Hong Kong was one of the first places hit by the COVID-19 outbreak in January 2020. The government has since implemented various restrictive measures as well as special arrangements to deal with the pandemic.
From January 28 to March 2, the government ordered most civil servants in non-essential services to work from home. Following the second wave of COVID-19 cases, the Chief Executive announced that most civil servants are to resume working from home from March 23 until further notice. The government has also banned public gatherings of more than four people, and ordered a two-week closure of all cinemas, fitness centres, bars and other leisure venues. All Hong Kong borders are closed to all non-residents arriving from overseas and all transits through Hong Kong are suspended.
Government departments and public services have implemented various measures in compliance with the government’s lockdown policy. Below is a summary of the special measures relating to the protection and enforcement of IP rights.
Since late January, the Hong Kong Intellectual Property Department (the “IPD”) has intermittently implemented special operational measures such as the suspension of the Public Service Counter and reduction of its opening days. The IPD would publish a notice in the Hong Kong Intellectual Property Journal stating the period during which the registries will experience a disruption or will not operate. In general, if the deadline for filing any document or response with the Registrar expired on a day within this period, the deadline is to be extended to the next opening business day.
Where a user’s ability to respond to an action or prepare certain materials by the relevant deadline is directly or indirectly affected by the COVID-19 pandemic or any local policies in response to the pandemic, the user may file a request for extension including an explanation and evidence, where appropriate. In our experience, the IPD is generally prepared to be lenient in exceptionally difficult circumstances, provided that sufficient explanation and evidence is filed.
However, the IPD operates an e-filing system for registered e-filers to submit documents electronically. The e-filing system is fully functional and has not been affected by the special measures. Applicants can continue to prosecute IP applications under the current circumstances. However, where original documents are required or where a copy of the document must be served on a counterparty, those documents must be submitted to the IPD by mail or in person.
The Hong Kong Customs and Excise Department is the major enforcement authority for copyright and trade mark infringement. The department has not issued any specific notices or announcements indicating a general suspension of services. However, following the government’s general lockdown policy, we have seen the department postponing certain activities that require physical attendance or meeting, including inspection of goods and non-urgent raids on infringer’s premises on a case-by-case basis.
Nonetheless, the department continues to monitor the transit of goods and rightsholders will still be notified of any infringing activities according to the Customs’ usual practice. Rightsholders may also file complaints with Customs for them to investigate and potentially take action against the infringers. As the postponement of raids and inspections are determined on a case-by-case basis, Customs would likely take action on any urgent matters provided that the urgency is supported by reasons and evidence, where appropriate.
The Hong Kong Judiciary announced the General Adjourned Period (“GAP”) on January 29. During the GAP, all courts, tribunals and registries are generally closed, save for urgent and essential matters.
Since early March, the judiciary has from time to time published a list of urgent and essential matters and the operation of the courts. The Duty Judge system will be responsible for dealing with any urgent matters or hearings before the District Court and the High Court. Any party who considers that a matter has become urgent may bring their case to the court’s attention through the Duty Judge system. The party shall provide a certificate explaining the urgency and submit documents to enable the court to decide whether to handle such matter during the GAP on an exceptional basis.
As the court registries are generally closed, the judiciary has set up temporary “no-reply” email accounts for the submission of documents, including those used for the Duty Judge system. On April 1, the judiciary launched an online platform to allow parties and their legal representatives to lodge various documents with the courts (the ‘e-Lodgement Platform’).
Since the commencement of the GAP, many judges have been proactively managing cases, including giving appropriate directions and making determinations on paper to avoid the need for court attendance. For cases originally listed to be heard during the GAP (primarily interlocutory application and substantive applications not involving any witnesses), the judges may review the documents submitted and determine whether they can be disposed of on paper or to re-scheduled for a hearing.
Although the court is generally closed during the GAP, the court is still open to entertain applications for urgent injunctions and orders, including in the context of enforcement of IP rights. For IP rightsholders seeking to obtain an urgent injunction against a potential infringer, the abovementioned Duty Judge system should be used.
Where a rightsholder intends to seek damages or compensation from an infringer and anticipates a real risk of dissipation of assets by the infringer, they may consider applying for an urgent Mareva injunction (i.e. a freezing order) ordering the freezing of the infringer’s assets. If a rightsholder has reasonable suspicion that the infringer will likely conceal, destroy or dispose of any evidence, they may consider applying for an Anton Piller order to search for and seize certain documents or property on an urgent basis.
As for alternative dispute resolution, the Hong Kong International Arbitration Centre (the “HKIAC”) remains operational, with its case management teams working remotely and premises accessible for hearings and meetings. The HKIAC is also actively encouraging parties to consider using their virtual hearing services.
The judiciary supports the use of technology. On April 2, the judiciary issued a Guidance Note setting out the practice for remote hearings in civil cases in the Court of First Instance and the Court of Appeal during the GAP.
The first videoconference hearing (a matrimonial matter) took place on April 6 in the Court of Appeal. In the judgment handed down on April 8, the court held that a High Court judge has the power to determine the mode of the hearing and a videoconference hearing is lawful provided that the requirements for fairness and openness are satisfied. Having established a precedent and given the current COVID-19 pandemic, we expect to see more videoconference hearings as judges and lawyers become familiar with the arrangement.
While the above are temporary measures during the GAP, the Court Proceedings (Electronic Technology) Bill seeks to provide an electronic option for handling court-related documents. This Bill aims to implement a new integrated case management system to streamline and standardize electronic processes across all courts. The current court system is often criticized for lagging behind on technology so this would be a welcome development.
Overall, while certain public and court services are suspended or delayed, the protection and enforcement of IP rights are not substantially affected by the COVID-19 pandemic in Hong Kong. The current infrastructure and extraordinary measures still provide sufficient means for rightsholders to continue to seek protection and enforcement of their rights in Hong Kong.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.
Patty Chan (Partner)
Owen Tse (Partner)