Hong Kong

Live updates: IP offices implement measures in wake of coronavirus crisis

As the novel coronavirus epidemic continues to spread across the globe, WTR provides an updated look at measures that national IP offices have launched in response.

Live updates: IP offices implement measures in wake of coronavirus crisis
Six counterfeit hotspots in Hong Kong that brand owners must be aware of
6 May 2020

Six counterfeit hotspots in Hong Kong that brand owners must be aware of

In the latest instalment in our regular series on marketplaces around the globe that are reportedly notorious for being counterfeit havens, we head to a region that is well known for being a hub for fake goods – Hong Kong.

How intellectual property transformed the e-sports industry: interview with Fnatic’s Andrew Cooke
27 Feb 2020

How intellectual property transformed the e-sports industry: interview with Fnatic’s Andrew Cooke

In a conversation with WTR, Andrew Cooke, general counsel of e-sports team Fnatic, reveals that an entire generation of e-sports athletes are waking up to the power of their IP as brands race to catch up with this rapidly evolving consumer market.

Latest

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9 Apr 2020

Hong Kong registrar finds for local distributor of international trademark owner

In a decision appearing to be contrary to internationally adopted principles of trademark law, the Hong Kong registrar has found that a local distributor was the rightful owner of a logo mark. Read more

28 Jan 2020

Japan Patent Office launches Trademark Fist, IP firm coronavirus response, and EUIPO updates Brexit information: news digest

In our latest edition, we look at Pablo Escobar’s IP being put up for sale, the Singapore registry visiting Turkey, Malta joining DesignClass, the Tajikistan IP Office giving its annual trademark update, and much more. Read more

10 Jan 2020

Luxury industry feels the burn from Hong Kong protests

High-end brands are not the only ones suffering the repercussions of social unrest as trademark activity at the local register plummets. Read more

9 Oct 2019

NBA crisis highlights the China conundrum for all brands

We speak with IP and PR experts on what brand owners must learn from the NBA's ongoing crisis in China, with one claiming that this is “the biggest trademark story of the year”. Read more

Anti-Counterfeiting

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20 Aug 2019

Tackling a $1.4 billion counterfeit problem: inside the CBP’s seizure numbers

As the value of counterfeit good seizures by the US authorities rises, a new call is made for private industry to work with domestic and international partner agencies in a bid to tackle demand as well as supply. Read more

18 Mar 2019

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. Read more

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. Read 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. 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.

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24 Nov 2015

The Contracts (Rights of Third Parties) Ordinance - impact on the licensing of trademarks

The Contracts (Rights of Third Parties) Ordinance (Cap 623), which will come into operation on January 1 2016, will have implications for IP contracts, such as trademark licensing. Among other things, any warranties concerning trademarks given by the trademark owner may be enforceable by the sub-licensee(s) directly in the event that any of the warranties are breached.

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9 May 2014

WTR’s unofficial guide to Hong Kong

Just over two years ago, the IP Media Group (IPMG), publisher of <I>World Trademark Review</I> and <I>Intellectual Asset Management</I>, opened its first office in Asia. Based in Wan Chai, Hong Kong, it was opened to allow IPMG to provide much greater coverage of Asia’s rapidly expanding IP markets. However, the real pay-off comes now. Based on extensive first-hand experience, the Hong Kong team can now give you the inside track on what to do, see and say while visiting the Pearl of the Orient for the INTA Annual Meeting.

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24 Oct 2013

Why Hong Kong’s parody consultation could impact trademark enforcement

Hong Kong is currently undertaking a public consultation exercise regarding the treatment of parody in its copyright regime. That process involves soliciting the views of interested stakeholders and then drawing up a proposal that strikes an ideal balance between copyright protection and freedom of expression. Brand owners are advised to keep an eye out, as any potential parody-related developments could be used as an additional weapon against trademark infringers, if the circumstances are right.

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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.

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12 Oct 2016

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

<i>The Economist</i>’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.

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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.

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Government/Policy

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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

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.

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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.

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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.

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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.

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IP Offices

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10 May 2016

First movement marks accepted for registration in Hong Kong

The Trademarks Registry has accepted two movement marks for registration in Hong Kong. Subject to any opposition being filed, the first registration of a movement mark should be granted in May.

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9 Mar 2015

Drastic changes to official fees to be introduced

As a result of a costing exercise, changes have been proposed to the official fees for filing an application, renewing a registration and requesting an official search. The most radical proposed change concerns the fee for requesting an official search, which would be increased by 100% from HK$200 to HK$400 for the first class of goods and services.

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3 Oct 2013

Consumer attitudes towards counterfeits in Hong Kong slowly changing

Although new research indicates that 73% of respondents in Hong Kong have purchased counterfeit products, more positive for brand owners is that the percentage that would do so again is dropping for certain industries. The findings provide practical takeaways for brand owners in other jurisdictions in terms of changing consumer attitudes towards fake goods.

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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.

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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

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29 Jul 2015

As counterfeit hawkers get younger and move to social media, Hong Kong Customs fights back with AI

People who sell fake goods online are no doubt aware that there is always a chance the interested shopper they are communicating with might be a law enforcement agent; but in Hong Kong, those potential customers might not even be humans at all. The Customs and Excise Department of the Special Administrative Region this week unveiled SocNet, a computer program that uses artificial intelligence to flag up suspicious vendors on social media sites - an anti-counterfeiting RoboCop of sorts. Read more

17 Mar 2015

'.hk' domain name registry launches '.hk' Watch

HKIRC, the ‘.hk’ domain name registry, has announced the launch of ‘.hk’ Watch, a domain name monitoring service solely dedicated to the ‘.hk’ domain name space that aims to protect brand owners and their brands from abusive domain name registrations. According to HKIRC, ‘.hk’ Watch will alert brand owners to newly registered domain names which could "potentially confuse or mislead" internet users.

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Portfolio Management

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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.

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16 May 2016

Opposition to registration of SWISSBERNARD mark

The Federation of the Swiss Watch Industry FH has failed in its opposition to the registration of the SWISSBERNARD mark applied for on January 31 2012 by Ayoub in Class 14 for “horological and chronometric instruments” and published for opposition on July 20 2012.

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14 Dec 2015

Hong Kong

In Hong Kong, exclusive rights to the design of an industrial article may be pursued under the Registered Designs Ordinance 2010 and the Registered Designs Rules 2004, both of which are based on the UK Registered Designs Act 1949.

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18 Sep 2015

China

The holder of an unregistered mark has the right to use a trademark, no matter whether it is registered. However, if a mark is to be used on tobacco products, it must be registered.

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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

4 Mar 2016

Hong Kong government withdraws copyright amendment bill after free speech furore

In the face of a sustained filibuster by pan-democratic lawmakers, Hong Kong’s government is set to pull a controversial amendment to the special administrative region’s Copyright Ordinance. Civic Party legislator Claudia Mo says that the bill will not be formally withdrawn until Wednesday, but we understand the legislation is effectively dead. Read more

2 Feb 2016

Every word counts – typical cases of illegal advertisements

The Shanghai Administration of Industry and Commerce recently released its report on the enforcement of the Advertising Law in 2015. The report is a good reference to brand owners and advertisers as to the kinds of advertising claim which may attract the authorities’ attention, and potentially penalties.

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20 Jan 2016

Can hotel group prevent the promotion of residential development?

In a recent case the court considered the plaintiffs’ application for an interlocutory injunction restraining the defendants from engaging in the mass promotion of a residential development using the English name ‘Corinthia’ on the basis of passing off and trademark infringement.

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Find an expert

Knud Wallberg
Attorney at Law
Copenhagen, Denmark
Zacco