Rebecca Sargent, Registered Foreign Lawyer, Smyth & Co in association with RPC and Maria Petzsch, Trainee, RPC
Given the volume of IP in the region and Hong Kong’s position as the gateway between the Mainland and the rest of the world, it is a bit surprising there has not been more focus on the operation of intellectual property rights in Hong Kong.
Just over two years ago, the Hong Kong Working Group on IP Trading (the “Working Group”) was set up to address this. Made up of industry stakeholders, experts from various fields and government representatives, its mandate is to explore strategies to promote Hong Kong as a leading IP trading hub in Asia.
On 23 March 2015, the Working Group released a report (the “Report”) setting out 28 recommended actions broadly falling into four strategic areas:
- enhancement of the existing IP protection regimes;
- creation and proper exploitation of new IP rights;
- cultivation of IP intermediary services; and
- promotion, education and collaborative efforts with others.
What are the Report’s Key Recommendations?
In keeping with Hong Kong’s reputation as a centre for ADR in Asia, the Report recommends highlighting IP as an “exemplary specialist area” for arbitration and mediation in Hong Kong. Recommendations include: (i) creating a special panel of IP arbitrators and mediators; (ii) considering the establishment of a dedicated set of arbitration and mediation rules for IP disputes; and (iii) supporting the training of IP practitioners in Hong Kong by implementing specific training on the arbitration and mediation of IP disputes.
Education and Support
The Report recommends a number of measures to encourage education and training generally in Hong Kong and, in particular, for SMEs. Recommendations include the provision of advisory support services to help SMEs better understand and manage their IP rights and the launch of a dedicated website providing information on IP in Hong Kong. This website is now live (http://www.ip.gov.hk) and looks to be an excellent resource. The Intellectual Property Department is also joining forces with The Law Society of Hong Kong to compile and publish a check list containing practical guidelines on IP audit and IP due diligence.
Tax Incentives for IP Trading
The Report recommends a number of tax incentives for IP trading; notably, expanding the types of IP rights in the scope of tax deduction for capital expenditure incurred on the purchase of IPRs*. This aims to bring Hong Kong in line with other overseas jurisdictions by offering an attractive “total package” for IP trading**.
What Next and When?
A number of the recommendations are already in progress, including the Copyright (Amendment) Bill 2014 and the application of the Madrid Protocol to Hong Kong to enhance existing trade mark registration capabilities. The Report discusses a broader spectrum of recommendations for implementation over the next few years. Together the recommendations are a series of inter-related action plans which, with an effective implementation strategy over the next few years, will prove invaluable towards promoting Hong Kong as a favourable jurisdiction for IP.
* Para. 5.32, Report of the Working Group on Intellectual Property Trading (2015).
** Paras. 5.28–5.31, Report of the Working Group on Intellectual Property Trading (2015).