Hong Kong IP Development: Fast in Speed and Subtle in Quality

By Doris Li, China IP,[Comprehensive Reports]

On December 11th, 2011, China commemorated its 10 year anniversary of its admission as a member of the WTO. Hong Kong—the Oriental Pearl—was actually connected to the WTO a long time ago. In 1986, Hong Kong became a member of the GATT and actively participated in the revision of Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) of the WTO. In 1995, Hong Kong became a founding member of the WTO as well as an independent member of Council for Trade-Related Aspects of Intellectual Property Rights. From 1996 to the present, Hong Kong has served as the president of the Executive Council of TRIPs for three terms. Its function as a bridge between China and the west is becoming more and more important on the international stage.
In order to better understand Hong Kong’s IP legislation system and the effort it has made in the WTO, China IP went to Hong Kong and interviewed Peter Cheung (Cheung), the Director of Hong Kong Intellectual Property Department.
In Hong Kong, the IP administration system mainly has two departments: the Customs and the Intellectual Property Department. The Customs is mainly responsible for IP enforcement; while the Intellectual Property Department, which was founded in 1990, is responsible for all the IP-related affairs as well as providing services such as trademark, patent, industrial design and copyright registration. In 1998, the Intellectual Property Department became the IP civil legal advisor for Hong Kong Special Administrative Region. “As a professional legal service department, the main responsibility of the Intellectual Property Department is to provide legal advices for Hong Kong Special Administrative Region and to transform these advices into laws,” Peter Cheung told China IP.
In 1991, Cheung, who was then the Senior Procurator of the Department of Justice of Hong Kong, became Assistant Director of the Intellectual Property Department. In 1998, he became the Deputy Director. On April 12th, 2011, he took up the post of Director of the Hong Kong Intellectual Property Department. When talking about his career development in the IP field, he said with a smile, “Actually, chances have chosen me to follow such a road.”
In the last century, almost all the Government Counsels were foreigners in the British-controlled Hong Kong government. In order to solve the problem of shortage of Chinese Government Counsels, the British-controlled Hong Kong government set up a special committee in the late 1970s. They chose a number of local young men and provided them with some further education in law. And Cheung was among these young people. “At that time, I was quite young, and the interviewers were either professors from department of law in universities or senior officials in judicial departments. They asked me why I had chosen philosophy as my major. My answer to the question was quite simple: to find wisdom.” Cheung recalled. The quick answer of this young man impressed all the interviewers. He successfully passed the interview.
After he graduated from the Department of Law of University of Hong Kong, Cheung worked for the Hong Kong government for five years. After that, he set up a new destination for his life: going abroad for further education. Before he filed his application to the colonial government, the Ministry of Foreign Affairs of the British government had promised to give him their scholarship due to his own efforts. “I was the first to apply for and the first one to get the scholarship a law major set by the Ministry of Foreign Affairs of the British government. There was actually no such scholarship before,” Cheung recalled. Afterwards, the scholarship out of nothing became the famous “Chevening Scholarship” of the Ministry of Foreign Affairs of the British government presently.
Cheung is good at negotiations due to his philosophy background. “The philosophy background gave me great help when I provided legal services. I was able to look at things more thoroughly and comprehensively, and see the logic more clearly,” said Cheung. Besides being the Director of Hong Kong Intellectual Property Department, he is also very active on the stage of the world. As a founding member, Hong Kong is playing a very important role in the WTO.
He is the Chief Negotiator in the negotiations concerning the IP-related free trade agreements between Hong Kong and other economies. At the same time, he is also a member of the WTO Dispute Settlement Expert Committee.
Hong Kong IP Legislation: Fast in Speed and Subtle in Quality
Cheung summarized the characteristics of Hong Kong IP development with his maxim: Fast in speed and subtle in quality.
The IP protection in Hong Kong has a long history and a leading status in the world. The trademark registration in Hong Kong started in 1874, even earlier than in the UK; the copyright protection started in 1912; the industrial design protection started in 1928; and the patent registration started in 1932. However, as a British colony, Hong Kong did not have a real independent IP legal system before returning to China except for the Trade Marks Ordinance. Its laws were largely inherited and the extension of laws in the UK. After the Sino-British Joint Declaration was reached, the localization of the Hong Kong IP legal system was put on the agenda in the late 1980s. The Hong Kong Intellectual Property Department was playing an important role during this process.
In 1994, Hong Kong formulated the Layout-Design (Topography) of Integrated Circuits Ordinance, which was the first law of this kind in the Asian-Pacific region. Its characteristic is automatic protection without registration and the medium protected is not limited to semiconductors. The protection period is also very flexible. The ordinance provides great convenience for overseas investment, and it is also the statute which high-tech investors regard as the most important when making investments in Hong Kong. However, few people know that the ordinance was Cheung’s first achievement after he joined the Intellectual Property Department. “The Layout-Design (Topography) of Integrated Circuits Ordinance was my main job when I first joined the Intellectual Property Department. Due to its complexity, no country or region in the Asian-Pacific region has had this kind of law at that time. We had to find out how to protect ourselves. Fortunately, we finally formulated such a law and the whole process was smooth going,” Cheung told China IP, “the ordinance has not only greatly promoted overseas investment, its legal framework has also greatly influenced Hong Kong’s other IP legal frameworks later on.”
Thanks to the localization of the Hong Kong IP system, Hong Kong realized in advance the modernization of its IP legal system before returning to China. In 1986, Hong Kong became a member of the GATT. In 1988 and 1989, the negotiations concerning trade-related intellectual property of GATT were started. Trade-related Aspects of Intellectual Property Rights (TRIPs) was passed in December, 1993. Originally, Hong Kong was required to implement the TRIPs Agreement in 2000; however, it revised the Intellectual Property (World Trade Organization Amendments) ordinance in 1996 so that its IP system (including the plant variety protection) fully conformed to the requirements of TRIPs Agreement.
In December, 1996, WIPO passed the Internet Treaties. Only six months later, Hong Kong passed the new Copyright Ordinance, which covered most of the content of the Internet Treaties. Cheung told China IP that Dr. Bogsch, the former Secretary General of WIPO, who was one of the guests that witnessed the ceremony of Hong Kong’s return to China, read the news on the plane and came to Cheung to confirm the news because he couldn’t believe his eyes. “Only in a few months, we could move the latest requirements of world organizations into Hong Kong, which has left the international society a very good impression. We have to deal with IP-related issues as much as possible and as fast as possible,” said Cheung.
In order to follow the latest criteria of international IP, on June 27th, 1997, which was three days before Hong Kong’s return to China, three important laws of Hong Kong IP legal system came into force including the Patent Ordinance, Registered Designs Ordinance and Copyright Ordinance. In 2003, the new Trade Marks Ordinance was implemented, and some non-traditional trademarks such as color, sound, smell and shape might be registered as well. “After 1997, the development level of Hong Kong’s IP legal system was one of the most advanced in the world. There was almost no more revision afterwards. The latest development in recent years was mainly some provisions concerning drugs and public health and the registration of tobacco trademarks,” Cheung told China IP.
According to Cheung, in 2005, members of the WTO unanimously passed the decision to revise the provisions concerning public health in the TRIPs Agreement so as to balance the relationship between intellectual property and public health. Hong Kong played an important role in making the IP policies of the WTO and other related works. It actively participated in the negotiations, decision-making, exemptions and the final protocol. Hong Kong was also one of the first members that implemented the obligation. At the same time, Hong Kong has also followed the latest requirements concerning the application of tobacco trademarks in the World Health Organization Framework Convention on Tobacco Control. If words or phrases in the description of any tobacco brands are inaccurate or misleading, the brands will not be registered.
Hong Kong: Being Active in the WTO
Hong Kong joined the GATT in 1986 and became a founding member of the WTO in 1995. The Executive Council in the TRIPs Agreement is designed to inspect whether the members of the WTO have executed the responsibilities related to IP. “The first president of this Executive Council was from Hong Kong. From 1996 to the present, a Hong Kong representative has served three terms as its president. Hong Kong’s efforts in IP field are very much appreciated by the WTO,” Cheung told China IP.
From 1989 to 1994, Cheung had been providing advice on legal policies for drafting the TRIPs Agreement as a representative of Hong Kong. It is known that the interpretation about national and independent economy in the first annotation of the Agreement was revised according to Cheung’s proposal. Beginning from the 1990s, he participated in the conferences of the WIPO representing Hong Kong and was very active on the stage of world intellectual property. As a member of the WTO Dispute Settlement Expert Committee, from 2004 to 2005, he solved two international trade disputes concerning trademark protection and geographical indications, i.e. the case of Australia and the U.S. v. the EU on the geographical indications and trademark protection of agricultural products and food, which was regarded as the first case of geographical indications dispute resolution under the framework of the TRIPs Agreement. Finally, the EU lost the case and revised its relevant laws.
As an independent member of Council for Trade-Related Aspects of Intellectual Property Rights, Hong Kong has been balancing the interests between member countries, and is serving as a bridge which is becoming more and more important on the international stage.
In the interview, Cheung introduced a geographical indications dispute which Hong Kong is currently dealing with. The protection of geographical indications is one of the most controversial issues during the process of negotiations concerning the TRIPs Agreement between developed member countries of the WTO. The opinions of the EU and the U.S. are in conflict with each other, especially on the protection of geographical indications of spirits and wines. Through negotiations, the WTO has decided to establish a multilateral registration system for geographical indications of spirits and wines in order to solve the problem of protection of geographical indications between different countries. “It is not yet finished in the TRIPs Agreement,” Cheung told China IP. Due to the conflict of interests of the two parties, the U.S. requires establishing a database available for reference; however, the EU requires establishing a registration office with legal force. Standing between the two parties, Hong Kong proposes establishing a preservation base which is neither a database nor a registration office. Cheung said with a smile, “Because of this, neither party likes Hong Kong. But I think our opinion might be the most appropriate and balanced solution.” The dispute is still at issue now.
December 11th, 2011 was the tenth anniversary of China’s accession to the WTO. Summarizing China’s IP development during the ten years, Cheung commented, “China has done a great job. Despite some challenges at the beginning, China has successfully transformed itself into a large IP nation in the world in only ten years. It is quite admirable that China has finished a road of development in several decades while many developed countries used more than a hundred years.”
On November 17th, 2011, on the basis of the many years of cooperation between SIPO and Hong Kong’s Intellectual Property Department, the two parties signed their first agreement on cooperation in order to strengthen the cooperation and communication in the IP field. The present Hong Kong Intellectual Property Department is not only a department for legislation, attacking piracy and enhancing IP awareness of citizens, but also a department for promoting intellectual capital management and transforming IP into a tool for creating wealth. Just as Cheung said, “The strengthening of cooperation between the Chinese mainland and Hong Kong will promote the cooperation of the two parties on integrated planning, implementation and financial affairs. It is great news for knowledge management of the two parties in the future.”
(Translated by Snow Li)

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