News

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 9^th 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 6^th 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 1^st 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]

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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]

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Establishment of the IP List answers the practical needs in Hong Kong and elsewhere. 

1. IP disputes often involve technical matters not often dealt with by the courts.  Non-access to effective enforcement may defeat the purpose of IP protection especially where the IP has a limited period of protection (e.g. 20 years for patents) and perhaps even so for product life once these are overtaken by new designs and inventions or lose popularity within a short period of time.
2. In some cases, arbitration (with parties being able to choose their own specialist judges and a procedure tailored for the occasion) may answer the need for speedy resolution but in reality, many disputes cannot be resolved by arbitration because it is a consensual process requiring an agreement to arbitrate in the first place which may not be possible after the dispute has arisen.  Hence, litigation may still be the only available means to resolve the majority of infringement disputes.  A specialist, speedy and outcome predictable court to decide intellectual property disputes are essential as otherwise the IP rights involved may become useless.
3. The speedy resolution consideration applies equally to the defendants in IP court cases.  For example, if an interim injunction is granted pending resolution of the dispute, delay in a final judgment may work to the disadvantage of the defendant. 

4. With the expected introduction of the original grant system for patent under Hong Kong’s Patents (Amendment) Ordinance (which is expected to come into force later), there is likely to be an increase in the number of substantive patent infringement and validity hearings.

5. Parties to an international IP dispute tend to select a jurisdiction with a reputation for fairness and transparency.  Having a robust specialist IP panel of judges in Hong Kong to handle such cases will be attractive to potential international litigants.  IP rights holders and those accused of infringement are unwilling to litigate in a jurisdiction they perceive delays, high costs and lack of certainty in outcome. 

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

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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 

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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.

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On 29 May 2019, we published a statement on behalf of Mr. Lau Luen Hung stating we have on that day proceeded to withdraw/discontinue Mr. Lau’s Application for Leave to apply for Judicial Review issued on 1 April 2019 in HCAL875/2019 (the “Application”) on behalf of Mr. Lau. The Application is in respect of the Fugitive Offenders and Mutual Legal Assistance in Criminal Matters Legislation (Amendment) Bill 2019. A copy of the statement is attached hereto.

Our litigation team has successfully obtained permission given by the Judge of the High Court to admit Lord Pannick QC, a world renowned and prominent Queen’s Counsel in London, to join the Hong Kong legal team in representing our client Mr. Lau Luen Hung in his application (“the Application”) for leave to apply for Judicial Review in respect of the Fugitive Offenders and Mutual Legal Assistance in Criminal Matters Legislation (Amendment) Bill 2019, despite objections from the Hong Kong Bar Association and the Secretary for Justice.

The success is unprecedented as this is the first time London Queen’s Counsel is admitted at the leave stage of judicial review proceedings.

The Application, which is fixed to be heard on 21 June 2019, involves important public law issues including protection of citizen’s constitutional rights under the Basic Law and the Hong Kong Bill of Rights.

Our litigation team handling the Application is headed by senior partner Peter Sit, co-headed by partner Roy Leung, assisted by senior associate Sidney Ho, associate Jenny Wong, three trainee solicitors, Joyce Cheng, Karis Chan and Marco Chong and other professional staff including in-house translator Kei Leung.

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In celebration of its 50th Anniversary, the Faculty of Law of the University of Hong Kong organized a series of talks by its alumni. Senior Partner C. K. Kwong was invited to give a talk at the “Custodians of Intellectual Property: A Sharing Session” on 4th April 2019.

Mr. Kwong gave the audience snapshots of his experience as an intellectual property lawyer, International President of the Asian Patent Attorneys Association (APAA), a law reformer who proposed Hong Kong’s Arbitration (Amendment) Ordinance 2017 to further enhance the infrastructure for arbitrating IP disputes in Hong Kong and promoting it as an international IP ADR hub. He also expressed his views on the unique qualities of Hong Kong which give it an extra edge to be the preferred seat for IP arbitration and made recommendations on how young lawyers may advance themselves in the practice of IP disputes resolution.

The panel of Custodians included Mr. Andrew Liao S. C. (former Non-Official Member of the Executive Council of the HKSAR), Mr. Peter Cheung (former Director of Intellectual Property), Mr. Anthony Tong (Managing Partner of Robin Bridge & John Liu), Mr. Kenny Wong (Chairman of IP Committee of the Law Society) and Ms. Alice Lee (Associate Dean & Associate Professor of Law, HKU Faculty of Law).

The Session was attended by law students, alumni and distinguished guests which was preceded by a reception and followed by dinner afterwards.

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On 1 April 2019, we published a statement on behalf of Mr Lau Luen Hung stating we have on that day issued an application in the High Court of Hong Kong for leave to apply for Judicial Review (the “Application”). The Application is in respect of the Fugitive Offenders and Mutual Legal Assistance in Criminal Matters Legislation (Amendment) Bill 2019. A copy of the statement is attached hereto. The Application is handled by a team of litigators in our firm, headed by senior partner Peter Sit, co-headed by partner Roy Leung, assisted by senior associate Sidney Ho, associate Jenny Wong, three trainee solicitors, Joyce Cheng, Karis Chan and Marco Chong and other professional staff including in-house translator Kei Leung. The Application will be heard on 21 June 2019.

Senior Partner C. K. Kwong was invited by the MIND Group to their annual event “Eagle Eye” Investment Summit which was held at the Hyatt Regency Wangjing Hotel Beijing, and attended by over 1,000 participants comprising Mainland private enterprises. The event lasted for 2 days on the 28th and 29th March 2019 during which selected companies getting prepared for Initial Public Offerings and funding rounds carried out roadshows. Many of these companies (spanning from food, agriculture, energy, environmental and other heavy industries) have high intellectual property contents and/or occupy strategic positions in their particular fields of business.Mr. Kwong was invited for an interview on what Mainland companies should be aware of when they do business abroad especially in the intellectual property aspects.

On 3 January 2019, our Senior Partners, Peter Sit and C. K. Kwong presented Long Services Awards to the following members of the firm:

1. Alex Chan – Partner (25 years)

2. Leung Wing Fai – Legal Executive (30 years)

3. Law Shiu Chong – Managing Clerk for CAAO (30 years)

4. Monie Yau – Registration and Stamping Clerk (10 years)

5. Leanne Ching – Secretary (15 years)

Our Senior Partner C. K. Kwong has been reappointed to serve on the Board of ASTRI (Applied Science Technology Research Institute) for the third term of 2 years up to 20th October 2020. ASTRI is an institute established by the Hong Kong Government dedicated to apply technology research and development (R&D) to facilitate the growth and increase the competitive edge of technology – based industries in Hong Kong.

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