Most recent Lawful Update Convey [Intellectual Property (“IP”) Law] | 5 Landmark IP Circumstances of the Previous yr

Mental assets is a crucial component for financial progress

—Craig Venter

INTRODUCTION

For in excess of the past ten years, the Govt of Hong Kong SAR has been challenging at operate to catapult the metropolis into becoming a “entire world-course awareness-centered economy” and the town has succeeded in just about every sense of the term grew to become a top innovation and technological know-how hub.

No other jurisdiction in East Asia can we see equivalent level of funding (e.g. absolutely free income, the music to each and every entrepreneur’s ear) and support (e.g. incubation centres the likes of Science Park and Cyber Port). That reported, as rightly commented by Craig Venture, unless a jurisdiction have a sturdy status for mental assets legal rights defense, no actualization can be found. With the Typical Legislation custom and sturdy name for rule of legislation for civil dispute resolution, it can be very easily viewed why Hong Kong continues to be the decision innovation hubs for start off-ups to established up store at.

As these kinds of, in get to see how IP law carries on its ever journey of advancement and enhancement, the following are 5 primary landmark IP litigation selections of the earlier 12 months:

Big IP Situation Regulation DEVELOPMENTS (circa 2020 & 2021)

  1. MGA Enjoyment Inc and Combuy Co Ltd (康伯有限公司) [2020] HKCFI 642

1 of the most common defence used by IP infringement defence legal professionals is the jurisdiction challenge (functions purported in Mainland out of arrive at of Hong Kong Courts). In the MGA scenario, the Courts tackled the difficulty of jurisdiction of infringing actions.

In this situation, the Defendants is accused of advertising Counterfeit Dolls on a web-site. The Defence in common style raised the defence that the Internet site was only focused at the Mainland sector.

The Court, making use of facts, disagreed and held that the Web site was not basically targeting the Mainland market place as there experienced been overpowering proof to present that the normal customer of the items in problem is in point originated from Hong Kong and would therefore regard the Site and the ads thereon as becoming directed at people of Hong Kong.

In this situation, the Court docket precisely famous that the Website was presented in English and prospects any place in the planet (not just Mainlanders) could invest in the Counterfeit Dolls on the Web page.

The Defendant seems to have even further doomed their scenario when it was identified that Defendant had also joined the Hong Kong Trade Progress Council marketing the sale of their products and solutions. X’s enterprise playing cards distributed at the Exhibit, which was total of intercontinental prospective buyers, experienced the Site printed thereon. As such the promises ended up actionable in Hong Kong.

  1. Louis Vuitton Malletier v Cuvee XLV French Wine Ltd [2019] HKCFI 1963

The Louis Vuitton scenario touched on the problem of joint and quite a few liability for trademark infringement and passing-off. This situation is exclusive in that Plaintiff’s plea of joint tortfeasorship is set on two alternative bases, specially (i) common style and (ii) inducement and procurement.

To establish a declare based mostly on common layout, the scenario illustrates how the professing Plaintiffs have to set up two different needs:

  1. Initial, the 2nd Defendant must have acted in a way which furthered the fee of the alleged tort by the 1st Defendant and
  2. The 2nd Defendant will have to have done these an alleged act in pursuance of a prevalent design and style in purchase to do or to safe the carrying out of acts to be constituted as the tort.
  1. Kung Kin Wing v Splendid Earnings Global Holdings Ltd [2020] HKCFI 894

In acquisition of a organization, when deciding no matter if the belongings so transferred provided intangible belongings such as the Trade Name, the Trade Mark and the Goodwill of the Business enterprise, the Court docket opined in Kung King Wing that traders would be interested in the goodwill and not just the bodily belongings of the small business.

It is the goodwill and the trademark of the company which will make revenues in the potential, and it is these types of likely that would draw in traders to make significant investments in the company.

  1. Universal Songs Ltd v Neway Music Ltd [2019] 1 HKLRD 627

Illustrated in Universal Songs, the Copyright Tribunal could not make an order less than s.156(3) and (4) of the Copyright Ordinance to let Defendant to use Plaintiff’s KMVs in return for its payment to P thereof in any other case than in the context of a licence.

It was held that any get to be designed under s.156(3) was predicated on the existence of a plan below which a licence could be granted.

In this circumstance, considering that the Scheme had previously finished on 30 June 2015, the Tribunal was not in a place to make any purchase less than s.156(3) to verify or vary its terms to acquire outcome from 1 July 2015.

  1. Pccw-Hkt Datacom Companies Ltd and An additional v. Hong Kong Broadband Network Ltd [2018] 4 HKLRD 575

In the Pccw-Hkt situation, the situation of comparative promotion was examined the place it is expected that the defendant advertiser will not present the claimant’s merchandise in a significantly favourable way, so the claimant’s items are bound to be undermined even below an goal evaluation.

In a excellent news for many otherwise sarcastic people working in Hong Kong, the selection basically confirms that simply building enjoyable of competitor’s products or companies does not automatically total to trademark infringement. Sarcasm is thus saved.

Conclusion

Intellectual home has the shelf life of a banana.

—Bill Gates

All in all, the Courts of Hong Kong proceeds to make terrific strides in the direction of reinforcing the city’s status the place innovation are secured. With the MGA choice, we can see that common loophole defence is coming to a near. More, with much more and a lot more business using location practically, we can also see the Court’s much more sturdy mindset to making use of digital proof.

With the rollout of 5G technology and ongoing focus on FinTech and innovation by the town, we can anticipate that Hong Kong will go on its improvement of IP legal guidelines to far better secure innovators and business owners going into the foreseeable future. Bill Gates’ assertion may perhaps for that reason be put to the exam by the Courts of Hong Kong quickly.

This post is co-authored by Anna Lau of Ravenscroft & Schmierer