ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note was originally written for LexisAdvance® Practical Guidance Hong Kong. Hong Kong law provides protection for registered designs. The governing law on registered designs in Hong Kong is the Registered Designs Ordinance (Cap 522) (RDO) and its subsidiary legislation the Registered Designs Rules (Cap 522A). There are no unregistered design rights which arise automatically in Hong Kong, although copyright may still subsist in the work under the Copyright Ordinance (Cap 528) (CO). (See CO, s 87 for copyright subsistence in a corresponding registered design and also corresponding unregistered design.) Why register? Registered designs protect the appearance of new designs. Registration gives design owners a monopoly over their designs, allowing them to stop third parties from copying their design, manufacturing, importing, using, selling or hiring out their articles based on their registered design without their consent. Protection for registered designs is territorial. Therefore, to obtain protection as registered designs in Hong Kong, the designs must be registered in Hong Kong.

ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note was originally written for LexisAdvance® Practical Guidance Hong Kong. Applicable law In Hong Kong, infringement of registered designs is principally governed by the Registered Designs Ordinance (Cap 522) (RDO). Exclusive right of the registered owner Registration of a design in Hong Kong gives the registered owner the exclusive right to import into, make, sell, hire, offer or expose for sale or hire in Hong Kong any article covered by the design registration and to which that design or a design not substantially different from it has been applied (RDO, s 31(1)). What are infringing acts? The acts of infringement are set out in RDO, s 31(2): • doing anything which is the exclusive right of the registered design owner • making anything for enabling an article falling within such exclusive right to be made in Hong Kong or elsewhere (eg moulds, dies etc) • doing anything in relation to a kit which would amount to infringement

Arbitration analysis: This decision affirms well-established legal principles on the grant of security for costs in the context of an application to set aside an arbitral award under section 81(1) of the Arbitration Ordinance (Cap. 609) (AO). The plaintiffs argue that the award should be set aside as it acknowledges a Set-Off Mechanism, the effect of which the plaintiffs contend conflicts with Hong Kong public policy. The Set-Off Mechanism in this case, in essence, obliged the 1st plaintiff to waive the purchase price for shares in the amount outstanding to the 1st defendant, should the 2nd defendant fail to pay the 1st defendant any amount due under a promissory note. The 1st defendant applied for security of costs to be furnished by the plaintiffs in the set aside proceedings. Mrs Justice Mimmie Chan considered that the set aside application had little prospect of success and held that it would be just to exercise discretion to order the plaintiffs to provide security for costs. The case demonstrates the Hong Kong Courts’ consistently supportive stance towards arbitration and arbitral awards, in that the ordinary principles to security of costs will not be departed from to make easier any challenge to an arbitral award. Written by Paul Starr, partner at King & Wood Mallesons; Felicity Ng, senior associate at King & Wood Mallesons; Sian Knight, professional support lawyer at King & Wood Mallesons.

Transactions between commercial entities and governments or government-owned entities are relatively common in the context of foreign investment and cross border contracts. Parties to cross border arrangements frequently choose to submit potential disputes to international arbitration rather than court litigation. Reasons for this preference are obvious. On one hand, international arbitration removes the dispute from the purview of domestic courts of the state party and brings them before a neutral forum. On the other hand, international conventions, such as the Convention on the Settlement of Investment Disputes Between States and Nationals of Other States (ICSID Convention) and the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention), have substantially facilitated the enforcement of arbitration agreements and awards. Despite the foregoing advantages of international arbitration, state immunity can mean a substantial hurdle to effective dispute resolution in dealings/disputes with states or state-owned entities. State immunity essentially means that a sovereign state cannot be compelled to submit to the jurisdiction of the courts of a foreign state (immunity from jurisdiction). This immunity can also

ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note considers how the issue of state immunity is dealt with in Hong Kong, with a particular focus on arbitration. A former British colony, Hong Kong was handed over to the People’s Republic of China (PRC) on 1 July 1997. Since then, the PRC has exercised its sovereign power over the Hong Kong Special Administrative Region (HKSAR) under the principle of ‘One country, Two systems’ as stipulated in The Basic Law of the Hong Kong Special Administrative Region of the People’s Republic of China, Chapter 2101 (the Basic Law), the constitutional document of the HKSAR. The HKSAR enjoys a high degree of autonomy and an independent judiciary from China. In particular, Basic Law, art 2 provides that: ‘The National People's Congress authorizes the Hong Kong Special Administrative Region to exercise a high degree of autonomy and enjoy executive, legislative and independent judicial power, including that of final adjudication, in accordance with the provisions of this

ARCHIVED: This Practice Note has been archived and is not maintained. STOP PRESS: This Practice Note is under review in light of the decision in Sit Kwong Lam v Petrolimex Singapore Pte Ltd [2019] HKCA 1220 and related jurisprudence. Despite parties agreeing arbitration agreements, when a dispute arises, one of the parties may decide that it no longer wishes to arbitrate. In such instances, the party may start court proceedings to determine the dispute. The reasons for taking such a stance can be varied, eg the dispute involves three parties, one of which is not a party to the arbitration agreement. If court proceedings are commenced when there is a valid arbitration agreement, the other party may: • agree to the matter being determined by the court—the court proceedings will then continue • apply to the court to stay the court proceedings The following guidance applies to most disputes, but the extent to which it applies to labour disputes,

Despite parties agreeing arbitration agreements, when a dispute arises, one of the parties may decide that it no longer wishes to arbitrate. In such instances, the party may start court proceedings to determine the dispute. The reasons for taking such a stance can be varied, eg the dispute involves three parties, one of which is not a party to the arbitration agreement (Section 20 of the Arbitration Ordinance (Cap 609) (AO)). Note: Hong Kong judgments below are not reported by LexisNexis®. Note: The Arbitration Ordinance (Cap 609) abolished the dual regime for ‘international’ and ‘domestic’ arbitrations and created a unitary framework for the conduct of all arbitration in Hong Kong although Hong Kong legislators chose to retain the key features of the ‘domestic’ regime in a series of ‘opt-in’ provisions set out in Schedule 2 of the new Ordinance. Local advice should be acquired on the latest approach of the Hong Kong courts to stays in favour of arbitrations (either domestic or international) before the Hong Kong courts. If Hong Kong

Arbitration analysis: Simon Chapman, partner, and Naomi Lisney, senior associate, both at Herbert Smith Freehills, examine the decision of the Hong Kong High Court in AIG Insurance Hong Kong Limited v Lynn McCullough and William McCullough that the McCulloughs, who needed to obtain a determination of coverage in favour of the insured as a precondition to bringing a ‘bad faith’ claim against the insurer in Florida, were barred from doing so otherwise than in accordance with the provisions in the policy, which included an arbitration clause.

ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note was originally written for LexisAdvance® Practical Guidance Hong Kong. Infringement A mark is infringed if in the course of trade or business (section 18(1)–(4) of the Trade Marks Ordinance (Cap 559) (TMO)): • a sign which is identical to the trade mark is used in relation to goods or services which are identical to those for which it is registered • a sign which is identical to the trade mark is used in relation to goods or services which are similar to those for which it is registered, in circumstances where there is a likelihood of confusion, or • a sign which is similar to the trade mark is used in relation to goods or services which are identical or similar to those for which it is registered, in circumstances where there is a likelihood of confusion • provided the mark is well known, the use of an identical or similar sign is used in relation to goods or services which

ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note was originally written for LexisAdvance® Practical Guidance Hong Kong. Application procedure A trade mark is a sign, which can be represented graphically, and which distinguishes goods or services of one undertaking from those of others. The concept includes words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging, or any combination of such signs, packaging (section 3(2) of the Trade Marks Ordinance (Cap 559) (TMO)). Making an application An application for registration of a Hong Kong trade mark is made to the Hong Kong Trade Marks Registry (TMR). The essential filing requirements for an application are (TMO, s 38(2)): • a request for registration of the mark • the name and address of the applicant • a statement of the goods or services for which registration is sought (under the Nice Classification; see below) • a representation of the trade mark If the TMR is satisfied that these

Private Client analysis: The Hong Kong Court of Final Appeal has reversed the decisions of Hong Kong's Court of Appeal and lower courts in finding that extensive anti-Bartlett provisions in the trust deed of a Jersey family trust effectively exempted the trustees after investments in high risk foreign exchange transactions suffered significant losses during the 2008 financial crisis. In reaching this decision, the Court of Final Appeal rejected the idea propounded by the lower courts that the trustees retained a ‘high level supervisory duty’, even where the trust deed expressly relieved them from any duty to interfere with the business or the management of the underlying investment company. Written by Andreas Kistler and Louise Woolrich, partner & senior associate in Trusts & Private Wealth/Dispute Resolution, at Carey Olsen Jersey LLP.

The element of value of land over and above the existing use value ie reflects the prospect of potential development/alternative use.