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Resolution of Intellectual Property Disputes

Resolution of Intellectual Property Disputes . Venue Novotel Bauhinia Shenzhen Hotel, China Date 15 October 2008 Presented by Charmaine KOO Partner, Intellectual Property Department Deacons Hong Kong. Modes of Resolving IP Disputes in Hong Kong . Court Civil Customs (Court) Criminal

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Resolution of Intellectual Property Disputes

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  1. Resolution of Intellectual Property Disputes Venue Novotel Bauhinia Shenzhen Hotel, China Date 15 October 2008 Presented by Charmaine KOO Partner, Intellectual Property Department Deacons Hong Kong

  2. Modes of Resolving IP Disputes in Hong Kong • Court • Civil • Customs (Court) • Criminal • Arbitration

  3. Modes of Resolving IP Disputes in Hong Kong • Which mode? • Parties’ relationship? • No relationship • court • customs • Contractual relationship • court • arbitration

  4. Modes of Resolving IP Disputes in Hong Kong • Close and ongoing business relationship • Arbitration • Need for confidentiality? e.g. - confidential information - trade secrets - secret processes  Arbitration • Enforceability of Decision • Parties from different jurisdiction?

  5. Pros and Cons of Court System • Pros • Long legal history • Established legal principles • Established body of case law / precedents • Impartial judges • Due process • Each party fair chance to present case • Rules for full disclosure • Discourage surprises • Detailed procedures • Open court system

  6. Pros and Cons of Court System • Encourages settlement • Stigma of being sued • Cost pressure • Cons • Takes a long time • Expensive • Solicitors • Barristers • Only 60 – 70% legal fees awarded • No expert judges in IP

  7. Arbitration • Pros • More informal and flexible • Can choose experts in field to be arbitrators • Confidential • Enforceable if parties from different jurisdictions • Cons • Lack of pressure of legal proceedings • Lack of interim powers • Can be even more expensive • pay venue • pay arbitrators

  8. Enforcement of Foreign Judgments in Hong Kong • HK judgments not automatically enforceable in other jurisdictions • Foreign judgments not automatically enforceable in HK e.g. PRC judgment not enforceable in HK HK judgment not enforceable in PRC

  9. Enforcement of Foreign Judgments in Hong Kong • Generally, a foreign judgment can be enforced in one of two ways: • at common law by bringing an action in the Hong Kong Courts on the foreign judgment or • if applicable, under the Foreign Judgments (Reciprocal Enforcement) Ordinance (Cap 319) (“FJREO”) which provides a mechanism for enforcing foreign judgments in Hong Kong by means of a registration procedure • There is a separate arrangement on the reciprocal enforcement of judgments between Hong Kong and Mainland China

  10. Enforcement of Foreign Judgments in Hong Kong • Under the common law, the foreign judgment must be: • for a definite sum of money • final and conclusive as between the parties • given by a court of competent jurisdiction • However, if the foreign judgment is from a country designated under the FJREO, then the judgment can only be enforced by way of registration under the FJREO  

  11. Enforcement of Foreign Judgments in Hong Kong • Under the FJREO: • a registration procedure • upon registration, the foreign judgment will be deemed to have the same force and effect as a judgment obtained in a Hong Kong court • covers a judgment or order made by a court in any civil proceedings, or a court in any criminal proceedings for the payment of a sum of money in respect of compensation or damages to an injured party • the number of countries designated under the FJREO are quite limited - key exceptions are UK, US and Mainland China

  12. Reciprocal Recognition and Enforcement of Judgments Between Mainland China and Hong Kong • Agreement reached in July 2006 • Mainland Judgments (Reciprocal Enforcement) Ordinance passed in February 2007 and Mainland Supreme People’s Court made judicial announcement in July 2008 • Arrangement in force in Hong Kong and Mainland from 1 August 2008

  13. Reciprocal Recognition and Enforcement of Judgments Between Mainland China and Hong Kong • The Arrangement only applies to: • monetary judgments (orders for specific performance or injunctions will not be covered) • commercial contracts (contracts relating to matrimonial matters, wills, employments and consumer matters etc are excluded) • final judgments rendered by specified courts in Hong Kong and the Mainland • the parties must have expressly agreed in writing to designate a Mainland or a Hong Kong Court to have exclusive jurisdiction for resolving any dispute

  14. Reciprocal Recognition and Enforcement of Judgments Between Mainland China and Hong Kong • Careful consideration needs to be given as to whether reciprocal enforcement under the Arrangement is desired or appropriate in each specific case. Selecting an exclusive jurisdiction could have undesirable results • For IP cases, may not be sufficient if only monetary damages are enforced e.g. injunction orders for transfer of IP rights

  15. Conclusion • More common to use court proceedings • Unless involves foreign parties  then arbitration

  16. Resolution of Intellectual Property Disputes Thank you for your participation. Any Questions? Presented by Charmaine KOO Partner, Intellectual Property Department Deacons Hong Kong

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