Hong Kong Lawyer

MARCH 2018

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16 www.hk-lawyer.org • March 2018 Ada Leung JP By Navin G. Ahuja the Director of the Hong Kong Intellectual Property Department ('IPD') Face to Face with A da showed me the oldest trademark registration in Hong Kong which was dated back to 1874. The mark consisted of an eagle design and the words 'NESTLE's EAGLE BRAND'. The mark had an antique appearance, having an old burnt treasure map effect. Hong Kong's trademark law was introduced in 1873 and is one of the oldest in the world (even older than the legislation in the UK). The registration of trademarks was administered by the Office of the Colonial Secretary at the time. This shows the long history of intellectual property ('IP') protection in Hong Kong. Ada majored in science. After completing her Bachelor of Science, she eventually joined the government as an executive officer. She wanted to pursue further studies and applied for a government scholarship for an Applied Science degree in a medical related field. However, the scholarship was not available that year and Ada was told that she might consider a legal training scholarship instead. Knowing at the time the high demand for local lawyers, Ada started studying law. She then joined Attorney-General's Chambers ('AGC') as an Assistant Crown Counsel a.k.a. trainee. After her training Ada was appointed as Crown Counsel and gradually promoted to Senior Crown Counsel. After five years at AGC, Ada had contemplated specialising. Although the thought of specialising in IP had not occurred, opportunity led her to it. One of Ada's colleagues at AGC told her about at an opening at IPD which was still relatively new as it had been established for approximately five years. Ada conducted some research and learnt that IP was an emerging area at that time with Hong Kong being a founding member of WTO and the implementation of the TRIPS Agreement. Moreover, there were a lot of amendments to the IP legislation and there was discussion of localisation of Hong Kong's IP legislation at the time. IP was appealing. It was up-and-coming. However, Ada hadn't studied IP. It was not that common in those days for LL.B. programs to offer IP as an elective course, and the university she studied at did not offer such program. She set her mind to it. She learnt IP after joining IPD in 1995. Role of IPD IPD, compared with other government departments is relatively small and new, as it was established in 1990. There are around 230 staff members including examiners, lawyers, marketing, administrative and IT staff. One of the major roles of IPD since the very beginning is to administer the registration of trademarks, patents, and designs. In particular, registration of trademarks is their bread and butter. "We have close to 40,000 trademark applications each year." The range in the recent years has been between 35,000 and 40,000 trademark applications per year. "You can imagine the amount of work that we are handling taking into account that we have to search each and every new application against our 400,000 records." "There are also back and forth communications if we raise objections." If IPD raises objections, then the applicant will have to respond to the objections within a certain period which is set out in the legislation, and there would be a chain of correspondence before a decision is made. If eventually the application is not accepted, the applicant can apply for a registrability hearing. If however the application is accepted, IPD would advertise the application to check if there is any opposition to the registration. Any opposition could result in an opposition hearing. Another main role is to act as the government's legal and policy adviser. "We provide legal advice to other government bureaus and departments on IP related matters. For example, if a government department handling

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