Judicial Administration Structure for IP Disputes: Hong Kong Special Administrative Region
Information provided by:
Intellectual Property Department, the Government of the Hong Kong Special Administrative Region of the People’s Republic of China
| Court of Final Appeal | ||||||||||||||
| Court of Appeal (High Court) | ||||||||||||||
| Court of First Instance (High Court) | ||||||||||||||
| District Court | ||||||||||||||
| Copyright Tribunal | Registrars of Trade Marks, Patents, and Designs | Magistrates' Court | ||||||||||||
| Administrative Jurisdiction - Copyright Tribunal deals with disputes relating to licences offered by, or licensing schemes operated by, licensing bodies in the copyright and related area |
Administrative Jurisdiction - Registrars of Trade Marks, Patents, and Designs deal with pre- and post-grant/registration disputes concerning trade marks, patents, and registered designs |
Civil Jurisdiction -Post-grant/registration disputes concerning trade marks, patents, and registered designs - Civil infringement of IP rights |
Criminal Jurisdiction - Criminal prosecutions (first instance court - depends on gravity of offence) |
Civil Jurisdiction - Breach of confidence or passing off disputes up to HK$3 million |
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The Intellectual Property Department (IPD) of the Hong Kong Special Administrative Region (“HKSAR”) Government is responsible for operating the Trade Marks, Patents and Registered Designs Registries of the HKSAR.[1]
The Registrars of Trade Marks, Patents and Designs deal with pre-grant/registration disputes such as opposition[2], and certain post-grant/registration disputes such as revocation. The Registrar's decisions are appealable to the Court of First Instance.[3]
The Copyright Tribunal mainly handles disputes relating to licences offered by, or licensing schemes operated by, licensing bodies in the copyright and related area, such as performers' rights.[4] Appeals on any point of law arising from the decisions of the Copyright Tribunal are heard by the Court of First Instance.[5]
[1] Schedule 2, Director of Intellectual Property (Establishment) Ordinance (Cap.412)
[2] S.44, Trade Marks Ordinance (Cap.559)
[3] S.130, Patents Ordinance (Cap.514), s.58, Registered Designs Ordinance (Cap.522), s.84, Trade Marks Ordinance (Cap.559)
[4] Ss.173, 233, Copyright Ordinance (Cap.528)
[5] S.176(1), Copyright Ordinance (Cap.528)
The Court of First Instance has original jurisdiction to deal with certain post-grant/registration disputes such as revocation[6]. Moreover, it has original jurisdiction over all civil infringement of IP rights.
Decisions of the Court of First Instance are appealable to the Court of Appeal.
Claims not exceeding HK$3 million founded in tort, such as breach of confidence or passing off, may also be initiated in the District Court.[7]
Criminal offences concerning IP matters may be tried by the Court of First Instance[8], District Court or the Magistrates' Courts, depending on the nature (indictable or summary) and the seriousness of the offences. Appeals of magistrates' decisions are heard in the Court of First Instance, while appeals of the decisions of the Court of First Instance or the District Court are heard in the Court of Appeal.[9]
The Court of Final Appeal is the highest appellate court in HKSAR, hearing appeals on both civil and criminal matters.[10]
[6] For example, s.52(1), Trade Marks Ordinance (Cap.559), s.46(2), Patents Ordinance (Cap.514)
[7] S.32, District Court Ordinance (Cap.336)
[8] For example, s.119(2), Copyright Ordinance (Cap.528) provides that a person who commits an offence under s.118(4) or (8), Copyright Ordinance is liable on conviction on indictment to a fine of $500,000 and to imprisonment for 8 years. That is within the jurisdiction of CFI under s.12(3), High Court Ordinance (Cap.4).
[9] S.13, High Court Ordinance (Cap.4)
[10] Ss. 4(1), 21, 22(1), 31, Hong Kong Court of Final Appeal Ordinance (Cap.484)
The IP List of the Court of First Instance was established on 6 May 2019, and specialist Judges are assigned to handle and better manage IP cases.
From the Courts: https://legalref.judiciary.hk/lrs/common/ju/judgment.jsp
From Trade Marks Registry: https://www.ipd.gov.hk/en/trade-marks/trade-mark-hearings/cap559/index.html
From Copyright Tribunal: https://www.ct.gov.hk/en/decisions/index.html