Arrangement for Reciprocal Recognition and Enforcement of Judgments in Civil and Commercial Cases by the Courts of the Mainland and of the Hong Kong Special Administrative Region (“Arragenment”) has been signed on 18 Jan.2019

Many companies would choose Hong Kong as the jurisdiction place when they are involved in foreign civil and commercial activities. Till 2018, mainland and Hong Kong have signed arrangements on 4 aspects: (a) enforcement of arbitration awards; (b) recognition and enforcement of the judgments of civil and commercial cases under consensual jurisdiction; (c) recognition and enforcement of civil judgments in matrimonial and family cases; and (d) to be commissioned obtaining of evidence in civil and commercial cases. In order to cooperate more comprehensively, the Mainland and Hong Kong signed the Arrangement on 18 Jan.2019, and the Arrangement will take effect after both parties have completed the corresponding administrative procedures.

The Arrangement has prescribes many aspects, and we would only introduce the contents related to IPR.

1. The applicable scope

(1) Article 5 prescribes that the Arrangement could be applied to cases related to IPR specified in Article 1 Paragraph 2 of the Agreement on Trade-related Aspects of Intellectual Property Rights, and IPR to new plant varieties owned by the right holders, as stipulated in Item 7 of Paragraph 2 in Article 123 of the General Rules of the Civil Law and the Regulations of Hong Kong on the Protection of New Plant Varieties.

(2) Article 3 prescribes that the Arrangement shall not be applied to cases heard by a people’s court in the mainland, involving infringement of a patent for an invention or patent for a utility model, cases heard by a court in the Hong Kong, involving tortious infringement of a standard patent (including original grant patent) or short-term patent, cases relating to the confirmation of the license fee rate of a standard-essential patent, and cases involving the intellectual property not covered in Article 5 hereof.

In view of the above, there are still limitations on the IPR related cases.

2. Jurisdictional Basis

The requesting court shall be considered to have jurisdiction when the case meets the following conditions:

(1) The categories of the acts, which are related to the IPR infringement; unfair competition prohibited under Article 6 of the Anti-Unfair Competition Law; and counterfeit heard by Hong Kong courts.

(2) The act of infringement of IPR was committed in the requesting place.

(3) The IPR or interest concerned is subject to protection under the law of the requesting place.

3. Rulings which will not be recognized or enforced

Rulings by the original court on the validity of an IPR or whether an IPR is established or subsists are not recognized or enforced. However, a ruling on liability based on such rulings and which complies with the relevant requirements of this Arrangement, shall be recognized and enforced.

4. The recognization and enforcement of monetary rulings

For tortious claims for infringement of IPR and civil disputes over acts of unfair competition under Article 6 of the Anti-Unfair Competition Law heard by a people’s court of the Mainland, or disputes over passing off heard by a court of Hong Kong, reciprocal recognition and enforcement of the judgments of the courts of the Mainland and of Hong Kong is confined to rulings on monetary damages, including punitive or exemplary damages, for acts of infringement which were committed in the requesting place. Reciprocal recognition and enforcement of a judgment concerning disputes over the infringement of trade secrets shall include both monetary (including punitive or exemplary damages) and non-monetary rulings.