Hong Kong court expresses concern over making declaration of Trade Mark infringement in circumstances where no defence is filed

Declarations of Trade Mark infringement are commonly sought in actions for infringement of intellectual property rights. However, the Hong Kong High Court recently expressed its concern about making a declaration of infringement in circumstances where the defendant had not filed a defence. While the court was not required to express a final view on this issue, this case demonstrates that declarations are most likely to be ordered following a contested trial, rather than in an application for default judgment.  This case also provides a reminder to practitioners to follow the correct procedures when applying for default judgment. Continue reading

Hong Kong Court of First Instance clarifies the meaning of “authorisation” in copyright infringement

The already complex law around copyright infringement becomes even more vexed when the infringer alleges in its defence that the copyright owner in effect consented to (technically speaking “authorised”) the infringement.

While there are a significant number of reported cases which address the meaning of “authorisation”, these are mostly limited to their facts and fail to identify the precise circumstances in which authorisation will be established.

In a recent decision by the Court of First Instance (CFI), the CFI issued a considered judgment seeking to reconcile the authorities and to determine the factors which will point to a finding of authorisation. In particular, the Court found that where a principal:

  • has knowledge of the infringement by the third party;
  • issues specific instructions which, when followed by the third party, results in the copyright infringement;
  • a high level of control over the third party; and/or
  • final approval of the infringing work,

that principal may be liable for authorisation of copyright infringement. Continue reading

Hong Kong Court addresses key aspects of trade mark law

In the recent case Vita Green Health Products Company Limited v. Vitasoy International Holdings Limited (HCMP 593/2014), the Hong Kong Court of First Instance highlighted some important principles of trade mark law which should be considered when applying or opposing a trade mark. In particular:

  • while a mark may have an established reputation in respect of particular goods, that does not mean that reputation will extend to other goods
  • it is important to consider the Hong Kong public when assessing whether a particular mark will be considered descriptive or distinctive. Decisions from other jurisdictions may not assist in this regard
  • the Court will be slow to overturn a decision of a Registrar where the conclusion was based on contextual assessment and evaluation

Continue reading