IPRs Enforcement Actions in HK Trade Fairs
Hong Kong has earned a strong reputation for hosting international exhibitions, attracting renowned exhibitors and millions of visitors who aim to conclude business deals within a short exhibition period. These exhibitions serve as a vital platform for exhibitors to showcase their products, which often involve the development and exploitation of intellectual property rights ("IPRs"), including trade marks, copyrights, designs, and patents. Nonetheless, such events can also become a venue for infringers to display products that infringing the IPRs of others. Given that exhibition periods are typically short, lasting only a few days, it is crucial for IPRs owners to act swiftly. This article will discuss various enforcement actions that IPRs owners can take during the brief exhibition period to duly protect their IPRs while also seeking opportunities for further exploitation.
Generally, there are three local measures to enforce IPRs at trade fairs in Hong Kong, namely: (a) applying to the High Court of Hong Kong for interlocutory injunctions ("Court's Injunctions"); (b) filing complaints with the Hong Kong Customs and Excise Department ("HK Customs' Actions") and (c) filing complaints with the IPR offices provided by trade fair organizers ("organizers’ Actions").
Court's Injunctions
Parties to take enforcement actions:-
IPRs owners shall take an ex parte application to the Court for an interlocutory injunction with a returnable date for parties to attend before the Court. Upon the grant of an interim injunction, the IPRs owners shall serve the sealed copy of the injunction upon the alleged infringing parties.
Parties against whom enforcement actions are taken:-
Infringing exhibitors displaying any infringing products, including photos, and other related parties such as suppliers (if identified).
Will enforcement actions be taken against the organizers of the trade fairs?:-
For trade marks, it is possible under Section 18 of the Trade Marks Ordinance (Cap 559). For copyrights, it is possible under Section 31 of the Copyright Ordinance (Cap 528).
Types of IPRs enforced:-
All types of IPRs.
Documents and details required:-
Pleadings with an affidavit / affirmation of full and frank disclosure establishing that:- (a) there is a serious question to be tried on the merits of the case; (b) the balance of convenience lies in favor of granting an injunction; and (c) a cross-undertaking in damages (if appropriate). Documentary proofs of IPRs ownership and the infringing activities of the exhibitors are essential to be included in the said affidavit / affirmation.
Official fee required (apart from legal fees payable to instructing solicitors/counsel):-
Yes. There are official fees for filing the ex parte application for an interlocutory injunction and for obtaining sealed copies of the injunction granted.
General Procedure:-
An urgent ex parte application with the required documents shall be filed with the court during office hours for an immediate hearing date to grant the interlocutory injunction and a subsequent hearing date returnable by both parties. The urgent ex parte application can also be made outside court office hours by calling the duty judge to grant the interlocutory injunction and an immediate hearing date returnable by the parties. Upon the grant of the interlocutory injunction, the IPRs owners shall serve it upon the infringer, requesting them not to display the infringing products. Failing which, actions for contempt of court may be brought against the infringer. However, if the infringer has a valid defense, they shall attend court on the fixed returnable date to request further directions.
Who decides if there is a prima facie case of IPR infringement at Fair Trade?:-
Judge on the Intellectual Property List in the Court of First Instance of the High Court or other duty judge
Time frame for taking actions:-
The interlocutory injunction can be granted within half a day if all documents are in order.
Actions taken at the trade fairs:-
The IPRs owners shall serve the sealed copy of the injunction against the infringing exhibitors and the organizer of the trade fair.
Post-exhibition action:-
The IPRs owners may pursue the same actions at court for relief such as damages.
Advantages:-
It is an efficient measure to stop or deter infringing activities at the stance of trade fair. Damages may be awarded if parties pursue the same actions at court after the trade fair.
Limitations:-
It involves rather complicated court procedure requiring instructing solicitors and counsel and legal costs and disbursements are rather high.
HK Customs' Actions
Parties to take enforcement actions:-
IPRs owners shall file complaints with HK Customs. Upon acceptance of the complaints, HK Customs will conduct seizure of infringing products and commence prosecution against infringing exhibitors at the stance of trade fair.
Parties against whom enforcement actions are taken:-
Infringing exhibitors displaying any infringing products, including photos, and other related parties such as suppliers (if identified).
Will enforcement actions be taken against the organizers of the trade fairs?:-
For trade marks, it may not be possible under Section 9 of the Trade Descriptions Ordinance (Cap 362). For copyrights, it may not be possible under Section 118 of the Copyright Ordinance (Cap 528).
Types of IPRs:-
Trade marks, copyrights.
Documents and details required for recordation with HK Customs:-
The requested documents and details generally include:- (a) original authorization letter, copies of IPR certificates or latest trade mark records in Hong Kong; (b) statutory declaration under Section 121 of the Copyright Ordinance; (c) sample(s) of genuine and corresponding alleged goods; (d) copy of the invoice(s) of the sample(s) of alleged goods (if any); (e) appointment of examiner(s) by the trade mark owner(s) (Note: the appointed examiner(s) is/are required to conduct subsequent seizure identification and undertake to give evidence and testify in the courts of Hong Kong; an examiner is considered competent if they are capable of differentiating counterfeits by their knowledge, experience, and/or through access to the right holder’s records) and (f) record of preliminary examination.
Official fee required (apart from legal fees):-
No.
General Procedure:-
Preferably, the above documents for a prior complaint (not necessarily related to the infringing products to be displayed) shall be submitted to HK Customs. HK Customs will invite the examiner for the IPRs owners to conduct a competency test. Upon satisfaction with the documents filed and the examiner's competency, recordation is considered completed. Practically, it is not easy for overseas IPRs owners to arrange for their examiners to come to Hong Kong to assist with investigation and prosecution. When the alleged infringing products are displayed at trade fairs, the IPRs owners can immediately report to HK Customs for further action.
Who decides if there is a *prima facie* case of IPR infringement?:-
The officers in charge at Hong Kong Customs.
Time frame for taking actions:-
The recordation process is rather slow (especially the satisfaction of the competency test for examiners). Once it is completed, the process of search and seizure of infringing goods displayed at trade fairs upon receiving complaints can be conducted expediently.
Actions taken at the trade fairs:-
The officers of HK Customs will search and seize the infringing products at trade fairs for further investigation or prosecution.
Post-exhibition action:-
HK Customs may commence prosecution against the infringing exhibitors. Fine sanctions may be imposed upon the infringing exhibitors. However, no damages will be awarded to the IPRs owners. Upon conviction of the infringing exhibitors, the IPRs owners may request HK Customs to provide relevant documents and details to commence a separate civil action against the infringing exhibitors for relief such as damages.
Advantages:-
It is an efficient measure to stop or deter infringing activities at the trade fair upon completion of recordation with HK Customs. Criminal sanctions such as fines and imprisonment may be imposed by HK Customs
Limitations-
It is quite time-consuming to complete recordation, especially the appointment of examiners who must pass the competency test. Also, the burden of proof is high for prosecution (beyond reasonable doubt) and there is no award for damages to the owners of IPRs.
Fair Organizers’ Actions
Parties to take enforcement actions:-
IPR owners shall file complaints with the Organizers’ IPR Office. Upon acceptance of the complaints, the Organizers will issue a "Taking Down Notice" against the infringing exhibitors, requesting them to remove the infringing products, conduct seizure of infringing products and / or imposing other sanctions against infringing exhibitors pursuant to exhibition agreement entered into between the Organizer and the infringing exhibitors.
Parties against whom enforcement actions are taken:-
Infringing exhibitors.
Will enforcement actions be taken against the infringing organizers of the trade fairs?:-
No.
Types of IPRs:-
Trade marks, copyrights, registered designs, and patents granted (both short-term and standard), depending on the exhibition agreement between the organizer and the infringing exhibitors.
Documents and details required:-
The requested documents and details generally include:-(a) original authorization letter; (b) copies of IPR certificates or latest trade mark records in Hong Kong (Note: the IPR Office will conduct a latest IPR online check); (c)Statutory declaration under Section 121 of the Copyright Ordinance and (d)Particulars of infringing products displayed, such as exhibition stand numbers, photos, or samples.
Official fee required (apart from legal fees):-
It is solely depended on trade fair organizers’ discretion. The IPRs owners are advised to review the official website of the trade fairs regarding the onsite IPRs protection measures and procedure.
General Procedure:-
Upon identifying infringing products at the trade fair, the IPR owners shall file the required documents with the Organisers' IPR Office. After conducting a formalities check (including an updated IPR search), an officer of the Organisers' IPR Office will attend the exhibition stands where the infringing products are displayed to collect evidence, such as taking photos and collecting promotional materials. The officer will then prepare a report for the senior officers, who will decide whether to issue the "Taking Down Notice." Upon issuing the Taking Down Notice, the officer will serve the notice to the infringing exhibitors, requesting removal of the infringing products. If the infringing exhibitors refuse to remove the infringing products, the Organisers' IPR Office may impose sanctions, including refusing the infringer permission to join the same exhibition in the future pursuant to the exhibition agreement. If, however, the infringer can raise a valid defense (e.g., it has been granted a license to use the IPRs or has obtained the relevant IPRs, such as a short-term patent based on a utility model granted overseas), the Organizers’ IPR Office will take no further action and leave the parties to resolve the dispute via other means.
Who decides if there is a *prima facie* case of IPR infringement?:-
The senior officers in charge of the Organizers’ IPR Office of the trade fair organizers, who may be their in-house legal counsels or partners of outsourced HK solicitors' firms.
Time frame for taking actions:-
The actions can be taken within half a day to one day if a prima facie case of infringement is identified.
Actions taken at the trade fairs:-
The officer of the Organizers’ IPR Office will request the removal of infringing articles.
Post-exhibition action:-
The IPRs Owners may commence new actions at court to resolve the disputes and claim relief and damages against the infringing exhibitors.
Advantages:-
It is a simple and fast procedure to stop or deter infringing activities at the trade fair, whereby even laymen can file complaints without appointing legal representatives.
Limitations:-
The sanctions of removal of infringing articles at the trade fair may be lenient. Meanwhile, no damages will be awarded.
Conclusion
Upon reviewing the three ways of enforcing IPRs during the short exhibition period, it is highly recommended that IPRs owners develop a strategy to tackle infringement matters according to their budget and resources. On-site investigation prior to taking enforcement action is essential, particularly reviewing and collecting brochures showing the infringing products, taking photos of the displayed infringing items, obtaining the contact details of the infringer, and inquiring about the sources of the infringing products. On-site enforcement actions should be conducted as soon as possible once infringement is identified, in order to stop or deter any potential dealings or transactions between infringers and potential buyers. Post-exhibition enforcement action is also advisable to prevent infringers from continuing to infringe the exhibitors' IPRs in the future.
Disclaimer: This material is provided for general information only. It does not constitute legal or other professional advice nor constitute any lawyer-client relationship between Sit, Fung, Kwong & Shum and any user or browser. No liabilities are assumed arising from any reliance of information in this material.
