Mainland, Hong Kong SAR and Macau SAR Intellectual Property Symposium 2003

China Intellectual Property Training Center, Beijing

THEME : Judicial Protection of Intellectual Property Rights in Hong Kong

~ By C. K. Kwong ~Sit Fung Kwong & Shumhttp://www.sfks.com.hk

I. Brief Outline of the Present Judicial Procedures

A. Civil Procedures

Cease and Desist Letter

demands:

- an undertaking not to infringe

- delivery up

- disclosure of past dealings

- payment of damages

- contribution of legal costs

Less due diligence before action to save costs

Legal Action in the Civil Court

writ

Statement of Claim”

Ex-parte Injunction

Anton Piller K G v. Manufacturing

Process Ltd. [1976] CH.55 (CA)

Interlocutory Injunction

American Cyanamid v. Ethicon

Defence

Reply

Other interlocutory applications - further & better particulars, interrogatories, security for costs

Summons for Directions

- evidence

- trial

Summary judgment

Costs

hourly rates (barrister) HK$2,500 per hour from a reasonably competent junior counsel to HK$8,000 per hour for a Senior Counsel

Solicitors hourly rate ranges from HK$1,000 to HK$4,500

Usually costs recoverable is approximately 60% to 70% of actual amount spent

Difficult to estimate costs. It depends on how aggressive will the litigation be conducted by the parties.

B. Criminal Procedures and Remedies

Copyright Ordinance

Trade Descriptions Ordinance

Judicial Trend

II Reform on Civil Procedure Rules

Consultation Paper

“Civil Justice Reform : Interim Report and Consultative

Paper” November 2001

report on other relevant jurisdictions, review the Hong Kong situation

formulate proposals for reform

The Woolf reforms in England used as a frame work

Aim to address problems of expense, delay, complexity and inequality in resources

New system be just, fair, efficient, user friendly, economical and practical

80 proposals put forward

Common Complaints

Too expensive

Too slow

Lack of equality

Too uncertain

Too complicated

Misuse of adversarial system

Take up disproportionate judicial resources

Themes for possible reforms

Proportionality

Re-defining procedural requirements

Encouraging earlier settlement

Limiting interlocutory application

Giving court greater case management

Minimising hearings

Introducing costs transparency

Exploring use of voluntary ADR

Comments from Lord Woolf himself

The idea of proportionality. More complex procedures for more complex case. Small disputes should have simple, cheap and speedy procedure

go to the court only as a last resort

No. of cases dropped by one-third

Court only encourage alternative dispute resolution but cannot order it

Problems include

- Balancing between certainty andflexibility

- Controlling costs while encouraging lawyers to incur expen

ses before litigation starts I.e. “front loading”

- inconsistencies in the application of the broad powers

won’t degenerate into a trial by expert instead of trial by judge

principles would be applicable in Hong Kong

The Hong Kong Law Society’s Position

The Chief Justice’s Working Party looked at the system from the top down. The Law Society looked at it from bottom up

The Woolf Reform is not a panacea to the costs and delay problems

Keep the existing rules

Acknowledged that litigation in Hong Kong is costly and time consuming. That could be due to other reasons

Proposed that pleadings should be “enhanced”

Positive and substantive grounds of defence should be put forward

The wide ambit of Peruvian Guano test should apply in discovery of documents

There are pros and cons with active case management by the court

Different judges making different and inconsistent decisions is even worse

The Intellectual Property Practitioner’s View Point

Need to be more efficient and less expensive

Generally, the reforms should be supported

The following proposals are useful

- adoption of pre-action protocols

- favours specialisation

- pleadings to be verified

- offer for settlement at any stage

- case management, time tabling and milestones

- Special List

- limited discovery

Compulsory mediation may not be practical for counterfeiters

In other infringement cases, mediation may be useful where IP specialist are available

Summary assessment of costs may be adopted provided it does not replace a detailed cost analysis in appropriate

cases

Court should have control on the scope and use of expert evidence

A Code of Conduct for expert witnesses should be introduced

Welcome solicitors and barristers (i) to disclose to their clients basis of their

charges (ii) to provide best estimates

A new set of rules rather than piecemeal amendments

Essential to have

- adequate judicial and court resources

- training programmes to familiarise judges and other court staff with reforms, development of computerise

d system to perform case-flow management, resource allocation and management statistic function

The Working Party is to provide their final report by the end of this year

~ Thank You ~