On 22 January 2020, our Senior Partners, Peter Sit and C. K. Kwong presented Long Services Awards to the following members of the firm:
1. Joseph Wong – Partner (25 years)
2. Judy Lee – Intellectual Properties Manager (35 years)
3. Cathine Leung – Senior Secretary (35 years)
4. Stanley Lui – Conveyancing Assistant (35 years)
5. Annie Cheung – Secretary (30 years)
6. Maggie Leung – Secretary (25 years)
7. Carrie Law – Secretary (10 years)
8. Eva Ho – Secretary (10 years)
9. Connie Lee – Secretary (10 years)
Our litigation team has acted for the Joint and Several Liquidators (the “JLs”) of CEFC Shanghai International Group Limited (上海华信国际集团有限公司) (“CEFC Huaxin”), which went into insolvent liquidation with JLs appointed (the “Mainland Liquidation”) pursuant to the rulings by the Shanghai No.3 Intermediate People’s Court under the Enterprise Bankruptcy Law of the People’s Republic of China (the “PRC”). For the purpose of safeguarding CEFC Huaxin’s assets in Hong Kong, including a HK$7.2 billion receivable claim that CEFC Huaxin has against its Hong Kong subsidiary which had been subject to a pending creditor’s enforcement action in Hong Kong following a default judgment of €29 million, we made an urgent application (the “Application”) to the High Court of Hong Kong for a recognition order seeking recognition of the Mainland Liquidation and assistance to the JLs in Hong Kong, including among others, a stay on proceedings against CEFC Huaxin and its assets in Hong Kong.
The success of the Application is first of its kind in Hong Kong’s judicial history. Although the Hong Kong court routinely recognises and assists officeholders appointed in insolvency proceedings in some common law and civil law jurisdictions, including the Cayman Islands, the BVIs, Japan, etc., this is the first time for the Hong Kong court to recognise liquidation proceedings in Mainland China and grant assistance to the liquidators appointed by the PRC court.
The Honourable Mr. Justice Harris pointed out in his written judgment that “[given]the size of the Mainland economy and the financial problems increasingly experienced by Mainland businesses, which increasingly have assets located overseas, this is an application of considerable importance and it is necessary to consider in some detail the relevant principles, which this Court has developed in recent years and how they apply to a company incorporated in the Mainland, which as will be appreciated operates in many respects a significantly different economic and legal model to that in Hong Kong.”.
The written judgment for this unprecedented case has been handed down, for details please refer to https://legalref.judiciary.hk/lrs/common/ju/ju_frame.jsp?DIS=126607&currpage=T .
The case is handled by partner Roy Leung and assisted by associate Sally Ngan, as well as other professional staff including in-house translator Kei Leung.
Lawyers in our Litigation Department are experienced in a wide spectrum of winding-up proceedings and insolvency practices that involve complicated matters and cross-border issues, and are dedicated to providing cost-effective solutions to stakeholders in insolvency cases.
SFKS acts for the YGM Group in their successful acquisition of trademarks and related intellectual property assets worldwide which are associated with the famous “Ashworth” brand from Taylor Made Golf Company.
The Team is led by Senior Partner, C. K. Kwong and assisted by associates, Calvinne Luis, Wai Yin Chung, Timothy Wu and Louise Lam as well as trainee Corinna Kwok.
We are glad to announce that our trainee solicitors were admitted as solicitors of the High Court on 12 October 2019. Ms. Theresa Law and Ms. Louise Lam will join us as Associates in the Dispute Resolution Department and the Corporate & Commercial Department respectively.
Applications were made by Sit, Fung, Kwong & Shum on behalf of Fonterra Brands (Singapore) Pte Limited to alter their Hong Kong trademark no. 1579/1979 and 1580/1979 from
to
in Classes 30 and 32. These were opposed by N. V. Sumatra Tobacco Trading Company. Although the substantive hearing took place on 12th March 2019, after commencement of the Trademarks Ordinance (Cap. 559), by virtue of the transitional provisions, the alteration application remains to be dealt with under the provisions of the repealed old Trademarks Ordinance (Cap. 43). The Registrar decided in favour of Fonterra and held that the alteration of the old mark to the proposed altered mark does not substantially affect the identity thereof and there was no prejudice to the Opponent or other third parties. The application for alteration was therefore allowed. The case was handled by Senior Partner C. K. Kwong and assisted by Cary Lam and Timothy Wu. Counsel Benny Lo was instructed on the case.
By invitation of Hang Seng Bank, Senior Partner C. K. Kwong accompanied by Timothy Wu and Angel Chen delivered a talk to start-up companies at the Atrium Link, Hong Kong Science and Technology Park on 7th August 2019. The title of the talk was “Intellectual Property and Start-ups (Innovation and Technology)”.
The event was attended by about 120 participants when the important aspects of different types of intellectual property (including trademark, patent, design, copyright, topography, trade reputation, trade secret, plant variety and domain name) were explained. The session concluded with practical tips on getting accelerated protection for inventions and due diligence questions to expect from first round investors.
“We recently acted for Looop Media Limited (圈傳媒有限公司) in an online infringement claim in which the infringer has created a bogus webpage adopting our client’s registered trade marks and a copyrighted work in Facebook. The bogus webpage has misled the readers of Facebook into believing that our client might have changed its position from supporting good governance and rule of law to not so supporting of good governance. We have successfully caused Facebook to take down such bogus webpage promptly helping our client to avoid suffering further attacks, damages and prejudices
The case was handled by Mr. Peter Sit, our senior partner, assisted by Ms. Wai Yin CHUNG and Mr. Timothy WU, our associates.”
We successfully obtained a Judgment from the Court of Appeal (CACV 399/2018 [2019] HKCA 814) dismissing the appellant’s appeal against the judgment of the Court of First Instance in relation to claims against our clients (in their capacity as Interveners in the legal proceedings in HCMC 8/2016) in respect of an application by the Petitioner under section 17 of the Matrimonial Proceedings and Property Ordinance, Cap 192. The claims against our clients were for the sum of approximately HK$39 million.
Mr. Alex Chan, our Partner, led our litigation team with our trainee solicitor, Mr. Alan So assisting.
According to the 2018 Global Competitiveness Report released by the World Economic Forum, Hong Kong was ranked 9th out of 140 economies in terms of IP protection. In accordance with the recommendations made by the Working Group on IP Trading in 2015 (of which the writer is a member), a wide range of measures were introduced to enhance Hong Kong’s role as an IP trading hub to serve overseas IP owners/users as well as those in Mainland China (rising as a major intellectual property user, buyer, provider and seller) including those on legal services and dispute resolution.
The Judiciary announced the establishment of the Intellectual Property List in the Court of First Instance of the High Court on 6th May 2019. Specialist judges are now assigned to handle IP cases, enhancing case management to reduce costs and time for the resolution of IP disputes. This measure is in further support of the earlier initiative to enact the Arbitration (Amendment) Ordinance 2017 which came into operation on 1st January 2018. Parties choosing Hong Kong law as the lex abitri governing the arbitration agreement and/or seat (legal place of arbitration) will not have to worry about the jurisdiction issues surrounding arbitrability of IP rights under the New York Convention Articles V (1)(a) and (2)(a) and (b) (corresponding to UNCITRAL Model Law – Articles 36(1)(a)(i) and 36(1)(b)(i) and 36(1)(b)(ii).
[Link: https://www.gld.gov.hk/egazette/pdf/20172125/es1201721255.pdf]
The idea of this new arbitration law was proposed by the writer in May 2015 and accepted by the Hong Kong Government to enhance the infrastructure for IP arbitration in Hong Kong. There is now clear statutory guidance that disputes over intellectual property rights (including validity of registered rights) are arbitrable and that it is not contrary to the public policy of Hong Kong to enforce arbitral awards involving intellectual property rights. These are very important considerations at different stages of the arbitration process. The new law, being the most comprehensive legislation in the world so far on the issue and in bilingual form, with both English and Chinese official languages, is well-received by the arbitration community. [http://www.sfks.com.hk/upload/newsfile/0000000045.pdf]
Establishment of the IP List answers the practical needs in Hong Kong and elsewhere.
The setting up of the IP List finds support from The Study on Specialized Intellectual Property Courts conducted by the International Intellectual Property Institute (IIPI) and the United States Patent and Trademark Office (USPTO) in 2012: https://iipi.org/wp-content/uploads/2012/05/Study-on-Specialized-IPR-Courts.pdf
The IIPI report pointed out that although the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) does not oblige members to establish separately IP courts, many Governments have done so on their own accord. Hong Kong was a founding member of WTO. Other than the above background to further enhancing Hong Kong’s infrastructure as an IP dispute resolution hub (as a supporting measure to promote Hong Kong as an IP trading hub), it is also in line with the latest development around the region with the setting up of an appellate Intellectual Property Tribunal within the Supreme People’s Court of the People’s Republic of China in January 2019 which followed the earlier establishment of IP Specialist Courts in cities including Beijing, Shanghai, Guangzhou, Shenzhen, Hangzhou, Nanjing and Suzhou.
Hong Kong is brought up to date with other jurisdictions in the region like Australia, Japan and Singapore which have set up special courts for handling IP cases. A number of cases have entered into the List and we shall see how the new system will help to change the IP dispute resolution landscape in Hong Kong.
C. K. Kwong, JP (Justice of the Peace)
Partner of Sit, Fung, Kwong & Shum,
Hong Kong
We are pleased to announce that we have been confirmed for retention as a panel firm on the General List of Legal Consultants of the Urban Renewal Authority.
We are pleased to announce that we have been appointed to the Litigation Services Panel of the Competition Commission.
We recently acted for a creditor to resist the oppositions from the Official Receiver and the previous joint and several liquidators, and successfully obtained an order of the High Court in favour of our client in an application to discharge the Regulating Order previously sought and obtained by the Official Receiver in HCCW 118/2018 in relation to a Hong Kong listed company, Blockchain Group Company Limited (Stock code: 364), under the Companies (Winding Up and Miscellaneous Provisions) Ordinance (Cap. 32).
Our client’s application was supported by the majority creditors (consisting of over 150 holders of debenture notes of the said company) as our client and the majority creditors were unjustly deprived of the opportunity to attend the first meeting of creditors and to nominate their choice of liquidators by reason of the Regulating Order. As a result of the court order we obtained on 4th June 2019, our client and the majority creditors are now able to embody their wishes and nomination to replace the joint and several liquidators previously appointed under the Regulating Order with the liquidators from Deloitte.
The case was handled by Mr. Roy Leung, our litigation partner, assisted by Mr. Ricky Cheung, our associate and Mr. Alan So, our trainee solicitor.
