Comments on the Draft Hague Convention on Jurisdiction And

HONG KONG BAR ASSOCIATION

Comments on the draft Hague Convention on Jurisdiction and

Foreign Judgments in Civil and Commercial Matters -

Consultation on Intellectual Property Issues

Paragraph 6: Grant and validity of patents (Article 12(4))

The Bar is in favour of the proposal that the courts of the Contracting State of grant shall have exclusive jurisdiction in proceedings in which judgments are sought on the grant, registration, validity, abandonment or revocation of patents.
The proposal of conferring exclusive jurisdiction should be extended to all forms of intellectual property rights. There is no reason to treat patents and other intellectual property rights differently.
Intellectual property rights are governed by the domestic laws of each Contracting State and they are territorial in nature.
Practically speaking, the existing practice of the Hong Kong courts is in line with the proposal. Patents granted in Hong Kong are governed by Hong Kong laws and litigations on the rights conferred by Hong Kong patents are normally brought before Hong Kong courts.

Paragraph 7: Infringement of patent rights (Article 12(4)&(5))

The Bar is in favour of the proposal that infringement proceedings should be subject to the exclusive jurisdiction of the courts of the Contracting State granting the patent involved.
As intellectual property rights are territorial, infringement has to take place within the jurisdiction of the Contracting State of grant before it is actionable in that state.
The said proposal should be extended to all forms of intellectual property rights. There is no reason to treat patents and other intellectual property rights differently.

Paragraph 8: Infringement of patent rights (Article 12(4)&(5))

The Bar does not support the proposal contained in paragraph 8, which apparently has more to do with the E.U. than Hong Kong.
The Bar does not see the argument for having one set of proceedings to resolve all disputes in respect of a patent. It is not unlikely that litigations concerning the same patent may involve different parties or some additional parties other than the defendant and/or different claims in different jurisdictions.

Paragraph 9: Incidental question exception (Article 12(6))

The Bar is in favour of the proposal that where the question of grant or validity of a patent arises only as an incidental issue in proceedings, the exclusive jurisdiction provision should not apply.

Paragraph 11: Registered Trade Marks (Article 12(4), (5A) & (6))

The Bar is in favour of the proposal that the question of validity and infringement of registered trade marks should be subject to the exclusive jurisdiction of the courts of the Contracting State where such marks are registered.
Like patents, registered trade mark rights are local in nature and should be treated similarly.

Paragraph 14: Unregistered Trade Marks (Article 12(5))

The Bar is in favour of the proposal that exclusive jurisdiction should be conferred upon the courts of the Contracting State in which the unregistered rights concerned arose in respect of proceedings where judgments on the validity, abandonment, or infringement of such unregistered rights are sought.
Such rights are also local in nature and should be treated on the same basis as patents.

Paragraphs 15 to 17: Copyright (Article 12(7))

The Bar is of the view that all intellectual property rights should be treated similarly. Like patents, copyright is local in nature and is governed by the domestic laws of each Contracting State respectively.
The Bar does not see the argument for treating copyright differently.

Paragraph 18: Other registered right (Article 12(7))

The Bar is of the view that if exclusive jurisdiction is to be conferred upon the courts of any Contracting State in respect of any particular type of intellectual property rights, the same principle should be applied to all types of intellectual property rights generally. The Bar does not see the argument for treating them differently.

Paragraph 20: Impact of E-Commerce

The Bar is of the view that Article 10 should not apply to intellectual property rights, and it is even more so with respect to the question of infringement in an on-line environment.
Article 10 does not seem to have been drafted with intellectual property rights in mind. It is apparently directed at torts generally.
Article 10 refers to “acts or omission”. But in the context of intellectual property rights, there has to be an act in order to constitute an infringement. Negligence or omission is not sufficient.
Intellectual property rights are territorial. The application of Article 10 to intellectual property rights would require amendments to the domestic intellectual property laws of the Contracting States. To internationalise intellectual property rights would therefore bring about wide implications.
Further, the present consultation is not the appropriate place to deal with the question of how to ascertain where an infringing act took place or where the harm inflicted by such act arose. Such question has to be further discussed and addressed elsewhere.

Paragraph 25: Views Sought

(i)Yes.

(ii)See (iii) below.

(iii)Exclusive jurisdiction should be given to the courts of the Contracting State where the intellectual property rights were granted or arose. See comments to paragraphs 6 and 7 above.

(iv)See comments to paragraph 20 above. The question of determining jurisdiction over infringement in an internet environment has to be addressed elsewhere.

(v)Yes.

(vi)Yes. The Bar is of the view that there is no reason to exclude intellectual property in general from the proposed Convention and deal with the question of patents and trade marks separately. There is no reason that different intellectual property rights should merit different treatment given that they are territorial in nature.

(vii)No.

Dated the 26th day of March 2002.