textures and/or the materials used in
the product itself and /or its ornamentation. A product shall be
considered as any industrial or crafted article, including the
components for assembling a complex product, the packing,
graphic symbols and typographic characters but excluding
computer programs.
Registrable industrial models and designs must be
novel and unique. Novelty means that identical industrial model
and design has not been published anywhere before application
or priority date. An industrial model and design is regarded as
published if it has been shown in an exhibition, used in the
commercial sector or if the design is well-known to the public.
Uniqueness means that the global impression of it on the
informed users differs from the global impression caused by any
industrial model or design published prior to the application or
priority date.
The registration does not protect the visual
characteristics that result exclusively from its technical function
or designs of a component which cannot use or form a product
by itself.
Registration confers on the registrant the exclusive right
to use the model or design and to prohibit its use by third
parties without consent. The use includes the sale of, import,
export or use of a product into which that industrial model or
design is incorporated as well as the storage of that product.
Registration may be cancelled in Macao when the
industrial model or design uses a distinctive sign that is
prohibited to use, when it constitutes an unauthorised use of
copyright work or when it constitutes improper use of elements
in a badge or emblem protected under the Paris Convention.
In Hong Kong, a registered design protects features of
shape, configuration, pattern or ornament applied to an article
by any industrial process. It also excludes visible features that
are dictated solely by the function which the article has to
perform or internal features that would not be visible during
normal use of the designed article. Also novelty is required for
registrability. Novelty means that the same design has not
been registered in a prior application or a design that has not
been published anywhere before the application date.
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Newsletter no. 6 – Hong Kong, May 2009
In addition, a design is not registrable in respect of an
article if the appearance of the article is not material, i.e. if
aesthetic considerations are not normally taken into account to
a material extent by persons acquiring or using articles of that
description. A design that is contrary to public order or morality
is also not registrable. As in Macao, computer programs are
also expressly excluded for registered designs in Hong Kong.
In Hong Kong, registration confers on the owner the
exclusive right to make in Hong Kong or import into Hong Kong,
for sale or hire, or for use for the purpose of trade or business or
to sell, hire or offer for sale in Hong Kong any article in respect
of which the design is registered and to which that design or a
design not substantially different from it has been applied.
The remedy of design infringement in Hong Kong is
civil only including injunction and claim for damages.
Falsification of register and false representation that a design is
registered would be criminal. Falsification of the register would
be liable to an offence subject to imprisonment of 2 years and a
fine. As for the offence of false representation of a design, only
a fine would be imposed.
Unlike Hong Kong, infringement of designs may
constitute a criminal offence in Macao. The unauthorised
reproduction of products incorporating whole or part of a
registered industrial model and design, exploitation of a
registered design or model or importing or distributing such
products would be punishable by imprisonment of up to 2 years
or by a fine. Also as in the case of patent, anyone who obtains
a registered industrial model and design in bad faith shall be
liable to imprisonment of up to 6 months or a fine. An
administrative fine of 20,000 to 500,000 patacas shall also be
imposed on one who claims to be the owner of an industrial
design or model without that right belonging to him or on one
who, being the owner of the design or model, uses it for
products different from those protected by the corresponding
title.
Attached on the next page is a table that compares the
design registration system in Macao and Hong Kong. ■
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Newsletter n. 13 - Seoul, April 2009Macao Hong Kong
Duration of protection Renewable for periods of 5 years up to a maximum 25 years from the date of application .
Renewable for periods of 5 years and to a maximum 25 years from the date of application.
Agent For non Macao residents or body corporate, they may have to appoint a Macao resident/body corporate/IP agent as a proxy.
An address for service in Hong Kong is required. As such, foreign entities that have no local branches or subsidiaries will need to appoint a local agent.
Priority Application filed within 6 months after the first application in any Paris Convention or WTO member could claim the right of priority. Priority must be claimed when application is filed.
Application filed within 6 months after the first application in any Paris Convention or WTO member could claim the right of priority. Priority must be claimed when application is filed.
Application process Both formality and substantial examinations would be carried out.
Only formality examination would be carried out.
Fees MOP1,000 per application for registration. HK$785 on filing application for registration of a single design plus HK$155 of advertisement fee per design.
Appeal of registration decisions
The applicant could appeal to the Court of First Instance within 1 month from the publication of notice of refusal or granting.
The applicant could appeal a decision or order of the Registrar to the Court of First Instance of the High Court of Hong Kong.
Opposition period A notice of application will be published after 12 months from the application or priority date. In the period between the publication date and the grant date, any third party may raise an opposition against the application.
Any person may apply to the Registrar to revoke a registration on the ground of public order or morality and any person wishing to oppose such application should file, a notice of opposition. Any person may also apply to the High Court to revoke a registered design on the ground that the design was not new or was not registrable.
Relationship with copyright
The effects of registration shall not prejudice the protection conferred by copyright law from the creation of the industrial model or design.
After 25 years from the year in which articles incorporating a registered design are first marketed, the artistic work from which the design is derived from may be copied without infringing copyright.
Languages Chinese or Portuguese Chinese or English
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Newsletter no. 6 – Hong Kong, May 2009
News in Brief
Survey on Business Attitudes to Intellectual Property
The Intellectual Property Department of the Hong Kong
Government (“IPD”) has recently released the results of the
Survey on Business Attitudes to Intellectual Property.
It is reported that a total of 1,001 business
establishments responded in the survey of which more than
92.1% were aware that IPRs included copyright, trademarks
and patents, 93.7% considered it necessary to protect IPRs in
Hong Kong’s business environment and 98.3% considered that
IP was a company’s valuable asset.
Furthermore, the majority (84.5%) of the business
establishments considered that the economic benefits of IPR
protection would help enhance the development of local
creative industries, 77.6% considered that IPR could create
business opportunity and wealth and 72.3% considered that
IPRs contributed to the overall development of Hong Kong’s
economy.
Additionally more than 52% of establishments shared
the view that the most serious consequence for a company
which infringed others’ IP was “criminal liability” which was
significantly higher than the 13.3% in 2006.
However, only 49.5% of the respondents were aware of
the new criminal liability that directors/partners might incur if
their companies possessed pirated software for business use
which was only introduced in 2008.
Also, 72.6% of the business establishments were not
aware that there were licensing schemes operated on behalf of
copyright owners which authorised copying of local newspaper
articles and books for use in business.
About 65% of the business establishments were also
not aware that registering a business or company name was
different from registering a trade mark. The misconception that
the use of a company name is equivalent in having a registered
trade mark reduces the effectiveness of trade mark protection
for the business establishments.
Also, 45.7% of the respondents were not aware that
they had to apply for separate registration of trade mark, patent
or design in the Mainland and in Hong Kong to gain protection
in both places. The unique situation of “one country two
systems” should be emphasised to avoid loss of protection due
to negligence to register their rights in the relevant jurisdictions.
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Newsletter no. 6 – Hong Kong, May 2009Survey on Filing of Trademark Applications in the Mainland
In April, the IPD has invited the legal practitioners of the
Law Society of Hong Kong to participate in a survey on the filing
of trademark applications in the Mainland.
This is joint efforts of the IPD of Hong Kong and the
Trademark Office of the State Administration for Industry and
Commerce (“TMO, SAIC”) in Beijing under the Mainland Hong
Kong Closer Economic Partnership Arrangement (CEPA). A
Trademark Working Co-ordination Group has been jointly
established under CEPA to institutionalise a regular
communication mechanism to strengthen exchanges and co-
operation in areas such as trademark registration and
trademark protection.
The survey targeted on law firms and asks for any
difficulties encountered in pre-application enquiry services,
layout of the application forms, the modes of filing (paper or
online), filing procedures, on-line search functions, the time
taken to examine and register marks as well as the handling of
oppositions and appeals of the decisions of the authority.
World Intellectual Property Day – 26 April
The World Intellectual Property Organisation (“WIPO”) has
set 26 April annually as the World Intellectual Property Day.
This provides a good opportunity for promoting the
importance of protecting intellectual property worldwide.
In the past, the IPD has organised activities such as
concerts or games day to strengthen public education and
enhancing awareness of the importance in upholding
intellectual property rights.
This year, the IPD is launching, on the World Intellectual
Property Day, a new “Mainland and Hong Kong Trademark
Column” in the websites of IPD and the TMO/SAIC (Chinese
version only) in Mainland. The new column provides
information on the opening up of trademark agency services in
the Mainland under CEPA and trademark registration systems
and related information of the Mainland and Hong Kong. The
website of IPD is www.ipd.gov.hk and the website of TMO/SAIC
is http://sbj.saic.gov.cn/.
The IPD is also distributing bookmarks in celebration of
the World Intellectual Property Day as part of their public
education programme. The bookmark is downloadable from
IPD’s website. ■
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