Hong Kong

EUIPO calls for action as study finds fakes make up 3.3% of global trade

A new study from the EUIPO and the OECD has revealed the staggering rise in counterfeit goods being traded around the globe. In response, the executive director of the EUIPO has called for coordinated action.

EUIPO calls for action as study finds fakes make up 3.3% of global trade
12 Mar 2019

Alibaba reaches settlement, new Hong Kong IP director, and Swiss IP office issues fakes warning: news digest

In our latest round-up, we look at the New Zealand IP office issuing a stark warning against misleading mislead invoices, $1.1 million worth of counterfeits stopped on Canada-US border, and much more.

18 Oct 2018

“Leveraging the law is not the whole solution”: interview with Philip Morris’ Herman Cheung

In an exclusive interview, the tobacco giant's Manager of Illicit Trade Prevention talks to WTR about the importance of anti-counterfeiting efforts as the company transitions to a smoke-free future.

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26 Feb 2019

Trademarks (Amendment) Bill 2019 gazetted - what you need to know

The Trademarks (Amendment) Bill 2019, which empowers the registrar to make essential procedural rules to implement the Madrid Protocol in Hong Kong, was gazetted on 8 February 2019. Read more

20 Nov 2018

Hong Kong court issues landmark decision on use of trademarks in comparative advertising

In PCCW-HKT Datacom Services Ltd v Hong Kong Broadband Network Ltd, the Court of First Instance has provided guidance on the use of another party’s trademarks in comparative advertising. Read more

8 Aug 2018

AI boosts counterfeit seizures in Hong Kong; expert claims focus should be on small package detection

​​​​​​Customs authorities in Hong Kong have managed to increase the seizure rate of fake goods by one-third in the first half of 2018 thanks to the use of artificial intelligence. Read more

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Anti-counterfeiting

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18 May 2017

Procedures and strategies for anti-counterfeiting: China

China’s large manufacturing base and inconsistent IP enforcement have long made it one of the primary sources of global counterfeit and knock-off goods. In 2015 China’s official Xinhua news agency estimated that over $45 billion in fakes were available on Alibaba’s various e-commerce websites. That same year, US customs statistics indicated that 88% of fake goods seized in the United States (by value) originated in China. Read more

Brand management

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5 Oct 2016

Key trademark service providers are Asia-bound with completion of $3.5 billion Thomson Reuters deal

Thomson Reuters’ $3.55 billion sale of its IP business to Baring Private Equity Asia and Onex Corporation completed this week in a deal that highlights the growing demand for trademark strategy services in the region. Read more

Enforcement and litigation

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20 Nov 2018

Hong Kong court issues landmark decision on use of trademarks in comparative advertising

In PCCW-HKT Datacom Services Ltd v Hong Kong Broadband Network Ltd, the Court of First Instance has provided guidance on the use of another party’s trademarks in comparative advertising. Read more

8 Aug 2018

AI boosts counterfeit seizures in Hong Kong; expert claims focus should be on small package detection

​​​​​​Customs authorities in Hong Kong have managed to increase the seizure rate of fake goods by one-third in the first half of 2018 thanks to the use of artificial intelligence. Read more

12 Oct 2016

Hong Kong performs well in illicit trade rankings, despite massive counterfeit trade volume

The Economist’s Intelligence Unit and the European Chamber of Commerce in Singapore (EuroCham SG) today released a report measuring Asia-Pacific jurisdictions by the extent to which they enable illicit trade, including counterfeiting and piracy. Singapore itself has a somewhat disappointing placing, just outranking China and beaten by its larger neighbour Malaysia; while Hong Kong’s high placement is somewhat at odds with other measures of its contribution to the global counterfeiting trade. Read more

3 Oct 2016

EU customs seizures skyrocketed in 2015; concerns raised that counterfeit issue being ‘massively underestimated’

The European Commission’s latest annual report into EU customs enforcement has found that the level of suspected counterfeit articles detained by authorities rose by 15% year-on-year, with the number of applications for action up by a startling 59% across the same time period. While the estimated value of the detailed articles totals nearly €650 million, one expert claims the report could be massively underestimating the scope of the problem. Read more

Goverment/policy

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27 Apr 2017

Hong Kong moves closer to tobacco plain packaging; street vendors voice disappointment and anger, threaten protest

The Hong Kong government tabled a law yesterday that will substantially increase the size of mandatory health warnings on tobacco products and leave the autonomous territory a step away from full-blown ‘plain packaging’. The developments have led to complaints from tobacco vendors, which claim that they will lose business as consumers switch to counterfeits and grey-market cigarettes as a result of the changes. Read more

Law firms

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7 Nov 2016

Listed trademark firms look to Asia for growth as Spruson & Ferguson acquires Ella Cheong in $21 million deal

Trailblazing publicly traded IP law firm Spruson & Ferguson has made its first overseas acquisition with its parent company’s HK$162 million (US$20.9 million) purchase of Hong Kong-based boutique Ella Cheong and subsidiary Ella Cheong Intellectual Property Agency (Beijing). The deal will significantly expand Sprusons’ presence in Asia – a key objective in the growth plans of firms involved in Australia’s recent flurry of IP practice initial public offerings. Read more

IP offices

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29 Sep 2017

Opening the door to product placement in Hong Kong?

The Communications Authority (CA) of Hong Kong recently announced a review of the codes of practice governing product placement in television programmes. Based on a survey that found that most viewers do not find product placement advertisements objectionable, the CA held that there is room to relax the codes. Read more

Online

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5 Sep 2017

Time to revisit the two-year time bar in a ‘.cn’ complaint?

The China Dispute Resolution Policy governing the ‘.cn’ domain in China has a time bar which stipulates that no complaints concerning a ‘.cn’ registration over two years old will be accepted. The time bar has been criticised for imposing “unreasonable time limits” which prevent the fair and equitable enforcement of IP rights. Read more

1 Nov 2016

Access denied: an international perspective on ISP blocking injunctions

While the UK Court of Appeal has opened the door for broadband ISP blocking to combat trademark or copyright-infringing activities, the picture in the United States, China and Hong Kong is more complex Read more

Portfolio management

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5 Oct 2016

Key trademark service providers are Asia-bound with completion of $3.5 billion Thomson Reuters deal

Thomson Reuters’ $3.55 billion sale of its IP business to Baring Private Equity Asia and Onex Corporation completed this week in a deal that highlights the growing demand for trademark strategy services in the region. Read more

Trademark law

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19 Jul 2018

Well-known marks: multijurisdictional approaches to fame in Asia

Different approaches must be used to secure protection for well-known marks in different countries. This article considers the best route in key Asian jurisdictions. Read more

3 Apr 2017

SWISS certification mark opposition: court finds actual use likely to confuse

The Federation of the Swiss Watch Industry FH - the holder of the SWISS certification mark - has been successful in an appeal against a decision of the registrar of trademarks in opposition proceedings against the registration of the figurative mark SWISSBERNARD for "horological and chronometric instruments". The appeal decision is significant in that it is one of the rare cases in which the registrar’s decision has been set aside. Read more

6 Mar 2017

Government proceeding with plans to adopt Madrid Protocol

The Hong Kong government has announced that it is proceeding with plans to adopt the Madrid Protocol, following its consultation with interested parties in 2014. It is anticipated that the protocol will be available in Hong Kong in 2019 at the earliest. One interesting point is that international registrations based on applications filed in Hong Kong will not be permitted to designate Mainland China, and vice versa. Read more

12 Oct 2016

Hong Kong performs well in illicit trade rankings, despite massive counterfeit trade volume

The Economist’s Intelligence Unit and the European Chamber of Commerce in Singapore (EuroCham SG) today released a report measuring Asia-Pacific jurisdictions by the extent to which they enable illicit trade, including counterfeiting and piracy. Singapore itself has a somewhat disappointing placing, just outranking China and beaten by its larger neighbour Malaysia; while Hong Kong’s high placement is somewhat at odds with other measures of its contribution to the global counterfeiting trade. Read more

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