IP Litigation & Enforcement Guide in Hong Kong
There have been many questions and concerns about the procedure of IP litigation and IP enforcement in Hong Kong. However, in the IP industry in Hong Kong, we still haven’t had a clear guideline for rights holders as well as the parties related to its procedures. This article will address some common questions and concerns of the IP litigation and enforcement landscape in Hong Kong, primarily the sections revolving around civil and criminal enforcement.
Methods for enforcing IP rights in Hong Kong
The civil IP cases in Hong Kong
- The District Court has the jurisdiction to hear passing or copyright infringement cases up to a value of HK$3,000,000 (USD 385,000).
- The Court of First Instance (CFI) of the High Court has unlimited jurisdiction for all IP claims.
- Since 2019, an IP specialist list has been built in the CFI in order to hear IP cases. From then onward, nearly all IP actions have been registered in that list.
The procedures for civil enforcement in Hong Kong
- To initiate a civil action, the rights-holder must file a Writ of Summons and Statement of Claim setting out the Plaintiff’s claim in the form of notice pleading.
- After receiving the notice, the defendant can file a Defence and the plaintiff a Reply. In the case where the defendant does not defend the proceedings, a default judgment may be applied.
- After the pleadings have been closed, there will be discovery and the filing of witness statements. Lastly, the action is then set down for trial. The trial will be controlled by a judge, in the absence of a jury. During the trial, witnesses are called and cross-examined.
- A standard IP infringement case at first instance may take from 15 to 30 months from the date of the issue of the Statement of Claim through to trial. However, it should be noted that there are some instances where one can have a speedy trial timetable, reaching the Court within a year.
The languages of the proceedings
English and Chinese are both official languages in Hong Kong. The parties involved may choose to conduct the hearings in either language, English or China, or both simultaneously. If needed, the parties may require an interpretation service between the languages.
In general, most civil cases filed in Hong Kong are registered and heard in English. This situation happens when the judge and all counsel can understand and speak English fluently, or vice versa in Chinese.
However, if the judge and all counsel can speak English and Cantonese fluently, the trial may be conducted bilingually with witnesses giving evidence.
Interim injunctions and permanent injunctions
For Interim injunctions, the IP rights holders are empowered to grant an Interim injunction if the Plaintiff can establish that:
- If an injunction is not granted before trial it will suffer damage that cannot be compensated.
- There is a real issue to be tried, in the circumstance when the case is not trivial.
- The balance of convenience favors a grant of an injunction, in the circumstance when the least harm will be caused by the grant.
For permanent injunctions, the IP rights holders are empowered to request a permanent injunction. Permanent injunctions are generally granted as of right once liability is established. The public interest grounds on which a court may decide not to grant a permanent injunction are very narrow.
The criminal enforcement in Hong Kong
Criminal actions can be brought for trademark and copyright violations. The Hong Kong Customs and Excise Department (C&E) is the only government department that is capable of and responsible for bringing criminal prosecutions in IP cases. The Customs will seize the counterfeit products at the border and conduct enforcement actions against targets (including retailers) within the borders of Hong Kong.
If the Customs found goods that are determined to be counterfeit/infringing, C&E will seize the violating merchandise and press charges against the infringer. Each case varies depending on its severity and other elements. According to each distinct case, prosecutions are brought to the Magistrates Court or District Court.
It should be noted that the prosecutions can also be brought to the High Court, but the cases that satisfied the requirement to be taken to the High Court are extremely rare.
When the infringer has been prosecuted according to the law, the counterfeit/infringing merchandise will be ordered to be demolished. On the other hand, Customs can also bring criminal prosecutions concerning false statements made concerning services (Private prosecutions can be brought but are extremely rare)
The procedures for criminal appeals in Hong Kong
Appeals from magistracy verdicts might be made as of right to the Court of First Instance of the High Court. Appeals of District Court verdicts might be made as of right to the Court of Appeal. Second-level appeals can be made to the Court of Final Appeal with leave.
The IP treaties that Hong Kong is a member of:
- WTO – TRIPS Agreement
- WIPO Performances and Phonograms Treaty
- WIPO Copyright Treaty
- Patent Cooperation Treaty
- Nice Agreement
- Paris Convention
- Berne Convention
- Geneva Convention
- Universal Copyright Convention
***Other Articles***
– You could see Fee of Trademark in Hong Kong here
– You could visit here to see Procedure of Hong Kong Trademark Registration.
– You could visit here to check the required documents for filing trademark in Hong Kong
Contact AAA IPRIGHT: Email: info@aaaipright.com
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