In Hong Kong, if a threat to take out legal proceedings for IP infringement is made where there has been no infringement, or if the right allegedly infringed is invalid, it is said to be groundless or unjustified.
An aggrieved person who has sustained or is likely to sustain non-minimal damage because of the threat can apply to the Court for relief like (a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, and (c) damages.
For example, in the case of registered design, where a registered design owner by circulars, advertisements or otherwise threatens another person with infringement proceedings of a registered design, the aggrieved party may take out legal action against the registered design owner making the threats if he can prove that the threats were made and that he is a person aggrieved by such threats. But, a notification of the existence of a registered design does not of itself constitute a threat of proceedings.
The registered design owner may defend by proving that the aggrieved party has indeed committed an infringement of a registered design; whereupon the aggrieved party shall not be entitled to the relief claimed unless he can show that the registration of the design is invalid.
However, the action of groundless threat of IP infringement should be used with caution as it is available in limited circumstances. For example, one cannot bring an action of groundless threat in the case of a registered trade mark owner which has the power to bring proceedings for infringement of the trade mark, and the owner takes out trade mark infringement action against the alleged wrongdoer (threatened person) within 28 days after the threat was first made to him and pursues that action with due diligence.
For legal advice or services on IP disputes or IP infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799 Email: cac@ccsn.hk]
www.ccsn.hk
The above contents do not constitute legal advice and it should not be regarded as a substitute for detailed advice in individual cases. Transmission of this information is not intended to create and receipt does not constitute a lawyer-client relationship between Chow & Cheung and the user or browser. Chow & Cheung is not responsible for any third party content which can be accessed through the website.