WORLD TRADE
ORGANIZATIONIP/N/6/HKG/1
10 February 2000
(00-0501)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:   English
CHECKLIST OF ISSUES ON ENFORCEMENT1
Responses from Hong Kong, China
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have juri sdiction over IPR infringement cases.
The Small Claims Tribunal has jurisdiction to determine claims for damages for copyright and
trade mark infringement which do not exceed the sum of HK$50,000.   It has no jurisdiction to provide
other ancillary relief.
The District Court has jurisdiction to determine:- claims for damages for copyright and trade mark infringement and passing off where
the damages claimed are less than HK$50,000, but other ancillary relief is also sought;
- claims for damages for copyright and trade mark infringement and passing off which
fall between HK$50,000 and HK$120,000 whether or not other relief (delivery up and
disposal) is sought.
The High Court, sitting as the Court of First Inst ance in its civil jurisdiction (presided over by a
single Judge), has jurisdiction to determine:
- unlimited claims for damages or account of profits for copyright and trade mark
infringement, passing off, to gether with ancillary relief;
- injunctions, both interlocutory and final, and detention orders (for further discussion see
answer to Question 15);
- all proceedings relating to infringement of patents and registered designs irrespective of
value, together with anc illary relief (injunctions, damages, account of profits,
declarations, delivery up and destruction/di sposal of infringing copies and tools);
- all proceedings relating to infringement of a grant of plant variety rights;- all proceedings relating to infringement of  lay-out design (topography) of integrated
circuits;
                                                     
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- Judicial Review, for example, from a deci sion by the Commissioner of Customs and
Excise to detain or remove seizures made under the Copyright Ordinance;   or from a
decision by the Registrar of Trade Marks re lating to an entry in the Register or a
correction sought therein.
The High Court sitting in its appellate jurisd iction (presided over by a single Judge), will
determine appeals from the Small Claims Tribunal on a point of law, and from persons exercising a
quasi judicial function.   For exam ple, every appeal to the Court unde r the Trade Marks Ordinance shall
be heard and determined by a single Judge.
The Court of Appeal (presided over by an uneven number of Justices of Appeal not less than 3),
hears appeals arising from the District Court and the Court of First Instance.
The Court of Final Appeal is the court of fina l adjudication in Hong Kong, China.   Civil
appeals lie as of right from any judgment of the C ourt of Appeal where the matter in dispute amounts to
HK$1,000,000 or more.   Leave to hear other civil appeals from the Court of Appeal will only be
granted where the Question involved in the appeal  is one of great general or public importance.
2. Which persons have standing to assert IP Rs?  How may they be represented?  Are there
requirements for mandatory personal appearan ces before the court by the right holder?
Which persons have standing to assert IPRs?
In the case of registered patents, registered designs and registered trade marks, the proprietor,
or owner as the case may be, and also any exclusive licensee thereunder, has standing to assert that
IPR, provided that such person is recorded in the appropriate Register as proprietor/owner or
exclusive licensee, respectively.  Furthermore, a registered user of a trade mark (subject to any
agreement to the contrary) may call upon the propriet or to prevent infringement thereof, and should
the proprietor refuse or neglect to do so within two months, the registered user can institute
proceedings in his own name as if he were the proprietor naming the proprietor as a defendant.
 Under the common law the proprietor of an unregistered trade mark may bring an action for
passing off.
 In the case of copyright and unregistered/unregistrable designs (to the extent that they
acquire protection as artistic works), the copyright owner has standing to assert all rights.  An
exclusive licensee, after the grant of the licence, has the same rights, save as against the copyright
owner.  The rights owner of a performer’s economic rights or of any right conferred on a person
having fixation rights has standing to assert all IPRs which include the right to seek damages,
injunctions, accounts, etc.  An exclusive licensee thereunder, save as against the owner of aperformer’s economic rights, has the same rights after the grant of the licence.
 Where “copy protected” (defined as “any device or means specifically intended to prevent or
restrict copying of a work or a fixation of a performance or to impair the quality of copies or fixations
made”) copies of either (i) a copyright work;   or (ii) an unfixed performance;   or (iii) copies of afixation of a performance, are issued to the public, by or with the licence of a copyright owner, the
performer or the person having fixation rights in the performance, has the same rights and remedies as
the copyright owner against a person who, knowing or having reason to believe that it will be used to
make infringing copies or fixations:
- makes, imports, exports, sells or lets for hire, offers or exposes for sale or hire,
advertises for sale or hire, or possesses for the purpose of trade or business, anyIP/N/6/HKG/1
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device or means specifically designed or adapted to circumvent the form of copy-
protection employed;  or
- publishes information intended to enable or assist persons to circumvent that form of
copy protection.
 The owner of a trade secret may bring an action in tort for breach of confidence or breach of
a fiduciary relationship, depending on the particular facts, against anyone who received the
information under circumstances imputing a duty of confidence, who uses or discloses the
information without authorisation and thereby cau ses damage to the owner of the information.
 The grantee of a plant variety right may bring an action for damages including exemplary
damages and other relief for infringement of that right.  A person authorised by licence or otherwisehas the same rights as that grantee to take proceedings in respect of any infringement of the rights of
that grantee committed after the grant of such licence.
 A qualified owner is empowered under the Layout-design (Topography) of Integrated
Circuits Ordinance to take whatever proceedings and seek whatever remedies by way of damages,injunctions, account or otherwise with respect to an infringement of his rights in a protected Layout-
design (Topography) as are available with respect to other property rights.
How may they be represented?
Before every court a natural person may appear in person.  A corporate entity must authorise
a representative, normally an officer of the corporation, to represent it.  Representation, in the sense of
being responsible directly for the conduct of the litigation, may be in person, save that corporations
need leave of the High Court to be represented by an authorised officer rather than by a solicitor.
Litigants however are actively encouraged by the presiding Judge to obtain professionalrepresentation, which may be either a solicitor or a barrister carrying a current practising certificate
and enrolled on the respective Rolls of solicitors or barristers.  In the Court of First Instance, solicitors
have a right of audience limited to Chambers applications.  Thereafter, representation must be by a
barrister.
Are there any requirements for mandatory personal appearances before a court by the right
holder?
 Unless the right holder is called upon to give evidence, there are no such mandatory
requirements.  Admissible evidence will need to be produced to identify the right holder’s entitlement
to assert his claim.  This may be by agreed fact, production of a certified copy of the relevant entry in
the appropriate Register, or in the case of copyright infringement, by the filing by or on behalf of thecopyright owner, an affidavit  as to the subsistence and ownership of the copyright in Question.
 Where such an affidavit  has been served, the defendant may serve a notice to cross-examine
the deponent.  However where the defendant is subsequently found liable for infringement or is
convicted, the court may award costs of bringing in the deponent for cross-examination.
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produce evidence which lies within its control?
 Parties to civil litigation in Hong Kong, China have an obligation to make “discovery” of the
documents which are or have been in their possession, custody or power relating to matters in
Question in the action.  This occurs automatically after the close of pleadings in an action begun by
writ.  The court may order that discovery be limited to specified documents or classes of documents,IP/N/6/HKG/1
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or to such matters in Question as may be specified in the order.   (See the next Question for the
exception to these rules for privileged documents.)  The court may also order that there shall be no
discovery at all, or not at that stage of the proceedings in the interests of fairly disposing of Questions
relating to patents because of the high risk of trade secrets being involved, or in actions against the
Government.
 In addition, each party to a cause or matter shall make and serve on any other party a list of
the documents which are or have been in his possession, custody or power relating to matters in
Question in the action.
 Following the provision of the aforesaid list of documents, the other party (or parties) may
inspect the documents, and obtain, if necessary, an order from the court for production of the
documents for inspection.
 Any breach of this discovery obligation can result in an action being dismissed or a defence
being struck out and result in a committal for contempt of court.
4. What means exist to identify and protect confidential information brought forward as
evidence?
 The discovery process described in answer to Question 3 above is subject to certain
exceptions.
 Privileged documents, namely, communication between solicitor and client for the purpose
of seeking and giving legal advice and assistance;  documents which could self-incriminate (save as
against an Anton Piller order in actions involving intellectual property and passing off);  documents
which are subject to public interest immunity;  “without prejudice” correspondence;  and information
contained in legal aid applications save as to financial means, are all regarded as privilegedcommunications which need not be disclosed.
 A party impliedly undertakes to the Court that any documents, including a list of documents,
obtained by means of discovery, will not be used by  that party for any collateral or ulterior purpose
without either the leave of the court or the consent of the other party.  Any breach is regarded as acontempt of court.  This undertaking will cease however when documents are read to or by the court,
or referred to in open court except where the court orders otherwise.
 Where a party claims secrecy in otherwise discoverable material, the court will usually order
a controlled measure of discovery to select individuals, upon terms, ensuring that there should be
neither use nor further disclosure of the confidential information.  There is no universal rule covering
the class of persons who may see this informati on, the court has to find the right balance between
adequate disclosure and confidentiality.
In exceptional circumstances, a hearing can be held in camera where the court is satisfied
there is no other way to protect legitimate trade secrets.  Orders may also be made to protect the
identity of witnesses, and orders made that certain sections of the proceedings not be reported.  As theprimary rule is that all hearings are held in open court and can accordingly be fully reported, such
restrictive orders as outlined above are made sparingly and only when the interests of public
disclosure are outweighed by the interests of the parties to protect trade secrets.IP/N/6/HKG/1
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5. Describe the remedies that may be ordered  by the judicial authorities and criteria,
legislative or jurisprudentially, for their use:
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;
- destruction or other disposal of infr inging goods and materials/implements for
their production;
- any other remedies.
Injunctions
Both the Court of First Instance (as a result of its inherent jurisdiction under the common law
and under statutory enactment under the High Court Ordinance) and the District Court (as a result ofspecific statutory empowerment under the District Court Ordinance) have power to grant permanent
or interlocutory injunctions. (For further discussion on interlocutory injunctions, see answer to
Question 10.)  The IPR statutes, beyond confirming that injunctions form part of the remedies
available for infringement, add no guidance as to the criteria for their use.  Accordingly the following
description is based upon the criteria set out in the Rules of the High Court and judicial precedent.
Injunctions are discretionary in nature.  They may be “mandatory” or “prohibitory”.
Generally an aggrieved right holder will apply initially for an interlocutory injunction.  (For further
details see answer to Question 10.)   However, an impecunious plaintiff cannot be deprived of his
right to seek a permanent injunction by reason of not having first applied for an interlocutoryinjunction by reason of not being able to give an undertaking as to damages.
 An application for the grant of an injunction may be made by any party to a cause or matter
before or after the trial of the cause or matter, whether or not a claim for the injunction was included
in that party’s writ, originating summons, counterclaim or third party notice as the case may be.
 The Court may make an interlocutory injunction permanent, or grant a permanent injunction
on application therefor, where the plaintiff has established infringement and obtained a judgment
against the defendant.
 Any breach of an injunction is regarded as a contempt of court.
Damages including recovery of profits and expenses, including attorney's fees
 As a general rule, a successful party is entitled to his costs.  This is understood to mean a
party’s reasonable costs which, if not agreed, shall be those which a costs taxing master of the court
deems reasonable.  This applies in all IP infringement actions, save where specifically modified bystatute referred to in paragraphs 8-11 below.
Under the common law, the courts in Hong Ko ng, China have an inherent power to award
damages and costs in the event of a successful action brought either as a breach of a fiduciary
relationship or breach of a contract of employment for the disclosure of confidential information or ofa trade secret.   Similar common law principles apply to an action for “passing off”.
 Under the Copyright Ordinance, damages w ould normally be awarded to a successful
plaintiff (i.e.  copyright owner, or rights owner in a performer’s economic rights or owner of fixation
rights) for infringement of copyright.   There is provision to award additional damages (“exemplarydamages”) as justice may require having regard to the circumstances of the case, and in particular to
the flagrancy of the infringement;  any benefit accruing to the defendant by reason of the
infringement;  and the reliability of the defendant’s business records.IP/N/6/HKG/1
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 There is an express statutory saving however that if it is shown that at the time of the
infringement the defendant did not know, and had no reason to believe, that copyright subsisted in the
work to which the action relates, the plaintiff is not entitled to damages against him.  This saving does
not affect any other remedy.  Thus the plaintiff would still be entitled to an account of profits and
costs and an injunction, if necessary.
 Where “copy protected” copies (for definition and full discussion see paragraph 4 of the
reply to Question 2 above) are issued to the public by or with the licence of a copyright owner, the
performer has the same rights and remedies as the copyright owner has in relation to damages against
the persons detailed at paragraph 4 of the reply to Question 2 above.
 Infringement of a registered patent or a registered design is actionable by the proprietor, and
among the remedies available are damages or an account of profits, but not both.  However, neitherdamages nor an account of profit can be awarded against a defendant who proves that at the date of
the infringement he was not aware, and had no reasonable grounds for supposing, that the patent or
the registered design, as the case may be, existed.  The fact that words such as “patent” or “patented”
or “registered” have been applied to the product do not of themselves give rise to reasonable grounds
for supposing that the patent existed unless accompanied by the registration number.
An exclusive licensee may only be awarded damages in respect of his own losses. The aforesaid rules do not affect the right to recover costs by a successful party.   Some
statutory modifications need to be noted however.  A proprietor of a patent found partially valid by a
court, cannot recover damages nor costs for the valid part unless he is able also to prove that the
specification for the patent was framed in good faith and with reasonable skill and knowledge.
 Where proceedings are taken under either the Patents Ordinance or the Registered Designs
Ordinance by an exclusive licensee, the right holder shall be made a party to the proceedings.However, where he is joined as a defendant, the proprietor shall not be liable for any costs and
expenses unless he enters an appearance and if he takes part in the proceedings.  A similar provision
applies to an action brought by one co-owner, who must add the other co-owner(s) as a party.
 There are no statutory restrictions in respect of actions for infringement under the Trade
Marks Ordinance, which are accordingly governed by general common law principles.  The proprietor
must choose whether his action will seek damages for infringement or an account of profits, along
with any other relief which is appropriate.
 Costs cannot be awarded against a proprietor of a trade mark who is called upon by a
registered user to take action against infringement but fails to do so and is accordingly joined as a
defendant (see paragraph 1 of the reply to Question 2 above), unless he takes part in the proceedings.Costs cannot be awarded by the Registrar of Trade Marks against any party on an appeal to him
against a refusal of the proprietor of a certification trade mark to certify goods or services or to
authorise the use of the trade mark.
 The Layout-design (Topography) of Integrated Circuits Ordinance empowers the seeking of
any remedy for infringement, as are available in respect to any other property rights including
damages, accounts or otherwise.  There is however  a power to award exemplary damages taking into
consideration the flagrancy of the infringement and any benefit accruing to the defendant by
reason of the infringement.
 A statutory defence is provided to a person who commercially exploits a protected layout-
design to prove that he did not know and had no reasonable grounds to know, when he acquired the
layout-design, that a protected layout-design (topography) was incorporated.  Such a person, afterIP/N/6/HKG/1
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being made aware of the protected right, may continue to commercially exploit the protected layout-
design, but must then pay the qualified owner the royalty that would be payable under a freely
negotiated licence for the layout-design.  This saving only applies to a person who commences
commercial exploitation prior to being made aware of the protected rights of the qualified owner.
 Under the Plant Varieties Protection Ordinance there is statutory provision that, a court, in
awarding damages, including exemplary damages, or in granting other relief for infringement, shall
take into consideration any loss suffered or likely to be suffered by the grantee as a result of the
infringement;  and, any profits or other benefit derived by any other person from that infringement;
and the flagrancy of the infringement.
 Where, in any proceedings under the Plant Varieties Protection Ordinance it is proved or
admitted that an infringement occurred, but proved by the defendant that, at the time of theinfringement, he was not aware and had no reasonable grounds for supposing it that it was an
infringement, the plaintiff is not entitled to any dama ges, but shall instead be entitled to an account of
profits and any other relief.
Destruction or other disposal of infringing goods and materials/implements for their
production
 Because of the extended criminal provisions for infringement in Hong Kong, China, as
detailed in answer to Questions 21 et seq , and because of the willingness of the Commissioner of
Customs & Excise to bring criminal proceedings against alleged infringers, the civil remedies forinfringement are used less frequently than in othe r jurisdictions.  Accordingly, it would benefit the
reader to bear in mind the criminal equivalent provisions when reading the civil provisions detailed
below.
 Under the common law, the court has an inherent  right to make orders for delivery up for the
destruction, or for the erasure of the marks, of an y goods already marked with the spurious mark and
in the possession or control of the defendant, as well as of deceptive labels, advertising material and
implements which may come into being as a result of actions brought for trade mark infringement,
and for “passing off”.  Generally, however, the statutory powers provided in the various IP statutes
form the basis for this class of relief.
Under the Copyright Ordinance, the owner of the copyright in a work may apply to the court
for an order, against a person having possession, custody or control of
- an infringing copy of the work for the purposes of trade or business;  or- an article specifically designed or adapted for the making of infringing copies of a
particular copyright work, which he knows or has reason to believe has been or is to
be used to make infringing copies;  or
- an infringing fixation of a performance for the purposes of trade or business,
that the copy, or article or fixation be delivered up to him or any other person as the court may direct.
 The time limit for bringing such an application is six years from the date when the copy or
article was made unless the owner was prevented by disability, fraud or concealment from discovering
the facts.  The Court should not make an order for delivery up unless it also makes an order fordisposal.IP/N/6/HKG/1
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 An application is therefore automatically also made for an order that the infringing copy or
article or fixation, ordered to be delivered up, be forfeited to the copyright owner or destroyed.
Before making an order, the court must consider whether other remedies available are adequate to
compensate the owner.  Should no order be made, the person who delivered up the alleged infringing
copy or article or fixation, is entitled to its return.
 Where “copy protected” copies of either (i) a copyright work;  or (ii) an unfixed
performance;  or (iii) copies of a fixation of a performance, are issued to the public by or with the
licence of a copyright owner, the performer or the person having fixation rights in the performance
has the same rights and remedies as the copyright owner has in relation to the remedies of delivery up
and disposal as are detailed above against a person who, with the requisite state of mind, does any of
the acts detailed in paragraph 4 of the reply to Question 2 above.
There is statutory power under the Patents Ordinance for a proprietor of a patent to apply to
the court for an order requiring the defendant to deliver up or destroy any patented product in relation
to which the patent is infringed or any article in which the product is inextricably comprised.  No
other statutory guidance is provided.
 The registered owner of a design may apply to the court for an order, against a person having
possession, custody or control in the course of a business of
- infringing articles;  or
- anything specifically designed or adapted for the making of infringing articles,
knowing or believing that the thing has been  or is to be used to make infringing
articles,
that the articles or things be delivered up to him or any other person as the court may direct.  An
application must be made within 6 years from the date the articles or things were made.  Where the
court makes such an order, it will also make an order as to forfeiture or destruction.
 The qualified owner of a layout-design (topography) may apply to the court for an order,
against a person having possession, custody or control
- for commercial exploitation purposes of an integrated circuit in which a protected
layout-design (topography) is incorporated;  or
- anything specifically designed or adapted for making integrated circuits to a
particular layout-design (topography) knowing or having reason to believe that it has
been or is to be used to make an integrated circuit in which a protected layout-design(topography) is incorporated,
that the integrated circuit or the thing referred to in the above paragraph be delivered up to him or any
other person as the court may direct.  Such an order shall not be made 6 years after the integrated
circuit was made.  A court shall not make such an order unless it appears there are grounds for anorder for forfeiture or destruction.
Any other remedies
An infringement of moral rights and of a performer’s non-economic rights in copyright
litigation is actionable as a breach of a statutory duty owed to the person entitled to the rights.IP/N/6/HKG/1
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In certain circumstances of declared extreme emergency (defined as being necessary in the
public interest to maintain supplies and services  essential to the life of the community), the
Government may make use of a patented invention or of a registered design as it considers necessary
or expedient in relation to the emergency, including an infringing use.  In such circumstances, the
proprietor or registered owner, as the case may be, shall be paid by the Government compensation for
loss resulting from him not being awarded a contract to supply the patented product or articles towhich the design is applied.
6. In what circumstances, if any, do judicial authorities have the au thority to order the
infringer to inform the righ t holder of the identity of third persons involved in the
production and distribution of the goods or services found to be infringing and of their
channels of distribution?
 As common to all types of civil litigation, in an action against an infringer, discovery of
documents and the administration of interrogatories may be used to obtain information of the identity
of third parties involved in the production and distribution of infringing goods.
 Alternatively, as part of an Anton Piller Order, the court may order that the defendant
disclose the name and address of his suppliers in an action against the infringer.
 The IP statutes do not specifically empower the judicial authorities to order an infringer to
inform the right holder of the identity of the third person involved in the production and distribution
of the goods or services found to be infringing and of their channels of distribution.
However, there is power for the Commissioner of Customs & Excise to disclose to the right
holder information he has acquired relating to the infringing goods and articles used for the
manufacture of the infringing goods, and/or to provide an opportunity to inspect suspected infringing
articles.  If the Commissioner is not forthcoming, the right holder may make an application to theCourt.
 In addition, a Norwich Pharmacal type order for discovery is available for obtaining
evidence against persons who get mixed up with the tortious acts of others, as opposed to those who
incur liability for infringement themselves.
7. Describe provisions relating to the indemnific ation of defendants wrongfully enjoined.   To
what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
Describe provisions relating to the indemnification of defendants wrongfully enjoined
 A plaintiff applying for an interlocutory injunction is required to give the court an
undertaking, usually supported by the giving of security, that, if the defendant is subsequently found
to have been wrongly enjoined to desist in any activity, he will pay damages for any loss suffered by
the defendant.
Similarly, where a right holder seeks a detention order from the court, the court may require
the right holder to provide security or an equivalent assurance in an amount sufficient to protect the
importer, consignee and owner from any loss or dama ge that may be incurred in the event that the
seizure is wrongful or the article is released to the importer by reason of the failure of the right holder
to bring infringement proceedings within the specified time.IP/N/6/HKG/1
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To what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
The Commissioner of Customs and Excise and his authorised officers are not liable for any
loss or damage suffered by any person as a result of any action taken or omitted to be taken in good
faith in connection with the carrying out of their duties under the Trade Descriptions Ordinance,Copyright Ordinance, Prevention of Copyright Pir acy Ordinance or in respect of a detention order.
This indemnity does not extend to the Government for the action taken or omitted to be taken.
Judicial officers are immune from litigation in the event that their decisions are overturned by
a superior court.
8. Describe provisions governing the length and cost of proceedings.   Provide any available
data on the actual duration of proceedings and their cost.
Describe provisions governing the length and cost of proceedings
There are no general provisions under the laws of Hong Kong, China governing the length
and cost of proceedings.  The presiding Judge has an overriding duty to control the proceedings in his
court and may prescribe time limits for the filing of, and the responding to, of various pre-trial
procedures.   There is power to order an expedited hearing in urgent or blatant cases of infringement.
Failure to comply with a time table set by the Court can result, in extreme cases, in the action being
dismissed or a defence being struck out.  Cost s are generally reserved at each stage of the
proceedings, and, at the conclusion of the hearing, one party or the other may be compensated for
unnecessary procedural steps, or delay.
The cost of proceedings is otherwise entirely dependent on the pre-trial applications made, the
quality of representation hired, the length of trial and the success of the action.  A successful party canexpect to be awarded costs, which if not agreed, will be taxed by a costing master.
There is a specific provision to award costs where a defendant, having been served with an
affidavit  pursuant to Section 121 of the Copyright Ordinance, seeks nevertheless to require the
deponent to give evidence, and is subsequently found to be liable for the infringement.  The courtshall, in such circumstances, have regard to the ac tual costs incurred by the plaintiff and award costs
accordingly.  An example would be where an overseas copyright owner has sworn the affidavit  and is
unnecessarily brought to Hong Kong, China to give evidence.  Then the true costs involved can be
awarded even if they exceed the limit of costs which a court may otherwise award.
If in any proceedings before a court, the validity of the registration of a trade mark, patent or
design is contested and that registration is found by the court to be valid, the court may certify thefinding and the fact that the validity of the registration was so contested.  If, in any subsequent
proceedings for infringement or for revocation, a final judgment is made in favour of a party relying
on the validity of the registration, that party shall be entitled to his costs on an indemnity basis or, in
the case of a trade mark, on a solicitor-and-client basis.
Provide any available data on the actual duration of proceedings and their cost
Because of the great variations in the length of and cost of proceedings, it is not possible to
provide any meaningful data.  Suffice to say that IP litigation is no more, or less expensive than other
civil litigation in Hong Kong, China.IP/N/6/HKG/1
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(b) Administrative procedures and remedies
9. Reply to the above Questions in relation to any administrative procedures on the merits
and remedies that may result from these procedures.
Under the laws of Hong Kong, China, there are no administrative procedures on the merits,
thus no remedies that may result therefrom.
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
In the courts of Hong Kong, China with jurisdiction to hear IPR cases, provisional measures,
i.e.  those available before the trial on the merits of a case, are provided for in the form of
interlocutory (or interim ) injunctions;  an order for the interim  attachment of the defendant’s property;
prohibition orders and interim  payment orders.
The general power to grant an interlocutory injunction is derived both from the inherent
jurisdiction of the High Court under common law and from statutory authority applicable to both the
District Court and the High Court.   Interlocutory injunctions may be “mandatory” (requiring a partyto act in a particular way), or “prohibitory” (preventing a party from acting in a particular way).  They
are discretionary in nature.
 Interlocutory injunctions are available only when a Judge (the grant of an injunction is
beyond the jurisdiction of a Registrar or Master) is satisfied that the criteria laid down in American
Cyanamid Co v Ethicon [1975] AC 396 are fulfilled, viz
- there is a serious Question to be tried, that is, the plaintiff has a real prospect of
succeeding in his claim for a permanent injunction;  and
- that the balance of convenience lies in favour of granting the injunction.
This test has been further amplified by subsequent case law.  Hence, in assessing where the
balance of convenience lies, the Judge should first consider whether, if the plaintiff succeeds at the
trial of the action, he would be adequately compensated by damages for the loss sustained between theapplication and the trial, in which case no interlocutory injunction should normally be granted.
However, if damages would not provide an adequate  remedy, the Judge should then consider whether,
if the plaintiff fails in the action, the defendant would be adequately compensated under the plaintiff’s
undertaking as to damages, in which case there would be no reason under this ground to refuse an
interlocutory injunction.  Then the Judge must go on to consider all other relevant matters, animportant factor being the preservation of the s tatus quo where the balance is otherwise even.  Finally,
a court may bear in mind any clear view the court may reach as to the relative strength of each party’s
case.  ( Series 5 v Clarke [1996] FSR 273)
 Generally a higher degree of probability of success is required where a mandatory injunction
rather than a prohibitive one is sought.
All interlocutory injunctions lapse when judgment is given on the substantive hearing.IP/N/6/HKG/1
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In Mareva Compania Naviera SA v International Bulk Carriers SA [1980] 1 All ER 213 the
English Court of Appeal held that, where a debt is ow ed to a plaintiff and it is reasonably feared that a
defendant residing outside the jurisdiction may send its assets offshore to avoid enforcement of the
judgment, the court may grant an interlocutory injunction restraining the defendant from doing so.
The principle has been extended by the courts to cover defendants resident within the court’s
jurisdiction where it is shown that there is a likelihood that they may move their assets offshore orconceal them locally.   The principle has now been enshrined in statute.  Section 21L(3) of the High
Court Ordinance provides:
“The power of the Court of First Instance u nder subsection (1) to grant an interlocutory
injunction restraining a party to any proceedings from removing from the jurisdiction of the
Court of First Instance, or otherwise dealing with, assets located within that jurisdiction shall
be exercisable in cases where that party is, as well as in cases where he is not, domiciled orresident or present within that jurisdiction.”
The injunction operates in personam only and does not give the plaintiff any right in or lien
over the defendant’s assets.  The Mareva injunction does, however, carry with it the sanction of
committal for contempt of court in the event that a defendant disposes of his assets in violation of theorder.
Similar in scope is an order available to order interim attachment of the defendant’s property.
The application to the court is to call upon the defendant to furnish sufficient security to produce and
place at the disposal of the court, when required, his property, or the value of the same, or suchportion thereof as may be sufficient to answer any judgment that may be given against him, and, in
the event of his failing to furnish such security, to direct that any property, movable or immovable,
belonging to the defendant shall be attached until the further order of the court.  See also paragraphs 9
and 10 of the reply to Question 12 above.
The purpose of an Anton Piller Order resulting from Anton Piller KG v Manufacturing
Processes Ltd [1976] 1 All ER 779 is to prevent a likely defendant from destroying property which
would be relevant as evidence in the trial before the case comes on for hearing.  The Order will be to
the effect that the plaintiff, by his solicitor, be entitled to enter the defendant’s premises and search for
the goods or documents specified in the order and remove, inspect or photograph such material.Additionally the defendant might be required to disclose the name and address of his suppliers.  The
Order will invariably include an interlocutory injunction restraining the defendant from selling or
manufacturing certain specified items or carrying out certain specified activities and also impose a
restraint upon the defendant from informing others of the existence of the proceedings.
 Another further provisional order is available in Hong Kong, China, namely a Prohibition
Order.  This Order, which derives its jurisdiction from Section 21B of the High Court Ordinance (or
Section 52E of the District Court Ordinance), proh ibits a person from leaving Hong Kong, China and
thus to facilitate the enforcement, securing or pursuance of a judgment against that person for the
payment of a specified sum of money (or of an amount to be assessed), or a civil claim (other than a
judgment) for the payment of a sum of money or damages or for the delivery of any property or
performance of any act.  See also paragraphs 13 and 14 of the reply to Question 12 above.
Another form of provisional order is an application to the court, for an order requiring the
defendant to make an interim payment.  An “interim payment” is defined as a payment on account of
damages, debt or other sum (excluding costs) which a defendant may be held liable to pay to or for
the benefit of the plaintiff.  The remedy will normally be denied unless the plaintiff can show hardshipduring the period from the institution of the proceedings and the date of judgment and that the
defendant should be the proper person to alleviate that hardship.IP/N/6/HKG/1
Page 13
11. In what circumstances may such measures be ordered inaudita altera parte ?
In case of urgency, the plaintiff may make the application ex parte on affidavit  and this may
be done even before the issue of originating process.  The typical Anton Piller order or Mareva
injunction application, being based on the apprehension that the defendant will behave
unscrupulously, is invariably brought ex parte to ensure that the defendant is not given an opportunity
to negate the effect of the order by acting prior to the order being made.
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the
legitimate interests of the defendant.
The application for an interlocutory injunction may be made ex parte (for further discussion
see answer to Question 11) on affidavit  when the case is one of urgency, but generally it is inter
partes by motion or summons after the issue of the originating process.
Where the application is ex parte , Practice Directions issued by the Chief Justice require that
the supporting affidavit  should contain a clear and concise statement of
- the facts giving rise to the claim against the defendant in the proceedings;
- the facts giving rise to the claim for interlocutory relief;- the facts relied upon as justifying the application ex parte for each part of the order
sought;
- any answer either asserted by the defendant or which he is likely to assert;- any facts known to the applicant which might lead the court not to grant the relief
sought or not to grant it ex parte ;  and
- the precise relief sought.Undertakings will be required from the applicant to  notify the defendant of the terms of the
order forthwith, to file an affidavit  if the evidence has been given orally in Court;  and to commence
proceedings if they have not yet been commenced.  An undertaking in damages also needs to be filed.
The draft order filed with the application must also contain provisions for the defendant to apply onnotice for variation or discharge of the order;  for a return date of an inter partes hearing;  and for the
costs to be reserved.
Interlocutory injunctions are listed for each Friday, thus the return date will be entered as the
next Friday provided that two clear days’ notice can be given.   Theoretically the inter partes hearing
can then be conducted, though in practice the parties will have had insufficient time to arrange their
arguments and the day is used to assign a time table for subsequent filings and hearings.  A maximum
of two 14-day adjournments are permitted.
Protection is given therefore to the legitimate interests of a defendant by the Practice
Directions and weekly sittings.  An interlocutory injunction granted ex parte may be set aside
following an inter partes hearing.  If the Judge considers that the hearing should be expedited, he may
issue time limits for the various further stages.IP/N/6/HKG/1
Page 14
In the majority of cases, there is no dispute as to the material facts.  In that event, the Judge,
with the consent of the parties, may treat an application for an interlocutory injunction as the trial of
the action and make a final order.
In addition to the matters contained in the Practice Directions detailed above, an applicant for
an ex parte Mareva injunction must also undertake to pay the reasonable cost and expenses incurred
in complying with the order by any third party to w hom notice of the order is given.  To succeed in an
application, the applicant must establish a good arguable case;  a real risk that the defendant might
dissipate his assets;  that the order is just or convenient;  and that the defendant has assets.  See further
the discussion in paragraphs 7-11 of the reply to Question 10 above.
There is an even greater need in the case of a Mareva injunction for full and frank disclosure
by the plaintiff of all matters within his knowledge which are relevant for the Judge to know.  Failure
to disclose fully has commonly been considered sufficient grounds to set aside ex parte Mareva
injunctions.  This provides one further protection of the legitimate interests of a defendant.   There are
no time limits relating to when the application may be made.  It takes effect from the moment it is
pronounced and will normally be granted for a few days only until the defendant can be served and
third parties notified (by telephone or fax if necessary).
The application for an Order for the interim attachment of property may be made either at the
institution of the action or at any time thereafter until final judgment.  An affidavit  must accompany
such application to the effect that the defendant is about to dispose of or remove his property with
intent to obstruct or delay the execution of any judgment that may be given against him.  Theapplication must contain a specification of the property required to be attached and the estimated
value thereof.  The court has the power to cause to be made such investigation as it may consider
necessary.  If satisfied that there is probable cause for believing that the defendant is about to dispose
of or to remove his property with such intent, the court will issue a warrant to the bailiff commanding
him to call upon the defendant either to furnish security or to appear before the court and show causewhy he should not furnish the security.  The court may also direct in the warrant the attachment of any
property of the defendant within Hong Kong, China.
Should the defendant show cause or furnish the re quired security within the period prescribed
by the court, the attachment shall be withdrawn.  There is power to award costs for unjustifiable
attachment.
With an Anton Piller Order the plaintiff must persuade the court that there is a very strong
prima facie case on the merits and that he is likely to sustain serious loss by the defendant destroying
the materials or documents in Question.   There must be clear evidence that such materials or
documents exist.   Evidence that the defendant was engaged in wrong doing is perhaps the most
persuasive evidence that would enable a court to draw the inference that evidence of such wrongdoing would be destroyed.  See also paragraph 10 of the reply to Question 10 above.
As with Mareva injunctions, full disclosure is vital for an Anton Piller  Order.
The application for a Prohibition Order is made ex parte and may be made by a plaintiff who
intends to commence an action.  The “plaintiff” must produce at the hearing a draft writ and must
undertake to the Court to issue the writ on the next day that an office of the Court is open.  An
appearance is required before the Master (unlike most ex parte applications which are decided on the
papers filed) in support of the application.  The Court’s power to prohibit departure is limited to one
month for the initial order, which may be extended by two further periods of one month each.  Thereis no express provision precluding a further fresh application being filed to extend the period that aIP/N/6/HKG/1
Page 15
defendant can be compelled to remain in Hong Kong, China.  Enforcement is effected by the
placement of the defendant on the “stop list” administered by the Director of Immigration.
A person subject to a Prohibition Order may, on two clear days’ notice to the plaintiff, and
upon being present in court, apply for a discharge of the order.   Where a defendant consents to
judgment being entered against him;  or satisfies the court that he has a substantial defence to theplaintiff’s claim;  or a combination of the two, the court shall discharge the order.  It is then for the
plaintiff to notify the Director of Immigration that the order has been discharged.  Costs may be
awarded against a plaintiff who fails to do so or is found to have made the initial application on
insufficient grounds.
Interim payment orders may be applied for at any time after the writ has been served on the
defendant and the time limit for him to acknowledge service has expired.  The application is generallymade by summons, supported by an affidavit.  Rules of court state that the affidavit  shall verify the
amount of damages to which the application relates and the grounds of the application and exhibit any
documentary evidence relied upon.  The summons and copy of the affidavit with exhibits must be
served upon the defendant ten clear days before the return date.
If, on the hearing of the application, the Court is satisfied that the defendant has admitted
liability for the plaintiff’s damages, or that a judgment has been obtained against the defendant for
damages to be assessed, or that, if the action proceeded to trial, the plaintiff would obtain judgment
for substantial damages against the respondent, the court may order the payment of an interim amount
in the sum it thinks just and not exceeding a reasonable proportion of the damages likely to beordered.
13. Describe provisions governing the length and cost of proceedings.   Provide any available
data on the actual duration of proceedings and their cost.
Under the laws of Hong Kong, China, there are no provisions which govern the length or cost
of proceedings for provisional measures.  Time limits for an inter partes hearing are provided for by
requiring a return date to be specified in the orders granted and by the weekly hearings of
interlocutory matters.   Costs are reduced by not requiring the appearance of the applicant in any ex
parte application save that for a prohibition order.  No data are accordingly available for the actual
duration of proceedings or their cost.
(b) Administrative measures
14. Reply to the above Questions in relation to  any administrative provisional measures.
Subject to the “Border Measures” described in answer to Questions 15-19, under the laws of
Hong Kong, China, there are no provisions whereby provisional relief can be given by an
administrative body.
Special Requirements Related to Border Measures.
15. Indicate for which goods it is possible to  apply for the suspension by the customs
authorities of the release into  free circulation, in particular whether these procedures are
available also in respect of goods which invol ve infringements of intellectual property
rights other than counterfeit trademark or  pirated copyright goods as defined in the
TRIPS Agreement (footnote to Article 51).   Specify, together with relevant criteria, any
imports excluded from the application of su ch procedures (such as goods from another
member of a customs union, goods in transit or de minimis  imports).   Do the proceduresIP/N/6/HKG/1
Page 16
apply to imports of goods put on the market in  another country by or with the consent of
the right holder and to goods destined for exportation?
Indicate for which goods it is possible to apply for the suspension by the customs authorities
of the release into free circulation, in particular whether these procedures are available also in
respect of goods which involve infringements of intellectual property rights other than
counterfeit trade marks or pirated copyright goods as defined in the TRIPS Agreement
(Footnote to Article 51)
Under the Trade Descriptions Ordinance, the goods for which a proprietor of a trade mark
may apply to the High Court for a Detention Order are those which are defined as “infringing goods”.These are goods to which a forged trade mark has been applied or to which a trade mark or mark so
nearly resembling a trade mark as to be calculated to deceive has been falsely applied.
A person is deemed to forge a trade mark who either, without the assent of the proprietor of
the trade mark, makes that trade mark or a mark so nearly resembling that trade mark as to be
calculated to deceive, or falsifies any genuine trade mark, whether by alteration, addition, effacement,or otherwise.   Falsely applying a trade mark is defined as the application of a trade mark to goods
without the assent of the trade mark proprietor.
Under the Copyright Ordinance, right holder (owner or exclusive licensee of the copyright
that subsists in the work) may apply to the High Court for a Detention Order in respect of an
“infringing copy of a work”.  A copy of a work is an infringing copy if its making constituted aninfringement of the copyright in the work in Question.
The performer of a performance which gives rise to performer’s rights under Part III of the
Copyright Ordinance, the exclusive licensee of such rights, or a person who has fixation rights inrelation to the performance may apply to the High Court for a Detention Order where he has
reasonable grounds for suspecting that the importation of an article that constitutes an infringing
fixation of the performance may take place.  An “infringing fixation” is defined as follows:  "For thepurposes of the performer’s rights, a fixation of the whole or any substantial part of a performance of
his is an infringing fixation if it is made, otherwise than for private purposes, without his consent.  For
the purposes of the rights of a person having fixation rights, a fixation of the whole or any substantialpart of a performance subject to the exclusive fixation contract is an infringing fixation if it is made,
otherwise than for private purposes, without his consent or that of the performer”.
Other than the classes of goods and materials described above, no other goods are subject to
the Detention Order procedures.
Specify, together with relevant criteria, any imports excluded from the application of such
procedures (such as goods from another member state of customs union, goods in transit or de
minimis imports).  Do the procedures apply to imports of goods put on the market in another
country by or with the consent of the right holder and to goods destined for export?
Under both the Trade Descriptions Ordinance and the Copyright Ordinance, the only goods
exempted, by statute, from the application of the border measures are goods in transit and goods
imported by a person for his private and domestic use.  Goods in transit are defined as those which arebrought into Hong Kong, China solely for the purpose of taking them out of Hong Kong, China and
remain at all times in or on the vessel or aircraft in or on which they are brought into Hong Kong,
China.IP/N/6/HKG/1
Page 17
As the issue by the High Court of a Detention Orde r is an exercise of a discretion, such an order is
unlikely to be made in a de minimis situation.
Goods seized or detained by the Customs & Excise Department are also excluded from the
operation of the provisions.
The provisions under the Trade Descriptions Ordinance do not extend to “parallel imports” of
trade mark goods.  Furthermore, the procedures do not apply to “parallel imports” either of articles
infringing copyright or infringing fixations that were lawfully made in the country where they were
made.   “Lawfully made” does not however include the making of a copy of a work (or a fixation) in a
country where there is no law protecting copyright in the work (or rights in performances in the
performance) or where the copyright in the work (or rights in performances in the performance) has
expired.
The provisions do not extend to goods, articles or fixations intended for export.
16. Provide a description of the main elements of  the procedures relatin g to the suspension of
the release of goods by customs authorities,  in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirements
related to the duration of susp ension (Article 55).   How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of the goods)
and 57 (right of inspection and information) been implemented?
Where a right holder has reasonable grounds for suspecting that an importation of an article
that constitutes an infringing copy of the work in which he is the right holder may take place, he may
apply, in writing, to the High Court for a Detention Order.  The application may be made ex parte but
with previous notice to the Commissioner of Customs & Excise.  The competent authority from a
judicial point of view is the High Court, whilst the competent authority from an administrative point
of view is the Customs & Excise Department.
The application must be supported by an affidavit  which sets out the standing of the applicant
in relation to the work and the fact that it is a protected work;   annex an authorised copy of the work;
state the grounds for the application including the facts relied upon by the applicant to establish that
the article is prima facie an infringing one;  give sufficient details to identify it and state the expected
mode of transport, date of arrival, and particulars of the importer.
If the Court is satisfied at the hearing of the application that there is sufficient of prima facie
evidence infringement, the Court may make an Order directing the Commissioner to take reasonable
measures to seize or detain the article on or after its importation.  Such an Order is to be served by the
right holder upon the Commissioner.  The Order lapses after 60 days unless a seizure is
made before then.
The Court may require the right holder to provide security or an equivalent assurance in an
amount sufficient to protect the importer, consig nee, and owner of the article, from any loss or
damages suffered by reason of wrongful detention or by the failure of the right holder to bring an
action for infringement within the prescribed period.  Further security may be ordered by the court if
the period of detention is extended.  Furthermore, upon serving the Commissioner with a copy of theOrder, the right holder shall deposit with the Commissioner an amount that is, in the opinion of the
Commissioner, sufficient to reimburse the Govern ment for the costs likely to be incurred inIP/N/6/HKG/1
Page 18
connection with the carrying out of the Detention Order and, upon notification in writing of seizure,
provide the Commissioner such storage space and other facilities as he may require.
Upon being served with a copy of the Detention Order, the Commissioner shall seize or
detain any articles to which the Order relates.  The applicant has a continuing duty to provide the
Commissioner with such information as the Commissioner may reasonably require as in hispossession it is necessary.   Any affected party may apply at any time to the court for a variation of, or
to set aside, the Order.  Following seizure, the Commissioner is required to give notice to the right
holder and to the importer.  The right holder should  then forthwith bring an action for infringement
and notify the Commissioner that he has done so.  If the right holder does not bring an action for
infringement and notify the Commissioner in writing of the fact within ten days (not counting public
holidays, gale warning days or black rainstorm warning days) of notice of seizure (subject to any
further ten day extension ordered by the Court), the Commissioner may release the goods.
The importer is entitled to recover any loss or damages suffered by wrongful seizure,
abandoned proceedings for infringement, or unsuccessful proceedings.   The Commissioner must give
both the right holder and the importer the right to inspect the goods and draw samples if required.
There is power for the Commissioner to disclose to  the right holder, following seizure or detention
pursuant to a Detention Order, the name and address of the importer;  the consignee and consignor;
the nature and quantity of the articles seized;  any statement made to the Commissioner or an
authorised officer by any person connected with the seizure with that person’s written consent;  and
any other information or document relating to any ar ticle seized which the Commissioner thinks fit to
disclose.  The power of disclosure after the making of a Detention Order is more wide-ranging thanthe discretionary entitlement to provide for such di sclosure only after the merits of the infringement
action is determined.
With the necessary amendments required for the different nature of the goods, the above
description is equally applicable to the corresponding provisions of the Trade Descriptions Ordinance.
17. Describe provisions governing the length and cost of proceedings.   Provide any available
data on the actual duration of proceedings and their cost.   How long is the validity of
decisions by the compet ent authorities for the suspension of the relea se of goods into free
circulation?
Describe provisions governing the length and co st of proceedings.   Provide any available data
on the actual duration of proceedings and their cost
There are no provisions governing the length of proceedings.  The costs (apart from Court
filing fees) to the applicant, by reason of having to give security against possible loss by the importer,
have been detailed above.  There are no data available relating to the length and cost of proceedingsfor the reason given in answer to Question 8.
How long is the validity of decisions by the co mpetent authorities for the suspension of the
release of goods into free circulation?
See paragraph 5 of the reply to Question 16 above.
18. Are competent authorities required to act upo n their own initiative and, if so, in what
circumstances?  Are there any speci al provisions applicable to ex officio  action?
There are no provisions requiring the Commissioner of Customs & Excise to act on his own
initiative under the border measures detailed in Question 15 et seq.  He has, however, a duty toIP/N/6/HKG/1
Page 19
enforce the criminal provisions of the Copyright and the Trade Descriptions Ordinances.  He will act
in that capacity both on complaint being made and on his own initiative with respect to any
importation of infringing articles into Hong Kong, China.
There is specific protection provided in the border measure provisions exempting the
Commissioner and authorised officers (but not the Government of Hong Kong, China) from any lossor damage suffered as a result of any action taken or omitted to be taken in good faith in connection
with the carrying out of a Detention Orde r under the Trade Descriptions Ordinance.
19. Describe the remedies that th e competent authorities have th e authority to order and any
criteria regulating their use.
The Commissioner of Customs & Excise has no pow er to order any remedies.   The remedies
that may be ordered by the High Court, apart from a variation or the setting aside of a Detention Order
as detailed above in answer to Question 16, are those associated with infringement action in general as
detailed in answer to Question 5.
Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
In Hong Kong, China, summary offences are heard in the Magistrates Court, presided over by
a Magistrate;  indictable offences are heard in either the District Court, presided over by a DistrictCourt Judge sitting alone, or in the Court of First In stance, presided over by a Judge sitting with a jury
of seven jurors.  For juveniles, a special division of the Magistrates Court will hear criminal cases
involving offenders under the age of 16 years.
The Magistrates Court is the originating cour t for all criminal cases.  The prosecutor can
require a transfer of the case to the District Court, or seek a committal to the Court of First Instance on
the first appearance of the defendant in answer to the summons or warrant for arrest.  The
jurisdictional limit for a Magistrate is, except where a greater penalty is specifically provided for in
any ordinance, a fine not exceeding HK$100,000 and a term of imprisonment not exceeding two
years.  There is no limit on the value of goods that may be forfeited by operation of law.
The maximum sentence which can be imposed by a District Court Judge is a term of
imprisonment of seven years.  There is no maximum monetary penalty that can be imposed by a
District Court Judge, the maximum being generally provided for in the specific ordinance under
which the defendant is prosecuted.  There is no limit on the value of goods that may be forfeited by
operation of law.
The High Court sitting as the Court of First Instance in its criminal jurisdiction has unlimited
sentencing powers.
All appeals from criminal cases determined in the Magistrates Court are heard in the High
Court sitting in its appellate jurisdiction by a single Judge.
All appeals from criminal cases determined in the District Court and the Court of First
Instance are heard in the Court of Appeal.  Appeals to the Court of Appeal are heard by a panel of
three Justices of Appeal.  The appeals may be against conviction or sentence or both.
The Court of Final Appeal is the court of final adjudication in Hong Kong, China.  It will hear
appeals from the Court of Appeal and appeals from the Court of First Instance (not being a verdict of
a jury) where no appeal lies to the Court of Appeal.  Leave to hear criminal appeals will only beIP/N/6/HKG/1
Page 20
granted when the points of law involved are certified to be of great and general importance or that
substantial or grave injustice has been done.
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
Under the Copyright Ordinance, a person commits an offence if he, without the licence of the
copyright owner, makes for sale or hire;  imports into or exports from Hong Kong, China (otherwise
than for his private and domestic use);   possesses for the purpose of trade or business with a view to
committing any act infringing the copyright;  or, for the purposes of trade or business, sells or lets for
hire;  offers or exposes for sale or hire;  exhibits in public;  or distributes;   or distributes otherwise
than for the purpose of trade or business to such an extent as to affect prejudically the owner of the
copyright, an infringing copy of a copyright work.
The offence in the preceding paragraph carries a maximum penalty of a fine of HK$50,000
per infringing copy and imprisonment of four years.
It is also an offence under the Copyright Ordinance to make;  import into or export from
Hong Kong, China;  possess, sell or let for hire, or offer or expose for sale or hire an article
specifically designed or adapted for making copies of a particular copyright work where the article is
used or is intended to be used to make infringing copies of the copyright work for sale or hire or for
use for the purpose of trade or business.
Under the Copyright Ordinance, a person commits an offence if he has in his possession an
article, knowing or having reason to believe that it is  used or is intended to be used to make infringing
copies of any copyright work for sale or hire or for use for the purposes of trade or business.
Making infringing articles or the paraphernalia for making infringing articles outside Hong
Kong, China, for export to Hong Kong, China, and the export from Hong Kong, China of such
paraphernalia, otherwise than for private and domestic use, is also an offence under the Copyright
Ordinance.
The offences in the three preceding paragraphs carry maximum penalties of a fine of
HK$500,000 and imprisonment for eight years.
Under the Trade Descriptions Ordinance, a person commits an offence if he forges any trade
mark;  falsely applies to any goods any trade mark or any mark so nearly resembling a trade mark as
to be calculated to deceive;  makes, disposes of or has in his possession any die, block, machine or
other instrument for the purpose of forging a trade mark;  or causes to be done anything above, unless
he proves that he acted without intent to defraud.
Furthermore, any person who sells or exposes for sale or has in his possession for sale or for
any purpose of trade or manufacture, any goods to which any forged trade mark is applied, or to
which any trade mark or mark so nearly resembling a trade mark as to be calculated to deceive is
falsely applied, commits an offence.
Any person who imports or exports other than for private use, any goods to which a false
trade description or forged trade mark is applied also commits an offence, unless the goods are not
intended for trade or business.
It is an offence to apply a false trade description to goods, thus any false indication of the
place of manufacture can be charged as an offence which carries the same penalties as trade mark
offences.IP/N/6/HKG/1
Page 21
The offences in the four preceding paragraphs carry a maximum penalty on a conviction on
indictment of a fine of HK$500,000 and imprisonmen t for five years, and on summary conviction, of
a fine of HK$100,000 and imprisonment for two years.
With effect from 14 January 2000, offences relating to the infringement of trade mark rights
and the import or export of goods bearing a forged trade mark (under the Trade Descriptions
Ordinance), as well as offences relating to the making of and dealing with infringing copies of
copyright works (under the Copyright Ordinance) have been classified among offences under the
Organized and Serious Crimes Ordinance.
By virtue of this amendment, additional investigative powers are conferred on the
Commissioner of Customs & Excise to compel, by means of a court order, a particular person orpersons of a particular description, to produce or to grant access to material likely to be relevant to his
investigation of the copyright infringement or trade descriptions offence.  Where organised crime is
involved, a “witness order” is available, on application by the Secretary for Justice, to require a person
believed to have information relevant to an inves tigation to divulge such information and to furnish
material that reasonably appears to an authorised officer to be relevant to the investigation of anorganized crime.  In addition, the Court of First Instance or the District Court may, upon application
by the prosecution, make a confiscation order to recover the proceeds of the offence if they exceed
HK$100,000 in total.  In respect of sentencing, to assist the Court the prosecution may also furnish
such information as the prevalence of the offence, its financial rewards to the defendant, the nature
and extent of its impact on the community and the victim(s), and its connection with the activities of atriad society.  Based on this information, the Court of First Instance and the District Court may pass
an enhanced sentence which is subject to the statutory maximum penalty for the offence in question
(see paragraphs 2, 6 and 11 of the reply to Question 21 above).
Under the Prevention of Copyright Piracy Ordi nance, any person who manufactures optical
discs in Hong Kong, China without a valid licence commits an offence and is liable on first conviction
to a fine of HK$500,000 and to imprisonment for two years;  and on a second or subsequent
conviction, to a fine of HK$1,000,000 and to imprisonment for four years.
Any person who manufactures optical discs in any place in Hong Kong, China other than a
licensed premise, or manufactures optical discs without the manufacturer’s source identification code,
as endorsed on his licence, marked on them, commits an offence and is liable on first conviction to a
fine of HK$100,000 and to imprisonment for two years, and on a second or subsequent conviction, to
a fine of HK$200,000 and to four years imprisonment.
Minor offences exist for manufacture in contravention of conditions endorsed on the licence;
for failing to display the licence in a conspicuous place;  or failure to notify the Commissioner ofCustoms & Excise of any changes which occur in rela tion to any particulars set out in any application
made under the Prevention of Copyright Piracy Ordinance.
Under the Patents Ordinance and the Registered Designs Ordinance, criminal offences are
provided for the falsification of the Register;  unauthorised claim of patent rights;  false representationthat design is registered, or that a patent has been applied for;  and misuse of the titles “Patents
Registry” and “Designs Registry”.
Under the Plant Varieties Protection Ordinance, any person who, in an application, or in any
attachment to an application, furnishes or supplies, with intent to deceive, any false or misleadinginformation commits an offence.IP/N/6/HKG/1
Page 22
Any person who falsely represents that any person is the owner of a protected variety or that
any person has applied for a grant in respect of any variety, knowing or having reason to believe that
any person has applied for a grant in respect of any variety, knowing or having reason to believe that
the representation is false, commits an offence.
Any person- who falsely represents that a plant variety is a registered plant variety;- who sells material of a plant variety and who falsely represents that
- that variety is a protected variety or a variety in respect of which an
application has been made;  or
- that variety is material of some other variety being a variety that is a protected
variety or a variety in respect of which an application has been made,
knowing or having reason to believe that the representation is false, commits an offence.
Any person who willfully or negligently sells reproductive material of a protected variety or a
variety that was a protected variety until the grant made in respect of it expired, without using its
denomination or associating any trade mark, trade name or other similar indication with that
denomination unless that denomination is clearly recognisable commits an offence.
The offences in the four preceding paragraphs carry a maximum penalty of a fine of
HK$100,000.
Under the current Trade Marks Ordinance, it is an offence to make a false entry in the
Register, which is punishable by a fine of HK$50,000 and imprisonment for seven years.
22. Which public authorities are responsible for initiating criminal proceedings?  Are they
required to do this on their own initiati ve and/or in response to complaints?
The Commissioner of Customs & Excise has a duty to enforce the criminal provisions of the
Copyright Ordinance, the Prevention of Copyrigh t Piracy Ordinance and the Trade Descriptions
Ordinance.
The Director of Agriculture, Fisheries and Conservation (who is also designated as the
Registrar of Plant Variety Rights) has the duty to enforce the criminal provisions of the Plant
Varieties Protection Ordinance.  In doing so he may appoint any public officer to perform any of thefunctions conferred upon him.
Both departments will act on their own initiative as well as in response to complaints.  Other
law enforcement agencies, namely the Hong Kong Police and the Independent Commission Against
Corruption, will use their powers of arrest and seizure should they encounter suspected copies ofinfringing goods in the exercise of their duties.  The cases would then be passed to the Customs &
Excise Department for follow-up in vestigation and prosecution action.
Charges are laid by the Customs & Excise Department, and if the amount of the seizure is
comparatively small, the matter will be prosecuted by lay Customs & Excise prosecutors.  TheDepartment of Justice will be consulted in respect of any larger seizure for advice as to venue, the
appropriate charges and the sufficiency of evidence.  The prosecution of all criminal cases transferredIP/N/6/HKG/1
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to the District Court will be undertaken by a pros ecutor from the Department of Justice or by a Fiat
Counsel assigned by the Department of Justice.
Prosecutions in respect of criminal offences under the Patents, Registered Designs and Trade
Marks Ordinances would be conducted by the Department of Justice upon complaints being received.
23. Do private persons have standing to init iate criminal proceedings and, if so, who?
Under the common law, every person or body corporate has the right to institute any criminal
prosecution that does not require, under a statutor y provision, the prior consent of the Secretary for
Justice.  The Secretary for Justice has the power to take over and continue, or discontinue, a private
prosecution in the public interest and would do so unless warranted by exceptional circumstances.
24. Specify, by category of IPR and type of infringement where necessary, the penalties and
other remedies that may be imposed:
- imprisonment;
- monetary fines;- seizure, forfeiture and destruction of  infringing goods and materials and
implements for their production;
- other.
For the penalties that may be imposed for each specific offence, see the answer to
Question 21 herein.  In addition, the courts have wide  powers in dealing with infringing articles and
paraphernalia.
Under the Trade Descriptions Ordinance, any goods in respect of which an offence under the
Ordinance has been committed shall be liable to forfeiture, whether or not any person has beenconvicted of any such offence.  On any application brought by the Commissioner of Customs &
Excise for forfeiture, if the court is satisfied that the goods are liable for forfeiture, the court may
order that the goods be forfeited to the Government of Hong Kong, China;  be destroyed;  or, in
exceptional cases, any forged trade mark applied to the goods be obliterated and hereafter the goods
be disposed of in such manner and subject to any such conditions as the court may specify, or bereleased to the owner subject to such conditions as the court may specify.
Under the Copyright Ordinance, where an au thorised officer has seized or detained
- any article which appears to him to be an infringing copy of a copyright work;- an article specifically designed or adapted for making copies of a particular copyright
work which appears to him to be intended for use for making infringing copies of any
such work;
- anything which appears to him to be or to contain, or to be likely to be or to contain,
evidence of an offence under the Ordinance;  and
- any vessel, aircraft, or vehicle (other than a ship of war or a military aircraft or
vehicle) which he reasonably suspects to be or, has been used in connection with an
offence under the Ordinance,
that article, vessel, aircraft, vehicle or thing is li able for forfeiture whether or not any person has been
charged with an offence.IP/N/6/HKG/1
Page 24
Should the owner of the article etc.  so seiz ed fail to give notice to the Commissioner within
30 days commencing from the date of seizure that the article, vessel, aircraft, vehicle or thing is not
liable for forfeiture, at the expiration of that period, the article is forfeited forthwith to the
Government of Hong Kong, China.
Where a person is charged with an offence, the court may, if satisfied that any article, vessel,
aircraft, vehicle or thing
- is an infringing copy of a copyright work;- is an article specifically designed or adapted for making copies of a particular
copyright work and which has been used, or is intended to be used, for making
infringing copies of any such work;
- has been used in connection with any offence under the Ordinance, order that the
article, vessel, aircraft, vehicle or thing be
- forfeited to the Government of Hong Kong, China;- delivered up to the person who appears to the court to be the owner of the
copyright concerned;
- disposed of in such other way as the court may think fit;
whether or not the person charged is convicted of the offence with which he was charged.
Where an owner has given notice that the article is not liable for forfeiture within the
specified time, and the owner is not a defendant in criminal proceedings brought, the Commissionershall apply to a court for the forfeiture of the artic le, vessel, aircraft, vehicle or thing, unless he is
satisfied that on the basis of the evidence of the case, the thing seized should be delivered to the
claimant.  At the hearing of such an application, the court, if it is satisfied that the article, vessel,
aircraft, vehicle or thing is liable for forfeiture, may order that the article, vessel, aircraft, vehicle or
thing be
- forfeited to the Government of Hong Kong, China;- provided the claimant can satisfy the court th at the article seized is not an infringing
copy or as the case may be, an article specifically designed to make copies of any
particular copyright work, delivered up to the claimant, subject to any conditions
which it may specify in the order;
- disposed of in such manner and subject to such conditions as it may specify in the
order.
Under the Prevention of Copyright Piracy Ordinance, where an authorised officer has seized,
removed or detained
- any optical disc which appears to him to have been, or to be likely to have been,
manufactured in contravention of the Ordinance;  and
- any machinery, equipment or other thing which appears to him to be or to contain, or
to be likely to be or contain, evidence of an offence under the Ordinance,IP/N/6/HKG/1
Page 25
the optical disc, machinery, equipment or other thing seized is liable for forfeiture whether or not any
person has been charged with an offence under the Ordinance.
In the circumstances in the preceding paragraph the procedures outlined in paragraph 3 of the
reply to Question 24 under the Copyright Ordinance apply with the necessary modifications.   The
minor variation is that where a person is charged with an offence under the Prevention of CopyrightPiracy Ordinance, the court may, if it is satisfied that any optical disc has been manufactured in
contravention of the Ordinance, or any machinery etc.  has been used in connection with any offence
under the Ordinance, order that the optical disc machinery etc.  be forfeited to the Government of
Hong Kong, China or disposed of in such other way as the court may think fit, whether or not the
person charged is convicted of the offence.
25. Describe provisions governing the length a nd any cost of proceedings.   Provide any
available data on the actual duration of proceedings and their cost, if any.
There are no provisions governing the length of proceedings.  The presiding Judge has a duty
to control the conduct of his court, which he ma y exercise against a party who wastes time with
irrelevant evidence or cross-examination.   There are no filing costs in criminal trials.
Costs may be awarded against the prosecution in certain circumstances including where the
defendant is acquitted of some charges or where he is successful on appeal.  The power is
discretionary and costs would not normally be awarded if the defendant brought suspicion upon
himself.  Cost may be awarded against a defenda nt who is convicted or where an appellant is
unsuccessful and the Court of Appeal is satisfied that there was no merit in the appeal.
There is also provision for costs to be awarded against either party where a Court is satisfied
that costs have been incurred as a result of an unnecessary or improper act or omission by a party.
A specific provision exists to award costs where a defendant, having been served with an
affidavit  pursuant to Section 121 of the Copyright Ordinance, seeks nevertheless to call the deponent
to give evidence, and is subsequently convicted of the relevant offence.   The court shall in such
circumstances have regard to the actual costs incurred by the prosecutor and award costs accordingly.
An example would be where an over seas copyright owner has sworn the affidavit and is unnecessarily
brought to Hong Kong, China to give evidence, then the true costs involved can be awarded even if
they exceed the limit of costs which a court may otherwise award.
No data are available on the actual duration of proceedings.  A large percentage of defendants
plead guilty on being served with the evidence by the prosecutor.   Those cases which are contested
are often contested on matters such as the admissibility of confessions made, or on elements such as
lack of knowledge of the infringing nature of the goods rather than on the essential elements of rightssubsistence or ownership and infringement thereof.  Trials rarely therefore last more than five days,
with an estimated average of three days.
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