All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Hong Kong SAR issues landmark cross-border injunction

hong-kong.jpeg

The Hong Kong High Court has handed down an injunction preventing passing off in mainland China, in what has been described as a first-of-its-kind decision

The Hong Kong High Court has issued an order granting a landmark preliminary injunction in favour of US-based nutrition supplement brand ChildLife and restraining passing off in mainland China via e-commerce platforms.

It is the first-ever preliminary injunction issued in Hong Kong SAR concerning passing-off activity in China. The court, in a ruling last Wednesday, October 20, took into consideration torts committed by the defendants outside of Hong Kong SAR and restrained them from passing off in mainland China.

The decision holds major significance as it lays the ground for parties to use Hong Kong SAR as a venue for pursuing infringement and passing off actions against suspected violations taking place in mainland China.

ChildLife, owned by life sciences company Biozeal, took action against an ex-distributor who was operating certain flagship stores in e-commerce platforms through its Hong Kong SAR-registered affiliates and targeting customers in mainland China. This was despite a distribution agreement between the parties being terminated.

According to ChildLife, the ex-distributor had not only refused to transfer the flagship stores to ChildLife after the agreement had ended, but continued to use the brand owner’s marks and device to market its new products.

While deciding jurisdiction, the court noted that the double actionability rule – that an action for an alleged tort committed in a foreign jurisdiction can succeed in a domestic court only if it would be actionable under the laws of both jurisdictions – is still valid in Hong Kong SAR.

The controversial double actionability rule has been abolished in the UK, where it originated, and many other countries worldwide.  

ChildLife was represented by Baker McKenzie. Partner at the firm Andrew Sim said: “This judgment is most significant, as it sets a new precedent for similar cases in the future.”

The defendants have appealed to the Hong Kong Court of Appeal.

more from across site and ros bottom lb

More from across our site

ITC counsel explain why companies will continue to bring trade secret complaints to the venue and talk about how to tackle challenges
Google and Sonos patent war continues; CNIPA finishes first administrative patent trials; Oppo halts German sales after Nokia wins; Chugai settles Fresenius suit; Taylor Swift claims she never heard Playas Gon’ Play; AI can’t be inventor, says Federal Circuit
Brands and retailers should educate their marketing departments and get help from their sales teams so private label products don’t become a major problem
The UK government wants to stop local tech going to China, but tech transfer offices often have few options
Hubertus Schacht of the Munich Regional Court shares his thoughts on German SEP trends and their influence on the UPC
Trademark counsel applaud the EUIPO’s new filing system but reveal it has come with teething issues
The executive vice president of partnerships and acquisitions at the NPE explains how his company’s deal with Intel came to be
South Korean lawyers welcome the trademark guidelines but say the appellate board, courts, and other IP offices may not necessarily agree with the KIPO
Lawyers for Craig Wright will seek approval for expert evidence to help the England and Wales High Court understand how autism affects his character
IP counsel say rude judges can dent their confidence but that the effect on clients should not be underestimated
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree