Intellectual-Property Laws in the Hong Kong
S.A.R.: Localization and Internationalization
Paul Tackaberry”
In preparation for the handover, Hong Kong en-
acted local ordinances in the areas of patents, designs
and copyright. A new Trade Marks Ordinance is ex-
pected after the handover. Interestingly, much of this
legislation is based on United Kingdom statutes. The
success of this legislation in safe-guarding intellectual-
property rights (“IPRs”) will depend less upon its con-
tents, and more upon a clear separation of the state and
the Special Administrative Region
judiciary
(“S.A.R.”) of Hong Kong. Despite the absence of a
tradition of the formal protection of IPRs, China has
identified a need to enact comprehensive intellectual-
property legislation. However, the absence of Western-
style rule of law in China has contributed to foreign
dissatisfaction with the enforcement of IPRs. It is
hoped the Hong Kong S.A.R.’s intellectual-property
regime can avoid such a fate.
in
En vue de la r6trocession, l’ancien conseil 16gis-
latif de Hong-Kong a adopt6 diverses ordonnances
dans les domaines des brevets, du design et des droits
. ce qu’une ordon-
d’auteurs. On s’attend 6galement
nance sur les marques de commerce soit adoptde peu
de temps apr~s la r6trocession. Plusieurs de ces textes
16gislatifs sont bas6s sur le module anglais. Le succ~s
de la protection des droits de propridt6 intellectuelle
ddpendra toutefois moins du contenu de ces lois que de
la s6paration claire entre le systime judiciaire et l’tat
dans la nouvelle Zone administrative sp6ciale de Hong-
Kong. Bien qu’elle n’ait pas de tradition de protection
de Ia propri6t6 intellectuelle, la R6publique populaire
de Chine a reconnu la n6cessit6 d’adopter une 16gisla-
tion d’ensemble en mati~re de propri6t6 intellectuelle.
Ia oprimaut6 du droit>> A
Le non
l’occidentale a toutefois entrav6 la mise en place d’un
r6gime efficace de protection de la propri6t6 intellec-
tuelle, ce qui a contribu6 i semer l’insatisfaction dans
la communaut6 intemationale. II est A espdrer que la
r6gime de protection de la propri6t6 intellectuelle de
Hong-Kong pourra 6viter cet 6cueil.
respect de
. Assistant Professor, City University of Hong Kong.
McGill Law Journal 1997
Revue de droit de McGill
To be cited as: (1997) 42 McGill L.J. 579
Mode de r6f6rence : (1997) 42 R.D. McGill 579
580
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[Vol. 42
Introduction
I. The Effect of the Basic Law on Hong Kong’s Intellectual-Property
Laws
II. The Intellectual-Property Regime for Hong Kong Post-1997
A. Patents
B. Designs
C. Copyright
D. Trade Marks
Ill. The Enforcement of IPRs in China Today: How Might Hong Kong Be
Influenced?
Conclusion
1997]
P TAcKABERRY- IPRs iN THE HONG KONG S.A.R.
Introduction
The effective protection of intellectual-property rights (“IPRs”) has for some time
been viewed as integral to the economic success of Hong Kong.’ While infringement
of IPRs was commonplace in Hong Kong in past decades,’ the developing sophistica-
tion of Hong Kong society has resulted in a reduction in domestic counterfeiting and
pirating activities. However, since the late 1980s, counterfeit products manufactured
in the People’s Republic of China (“P.R.C.”) have been finding their way into the
territory, either for resale in the domestic market or for re-export to foreign markets. If
Hong Kong is to maintain its favourable position as a jurisdiction where foreigners
can expect to obtain redress for infringement of IPRs, it is imperative that as a Special
Administrative Region (“S..A.R.”) of the P.R.C., Hong Kong’s protection of IPRs
continues to be reliable, effective and efficient.
The handover of sovereignty to the P.R.C. has provided Hong Kong with a valu-
able opportunity to modernize and localize its intellectual-property legislation. Com-
prehensive legislation regarding copyright, designs and patents was passed in late
June 1997′ and a draft Trade Marks Bill’ was released in February 1997. Interestingly,
as the Territory prepared to put its colonial history behind it, it chose to base its post-
1997 intellectual-property legislation primarily on United Kingdom statutes.
Part I of this article will discuss the provisions of the Basic Law5 that deal with
intellectual property and the manner in which they have been implemented. The key
differences between Hong Kong’s new intellectual-property ordinances and the legis-
lation upon which they are based will be described in Part II. In Part HI, the role of
‘In 1996, Christopher Patten, the last Governor of Hong Kong summarized Hong Kong’s pre-
handover intellectual property policy:
For the preservation of our strong manufacturing base; for the encouragement of our
growing international trade in services, and for the security of our position as a trusted
trading partner, Hong Kong is committed to the protection of intellectual property in all
its forms …When businesses around the world are becoming more and more aware of
the value of intellectual property to their exports, it is a matter of great concern for
Hong Kong if our trading partners cast doubt on our commitment to protecting these
rights (Rt. Hon. C. Patten, “Protection of Intellectual Property Rights in Hong Kong”
(Address to the American Chamber of Commerce in Hong Kong, Intellectual Property
Committee Luncheon Meeting, 14 March 1996) http://www.houston.com.hk/
hkgipd/patten.html at paras. 6-7 (1 July 1997) [hereinafter “Patten Speech”]).
2 M.D. Pendleton, P. Garland & J. Margolis, The Law of Intellectual and Industrial Propeny in
Hong Kong, 2d ed. (Hong Kong: Butterworths Asia, 1996) at IV 2.
See Copyright Ordinance (Ord. No. 92 of 1997), Registered Designs Ordinance (Ord. No. 64 of
1997), Patents Ordinance (Ord. No. 52 of 1997).
* Hong Kong Government Secretariat, Trade and Industry Branch, “Draft Trade Marks Bill for
Consultation” February 1997 [hereinafter draft Trade Marks Bill].
Basic Law of the Hong Kong Special Administrative Region of the People’s Republic of China,
3d Sess., 7th National People’s Congress (“N.P.C”), 4 April 1990, reprinted in 29 I.L.M. 1519
[hereinafter Basic Law cited to I.L.M.]. Also available at http://www.info.gov.hk/info/bas-lawO.htm.
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[Vol. 42
intellectual property in the P.R.C. will be examined, with a view to identifying three
forces that may come to influence the enforcement of IPRs in the Hong Kong S.A.R.
Here, Confucian collectivism and Deng Xiaoping’s “socialism with Chinese charac-
teristics” will be discussed. In the Conclusion, some predictions will be made regard-
ing the future of intellectual-property protection in Hong Kong.’
I. The Effect of the Basic Law on Hong Kong’s Intellectual-
Property Laws
Pursuant to the Sino-British Joint Declaration of 1984,’ the Hong Kong S.A.R.
will “enjoy a high degree of autonomy” and will maintain its “previous capitalist sys-
tem and life-style for 50 years [after 1997].”‘ Further, the common law and legal
precedent will be maintained. After the establishment of the Hong Kong S.A.R., “the
laws previously in force in Hong Kong … shall be maintained, save for any that con-
travene the Basic Law.”” These principles were incorporated into articles 2, 5 and 8 of
the Basic Law.” Articles 118,” 139″ and 140″ of the Basic Law are a testament to the
importance of intellectual property in Hong Kong.
Interestingly, trade marks are not specifically mentioned in the Basic Law. How-
ever, it may be argued that articles 118, 139 and 140, when read together with article
105,” require the S.A.R. government to protect trade marks by law. The main practi-
cal effect of the “one country, two systems” approach embodied in the Basic Law is
that IPRs must be registered (where possible) and enforced in Hong Kong; any regis-
tration or court action taken in China will have no formal bearing on the status of the
‘The arguments advanced in this article are based on the premise that strong enforcement of IPRs is
both beneficial and desirable in a free market economy such as Hong Kong’s. This assumption is not
universally accepted: see the sources referred to in note 117, infra.
7 Sino-British Joint Declaration on the Question offHong Kong, 19 December 1984, U.K.TS. 1984
No. 26,23 I.L.M. 1366 [hereinafterJoint Declaration cited to I.L.M.].
‘Ibid at 1371 (s. 3(2)) and 1373 (Annex I, Part I).
9/bkl at 1373 (Annex I, Part I).
‘0 Supra note 5. For a general discussion of the Basic Law, see P Wesley-Smith, Constitutional and
Administrative Law in Hong Kong (Hong Kong: Longman Asia, 1994) at 50-76 and P. Wesley-Smith,
“The Legal System and Constitutional Issues” in P Wesley-Smith & A.H.Y. Chan, eds., The Basic
Law and Hong Kong’s Future (Hong Kong: Butterworths, 1988) 172 [hereinafter The Basic Law and
Hong Kong’s Future].
” “The Government of the Hong Kong Special Administrative Region shall provide an economic
and legal environment for encouraging investments, technological progress and the development of
new industries” (Basic Law, ibid. at 1538).
12 “The Government of the Hong Kong Special Administrative Region shall, on its own, formulate
policies on science and technology and protect by law achievements in scientific and technological
research, patents, discoveries and inventions” (ibid at 1542).
” “The Government of the Hong Kong Special Administrative Region shall, on its own, formulate
policies on culture and protect by law the achievements and the lawful rights and interests of authors
in their literary and artistic creation” (ibid).
“” he Hong Kong Special Administrative Region shall, in accordance with law, protect the right
of individuals and legal persons to the acquisition, use, disposal and inheritance of property and their
right to compensation for lawful deprivation of their property” (ibid. at 1537).
1997]
P TACKABERRY- IPRs IN THE HONG KoNG S.A.R.
related IPRs in the Hong Kong S.A.R. Likewise, activity in Hong Kong will not affect
the related IPRs in China.
Prior to the handover, of the four main branches of intellectual property, only
trade marks enjoyed protection in Hong Kong pursuant to comprehensive local legis-
lation.” Patent rights were obtained by re-registering in Hong Kong patents issued by
the United Kingdom Patent Office or the European Patent Office (with a designation
for the United Kingdom), and the protection afforded designs registered in the
United Kingdom was automatically extended to Hong Kong.” The United Kingdom
Copyright Act 1956′ represented the core legislation concerning copyright in Hong
Kong.” Accordingly, prior to the handover, Hong Kong was heavily dependent upon
acts of the Parliament of the United Kingdom in the areas of patents, designs and
copyright.
On 2 November 1995, the Sino-British Joint Liaison Group, which pursuant to
the Joint Declaration0 was composed of representatives of the British and P.R.C.
governments, agreed to the localization of Hong Kong’s patent, copyright and design
laws and the continued application of the Patent Co-operation Treaty” after the han-
dover.’ As mentioned above, article 8 of the Basic Law states that the common law,
rules of equity, ordinances, subordinate legislation and customary laws previously in
force in Hong Kong shall be maintained. Since this list does not include laws emanat-
copyright infringement.
“Supra note 7.
21 Patent Cooperation Treaty, 19 June 1970 (WIPO Publication No. 274(E)).
” Trade Marks Ordinance (Cap. 43), as amended by the Trade Marks (Amendment) Ordinance
(Ord. No. 3 of 1985); the Trade Marks (Amendment) Ordinance (Ord. No. 44 of 1991); the Intellec-
tual Property (World Trade Organization Amendments) Ordinance (Ord. No. 11 of 1996) [hereinafter
WTO Ordinance]; and the Trade Descriptions Ordinance (Cap. 362). Hong Kong has also enacted the
following intellectual-property-related legislation: the Layout-Design (Topography) of Integrated Cir-
cuits Ordinance (Cap. 445) and the Plant Varieties Protection Ordinance (Ord. No. 21 of 1996).
‘6 Registration of Patents Ordinance (Cap. 42).
7 United Kingdom Designs (Protection) Ordinance (Cap. 44).
‘Copyright Act, 1956 (U.K), 4 & 5 Eliz. 2, c. 74.
The locally enacted Copyright Ordinance (Cap. 39) related primarily to criminal sanctions for
The Chinese and British sides have also agreed to the continued application in Hong Kong of the
following international agreements: Paris Convention for the Protection of Industrial Property, 20
March 1883, 828 U.N.T.S. 305, most recently revised 14 July 1967; Berne Convention for the Pro-
tection of Literary and Artistic Works, 9 September 1886, 828 U.N.T.S. 221, revised 24 July 1971; the
Universal Copyright Convention, 6 September 1952 in Geneva, 25 U.S.T. 1341, 943 U.N.T.S. 178,
revised in Paris on 24 July 1971; the Convention for the Protection of Producers of Phonograms
Against Unauthorised Duplication of Their Phonograms, 29 October 1971 in Geneva, 25 U.S.T. 309,
866 U.N.T.S. 67; and the Agreement On Trade-Related Aspects of Intellectual Property Rights, Annex
IC to The Final Act and Agreement Establishing the World Trade Organization (WTO). General
Agreement on Tariffs and Trade, Uruguay Round (including GATT 1994), Marrakesh, 15 April 1994
(rRIPs). These agreements require Hong Kong to protect copyright, trade marks, designs and patents,
which is another reason why it was necessary that domestic legislation be in place prior to the hando-
ver.
“See text accompanying note 10.
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ing from the United Kingdom, the Copyright Act 1956″ is not applicable in post-
handover Hong Kong.’ Further, it would not now be politically expedient for the
Hong Kong S.A.R. to afford protection only to United Kingdom patents and designs
and to interpret United Kingdom acts in determining the scope of protection and va-
lidity of design and patent rights in Hong Kong.” For these reasons, it was incumbent
on Hong Kong to enact comprehensive local legislation in the areas of copyright, pat-
ents and designs prior to the handover. The legislation in these areas, and the pro-
posed legislation regarding trade marks will be discussed in the next part.
II. The Intellectual-Property Regime for Hong Kong Post-1997
The legislative vacuum resulting from the change of sovereignty represented the
most pressing need for local legislation in the areas of copyright, patents and designs.
In addition, Hong Kong had to react to the intellectual-property challenges confront-
ing all countries as the twenty-first century approaches (particularly, information
technology and the internationalization of intellectual property). Hong Kong’s pre-
dicament was worse than many in this regard: the core of its pre-handover copyright
legislation was written in 19568 and its design legislation in 1949.” Its trade-marks
legislation is based on a United Kingdom statute written in 1938.”
24 Supra note 18.
2″See Wesley-Smith, “The Legal System and Constitutional Issues”, supra note 10 at 174.
26 Without local patents and design legislation, the courts of the Hong Kong S.A.R. would have
been required to interpret the relevant United Kingdom legislation (for example: Patents Act 1977
(U.K.), 1977, c. 37; Registered Designs Act, 1949 (U.K.), 12, 13 & 14 Geo. 6, c. 88; Copyright, De-
signs and Patents Act 1988 (U.K.), 1988, c. 48) to assess the validity of the patent or design in issue
and the rights enjoyed by the owner thereof. See Canon Kabushiki Kaisha v. Green Cartridge Co.
(Hong Kong) [1995] A.I.PR. 124 (H.C.) [hereinafter Canon v. Green Cartridge] for an example of a
Hong Kong court determining the validity of a patent granted by the United Kingdom Patent Office.
21 Ile Intellectual Property Department of the Hong Kong Government recommended the “putting
in place of an independent and modernised copyright regime in Hong Kong which is able to cater for
technological advances, reflect prevailing international standards of intellectual property protection,
and
at
http://www.houston.com.hkhkgipd/cprtbrf.html). Similar objectives were stated in Intellectual
Property Department of the Hong Kong Government, Summary: Registered Designs Bill; available at
http://www.houston.com.hk/hkgipdldsgnbrf.html.
circumstances”
(Summary:
Copyright
Bill;
suit
local
available
28 Copyright Act 1956, supra note 18, amendments were made in 1994, Copyright (Amendment)
Ordinance (Ord. No. 13 of 1994) (protection afforded to cable broadcasts) and in 1996, WTO Ordi-
nance, supra note 15 (TRIPs implemented by creating a rental right for computer programs and
sound recordings, and affording protection to performances).
29 Registered Designs Act, 1949, supra note 26.
Trade Marks Act, 1938 (U.K.), 1 & 2 Geo. 6, c. 22. Pendleton, Garland & Margolis, supra note 2
at II 1 state: “The trade mark legislation of Britain and Hong Kong is worded in such archaic lan-
guage as only to be rivalled in obscurity by the Copyright Act 1956.” It should be noted that the
Trade Marks Ordinance, supra note 15, had been amended several times, including in 1985 (Part B
registration), 1991 (registration of service marks) and 1996 (definition of “trade mark” and provisions
regarding geographical indications).
1997]
P TAcKABERRY- IPRs iN THE HONG KONG S.A.R.
This section will briefly describe the key differences between the Trade Marks
Bill,3′ Copyright Ordinance,2 Registered Designs Ordinance33 and Patents Ordinance’
and the comparable U.K. and European legislation.” A preliminary issue is the policy
decision to base the trade-marks, copyright, designs and patent legislation on United
Kingdom statutes, particularly the Trade Marks Act 1994,3 Copyright, Designs and
Patents Act 1988,”7 Registered Designs Act 1949″8 and the Patents Act 1977″9 respec-
tively. Why would Hong Kong adopt many of the provisions of these United King-
dom statutes in the midst of its decolonization drive?
There are several justifications for Hong Kong’s incorporation of the provisions
of United Kingdom intellectual-property legislation in its post-1997 ordinances. First,
Hong Kong judges and lawyers are familiar with the concepts and ways of thinking
inherent in the English common-law system. Second, a developing body of jurispru-
dence is essential to the survival of the common-law system in Hong Kong, as guar-
anteed by the Basic Law.’ Third, the current United Kingdom legislation is, generally
speaking, consistent with the major international intellectual-property agreements.”
The political ramifications of adopting United Kingdom legislation for the Hong
Kong S.A.R. are worth noting. However, it would appear that by agreeing to the ap-
plication of the common law in the Hong Kong S.A.R., the National People’s Con-
gress of the P.R.C. has acknowledged that the law of England will continue to play a
prominent role.
Article 82 of the Basic Law” wisely acknowledges the common-law system of
precedent, pursuant to which a court decision on the same or similar facts from an-
other common-law jurisdiction is a persuasive guide.3 Acknowledging that reliance
3′ Supra note 4.
3,Supra note 3.
‘3Supia note 3.
3,Supra note 3.
33A detailed examination of the legislation is beyond the scope of this article.
16 Trade Marks Act 1994 (U.K.), 1994, c. 26.
37Supra note 26.
38Supra note 26.
39Supra note 26.
41 Supra note 5.
41 The Law Reform Commission of Hong Kong, Report on Reform of the Law Relating to Copy-
right (1993) at 8, para. 1.A6 [hereinafter Report on Copyright] stated: “The provisions of the [United
Kingdom Copyright] 1988 Act are not only designed to meet the prevailing international obligations
and in addition are compatible with Hong Kong’s laws and legal system.”
4″ Supra note 5. Art. 82 states that the courts of the Hong Kong S.A.R. “may refer to precedents in
other common law jurisdictions.”
41 The manner in which conflicts between the common law and the Basic Law are to be resolved is
beyond the scope of this article. The crux of this controversial issue is the wording of art. 158 of the
Basic Law, which states:
The Standing Committee of the National People’s Congress shall authorize the courts
of the Hong Kong Special Administrative Region to interpret on their own, in adjudi-
cating cases, the provisions of this Law which are within the limits of the autonomy of
the Region.
MCGILL LAW JOURNAL! REVUE DE DROIT DE MCGILL
[Vol. 42
upon decisions from outside Hong Kong may be necessary, Dobinson and Roebuck
state that “Hong Kong [S.A.R.] judges are likely to follow some developments in
England, and perhaps, developments elsewhere in the common law world.””
By adopting large portions of the comparable United Kingdom legislation, the
drafters of Hong Kong’s new intellectual-property legislation appear to be encourag-
ing Hong Kong S.A.R. courts to rely upon United Kingdom decisions, as well as de-
cisions from other common-law jurisdictions. With respect to trade marks, the Intel-
lectual Property Department of the Hong Kong Government has stated:
It is important that any changes to the Hong Kong Trade Marks Ordinance are
in keeping with the proposed revisions of [the United Kingdom, Australia and
New Zealand] since Hong Kong shares with these countries the tradition of
deriving its trade mark law from the common law, which is to be maintained
after 1997. Any jurisprudence of these countries, interpreting the new provi-
sions of their law, will be of assistance to Hong Kong …4′
The reader is directed to the following resources in this regard: J. Hansen, “Judicial Independence in
Hong Kong” [January 1997] New Zealand LJ. 11; R. Wacks, “Can the Common Law Survive the
Basic Law?” (1988) 18 H.K.L.J. 435; J. Barrett, “The Relationship Between the Two Legal Systems”
(in “Seminar on the Draft Basic Law for Hong Kong”) (1988) 18 H.K.L.J. 428; H.-C. Kuan, “Chinese
Constitutional Practice” in The Basic Law and Hong Kong’s Future, supra note 10 at 55; T.M. Morris,
“Some Problems Regarding the Power of Constitutional Interpretation Under Article 158 of the Basic
Law of the Hong Kong Special Administrative Region” (1991) 21 H.K.L.J. 87.
” I. Dobinson & D. Roebuck, Introduction to Law in the Hong Kong SAR (Hong Kong: Sweet &
Maxwell, 1996) at 27. See also P. Wesley-Smith, “The Common Law of England in the Special Ad-
ministrative Region” in R. Wacks, ed., Hong Kong, China and 1997: Essays in Legal Theory (Hong
Kong: Hong Kong University Press, 1993) 5 [hereinafter China, Hong Kong and 1997]. In his article,
Welsey-Smith argues that “the Basic Law appears to sanction the continued binding effect of Privy
Council decisions as well [as those of the House of Lords]” (ibid. at 6) (emphasis added). See also P.
Wesley-Smith, “The Reception of English Law in Hong Kong” (1988) 18 H.K.L.J. 183 [hereinafter
“The Reception of English Law”] where the same author states:
Hong Kong courts regard themselves as bound by all decisions of the House of Lords
and the Privy Council, except perhaps where a question of some law other than English
law is involved. This attitude of deference seems unnecessary, unfortunate and doomed
to extinction with the onset of 1997 (ibid. at 215).
For a discussion of the role of English law in other former British colonies, see G.W. Bartholomew,
“English Law in Partibus Orientalium” in A.J. Harding, ed., The Common Law in Singapore and
Malaysia (Singapore: Butterworths, 1985) 3; G.W. Bartholomew, “Developing Law in Developing
Countries” (1979) 1 Lawasia 1; A.B.L. Phang, “Convergence and Divergence – A Preliminary
Comparative Analysis of the Singapore and Hong Kong Legal Systems” (1993) 23 H.K.L.J. 1.
” Intellectual Property Department of the Hong Kong Government, Consultation Paper: Reform of
the Trade Marks Ordinance (1993) at 2 [hereinafter Paper on Trade Marks]. With respect to copy-
right, see supra note 41. Concerning designs, the Law Reform Commission recommended:
a design registry for Hong Kong based closely on the model in the [Designs] 1949 Act.
We take the view that a departure from that approach would break with a substantial
body of established law. There would be only limited disruption in the relocation of a
registry to Hong Kong and by doing that a valuable source of precedent would be
maintained (Report on Copyright, supra note 41 at 168, para. 17.77).
1997]
m] TACKABERRY- IPRs IN THE HONG KONG S.A.R.
The expectation that the jurisprudential developments in other common-law ju-
risdictions will affect the development of intellectual-property laws in the Hong Kong
S.A.R. should not come as a surprise. The courts of other former colonies, such as
Canada, Australia, New Zealand and South Africa, continue to apply United King-
dom decisions. A brief review of the recent volumes of the Asian Intellectual Prop-
erty Reports reveals that decisions of the courts of the United Kingdom, as well as
those of Canada and Australia, for example, were regularly considered and applied in
intellectual-property cases decided in Singapore and Malaysia.’ Despite the fact that
these former colonies obtained independence, whereas sovereignty over Hong Kong
has returned to China, it is still likely that United Kingdom court decisions will re-
main influential in Hong Kong, since
Hong Kong lawyers, Chinese and non-Chinese, using the English language in
their day-to-day legal work and operating within the context of institutions de-
rived from England, are uniformly imbued with the common law’s characteris-
tic ideas.
7
There are, however, important differences between the new intellectual-property leg-
islation for the Hong Kong S.A.R. and the comparable United Kingdom statutes,
some of which are described below.’
It was also recommended that Hong Kong adopt the unregistered design right provisions of the
Copyright, Designs and Patents Act 1988 (supra note 26, Part II). However, these recommendations
concerning designs were not implemented. Note that the partial adoption of the European Union’s
designs directive in the new Registered Designs Ordinance (supra note 3) flies in the face of the pol-
icy decision to encourage Hong Kong’s intellectual property courts to draw upon decisions of the
courts of other common law jurisdictions.
‘6 See e.g. Biogen Inc v. Scitech Medical Products Pte Ltd & Anor [1996] A.I.P.R. 1 (H.C. of Singa-
pore); Remus Innovation Forschungs-Und Abgasanlagen-Productions gessellschaft MBH & Anor v.
Hong Boon Siong [1995] AI.P.R. 28 (H.C. of Singapore); Public Prosecutor v. Teo Ai Nee & Anor
[1995] A.I.P.R. 39 (H.C. of Singapore); A.G. v. Venice-Simplon Orient Express Inc [1995] A.I.P.R. 17
(C.A. of Singapore); Expanded Metal Manufacturing Pte Ltd & Anor v. Expanded Metal Co [1995]
A.I.P.R. I (C.A. of Singapore); Sin Heak Hin Tyres Pte Ltd v. Yuasa Battery Singapore Co Pte Ltd &
Anor [1995] A.I.P.R. 420 (H.C. of Singapore); Reed Exhibitions Pte Ltd v. Khoo Yak Chuan Thomas
& Anor [1995] A.I.P.R. 417 (C.A. of Singapore) Aztech Systems Pte Ltd v. Creative Technology Ltd
[1995] 564 (H.C. of Singapore); Real Electronics Industries Singapore (Pte) Ltd v. Nimrod Engineer-
ing Pte Ltd [1995] A.I.P.R. 545 (H.C. of Singapore); Trade Facilities Pte Ltd & ors v. Public Prosecu-
tor [1995] A.I.P.R. 215 (H.C. of Singapore); A Clouet & Co Pte Ltd. & Anor v. Maya Toba Sdn Bhd
[1995] A.I.P.R. 598 (H.C. of Malaysia); Hummel International Sport & Leisure A/S v. Lim Yew Sing
[1995] A.I.P.R. 276 (H.C. of Malaysia).
47 Wesley-Smith, “The Reception of English Law”, supra note 44 at 216.
48 There is a wealth of material available regarding the current intellectual-property legislation of the
United Kingdom and its judicial interpretation. See e.g. W.R. Cornish, Intellectual Property: Patents,
Copyright, Trade Marks, and Allied Rights, 3d ed. (London: Sweet & Maxwell, 1996); E.P. Skone
James et aL, eds., Copinger and Skone James on Copyright, 13th ed. (London: Sweet & Maxwell,
1991); T.A. Blanco White & R. Jacob, eds., Kerley’s Law of Trade Marks and Trade Names, 12th ed.
(London: Sweet & Maxwell, 1986); W. Aldous et aL, Terrell on the Law of Patents, 13th ed.
(London: Sweet & Maxwell, 1982).
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A. Patents
The new Hong Kong Patents Ordinance,” principally based on the United
Kingdom Patents Act 1977,’ provides for an independent patent system in the
Hong Kong S.A.R., whereby the Hong Kong courts will determine the rights en-
joyed by owners of Hong Kong patents’ as well as the validity and amendment of
such patents, irrespective of action taken with respect to them outside Hong Kong.
The key differences between the Hong Kong S.A.R. and United Kingdom patent
systems are two-fold. First, it will be possible to submit applications for “short-term
patents”.” Second, the Hong Kong Registrar of Patents will issue independent pat-
ents based on the registration in Hong Kong of patents issued by “designated patent
offices” outside Hong Kong.” Accordingly, the Registrar of Patents will conduct
only a formal examination; the substantive examination (for example, as to novelty
and inventiveness) conducted by the designated patent office will be relied upon by
the Registrar. The principal justification for not conducting substantive examina-
tions of applications is economic.’
The new Patents Ordinance itself does not list the “designated patent offices”.
The choice of this designation represents one of the more interesting political and
practical issues embodied in the Patents Ordinance. The Hong Kong Government has
indicated that the offices will be the United Kingdom Patent Office, the European
Patent Office (with a designation for the United Kingdom) and the Chinese Patent
Office.” In other words, only patents issued by those offices may be registered in
Hong Kong and may constitute the basis of an independent Hong Kong patent. From
one perspective, it might seem appropriate to permit registration of Chinese patents
only. On this issue, the Hong Kong Government has stated:
41 The Patents Bill was published in Legal Supplement No. 3 to the Hong Kong Government Ga-
zette, Gazette No. 23, Vol. CXXXVIII. This bill and the subsequent committee stage amendments are
available at: http://www.houston.com.hk/hkgipd/new-law.html. The Patents Ordinance, supra note 3,
was passed on 28 May 1997 and came into operation on 27 June 1997.
‘ Supra note 26.
“‘ Under the old law, Hong Kong patents were not issued. Instead, patents issued by the United
Kingdom Patent Office (or the European Patent Office, with a designation for the United Kingdom)
were simply re-registered in Hong Kong. The rights and privileges of the Hong Kong patentee were
the same as those enjoyed by a patentee under the Patents Act 1977 (supra note 26): see Canon v.
Green Cartridge, supra note 26.
52 Patents Ordinance, supra note 3, s. 108.
” Ibid, s. 8.
“4Because the number of patent applications received in Hong Kong has been, and is expected to
be, relatively low, and the cost of training examiners and stocking a library of prior art is high, the
Patents Steering Committee recommended against substantive examinations being conducted by the
Registrar of Patents. See Patents Steering Committee, Report on Reform of the Hong Kong Patent
System (1993). See also Q. Wang, The Choice of a Patent System of Hong Kong after 1997 (M. Phil.
Paper, Department of Law, City University of Hong Kong, 1996) [unpublished].
5’ See Hong Kong’s New Intellectual Property Law, Summary: Patents Bill at para. 8.; available at
http://www.houston.com.hk/hkgipd/ new-law.html [hereinafter Sunmary: Patents Bill].
1997]
P TACKABERRY- IPRs IN THE HONG KONG S.A.R.
In considering the designation of these Patent Offices we have taken note of the
reputation of all three Patent Offices, the similarity of the patent systems, the
high level of trade and strong links between China and Hong Kong, and the
high level of trade between European countries and Hong Kong. We have also
noted the need to provide continuity with the existing system and to give
choice to the users of the system. 6
In other words, the choice of the United Kingdom and China as designated patent of-
fices is a compromise. However, it seems that this compromise is intended only as a
temporary one, since the Hong Kong Government anticipates that China will indeed
become the only designated patent office at some point in the future.”
The other main difference between the new Patents Ordinance and the Pat-
ents Act 1977 is the introduction of a short-term patent. 8 The Hong Kong Gov-
ernment has described the purpose of the short-term patent as protecting
“inventions which have a short-term commercial life. For such products, busi-
nessmen want patent protection quickly but not necessarily for a full 20-year
term.”‘ The short-term Hong Kong patent, which is obtained by filing an original
application rather than a patent issued by a designated office, has a total possible
term of eight years. ‘ There will be only a formal examination of short-term pat-
ent applications; however, in infringement proceedings, it will be necessary for
the patentee to prove primafacie validity.2
6 Ibid at para. 14.
1
7 T. Hope, “Agreement on IP Regime for Hong Kong Post 1997” (1996) 9:1 IPAsia 24; J. Smith, R
Cheung & K-Y Cheung, “New Patent Law Designed to Protect Entrepreneurs Under Chinese Sover-
eignty” (1996) 11:2 Asia Pacific Legal Developments Bulletin 20.
” Also called “petty patent’ or “utility model” in other jurisdictions. This type of patent exists in
over 40 countries, including Germany, Italy, Spain, Japan, South Korea, Taiwan and several South
and Central American countries. See A.M. Green, Designs and Utility Models Throughout the World
(Deerfield, Ill.: Clark Boardman Callaghan, 1994); S. Hua, “Patent Protection for Utility Models in
Various Countries” (1996) 44:1 China Patents & Trademarks 23. For the short term patent in China,
see Patent Law of the People’s Republic of China, 4th Sess., 6th N.P.C., 12 March 1984 11-600;
Implementing Regulations of the Patent Law of the People’s Republic of China, amended 12 Decem-
ber 1992 by the State Council, issued 21 December 1992 by the Patent Office of the People’s Repub-
lic of China; Chinese Patent Office, Notification No. 27 on December 21, 1989.
” Sunmary:’Patent Bill, supra note 55 at para. 10.
“That
is, the patent is renewable after the first four years for a further four years: Patents Ordi-
nance, supra note 3, s. 126.
61 Ibid., s. 117.
62 Ibid., s. 129. Numerous amendments to the Patents Bill, supra note 49, were made at the commit-
tee stage including the deletion of s. 73(2), which stated that goods in transit are not considered im-
ports, and clarification that both short-term and standard patents may be based on international appli-
cations filed in the P.R.C. (Patents Ordinance, ibid., s. 125).
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[Vol. 42
B. Designs
By modelling the draft Registered Designs Bill’ primarily on the European Union
Directive on the Legal Protection of Designs’ (“EU Designs Directive”), the original
drafters rejected the recommendation of the Law Reform Commission that the legis-
lation be based on the United Kingdom’s Registered Designs Act 1949.’ Adoption of
the bill as originally drafted could have resulted in a significant departure from the
designs law previously applicable in Hong Kong. For example, unlike the Registered
Designs Act 1949, neither the EU Designs Directive nor the draft Registered Designs
Bill referred to functionality or “eye appeal” in the definitions of design. ‘ Further, the
“interconnections” exclusion ‘ and component-parts provisions’ would have been
new to Hong Kong designs legislation. These deviations have been avoided with the
adoption of the Registered Designs Ordinance’ which, at least in the key areas of
functionality,” novelty,7′ interconnections and component parts,
is more closely
“Copy on file with author. The Registered Designs Bill, which differed substantially from the draft
bill, was published in Legal Supplement No. 3 to the Hong Kong Government Gazette, Gazette No.
10, Vol. CXXXDX; available at http://www.houston.com.hk/hkipd/new_law.html. The Registered De-
signs Ordinance, supra note 3, was passed on 4 June 1997 and came into operation on 27 June 1997.
‘EC, Proposal for a European Parliament and Council Directive on the legal protection of de-
signs, OJ Information (1993) No C345/14; Proposal for a European Parliament and Council Regula-
tion on community Design, OJ Information (1994) C29/20. Recent proposed amendments are dis-
cussed in Explanatory Memorandum to the Amended Proposal for a European Parliament and
Council Directive on the Legal Protection of Designs, COM96(66). In March 1997, a political agree-
ment on a Common Proposal concerning the proposed directive was announced: E.C. Press Release
IP/97/221, reported in “Monti Welcomes Common Proposal on Design Protection”, The Reuter
European Community Report, 14 March 1997. The highly contentious issue of automotive spare
parts was “settled” by deleting the original proposal from the Common Position. Despite this devel-
opment, the “debate is certainly not yet closed” since the Common Proposal must be voted upon by
the European Parliament (ibicl.). For a general discussion of the regulation and directive, see T.C.
Vinje, “Harmonising Intellectual Property Laws in the European Union: Past, Present and Future”
(1995) 8 Eur. Intell. Prop. Rev. 361 and G.B. Dinwoodie, “Federalized Functionalism: The Future of
Design Protection in the European Union” (1997) 25 Am. Intell. Prop. Ass’n Q.J. [forthcoming].
“‘ Supra note 26. The Hong Kong Government’s explanation for incorporating parts of the EU De-
signs Directive is as follows: “Since the [Law Reform Commission] made its recommendations, the
European Union (EU) has proposed a non-examination system as the norm for registration of designs,
and we believe that by 1999, the United Kingdom itself will be obliged to change over to the EU
norm.” Summary: Registered Designs Bill, supra note 27 at par. 7.
“In s. 2(1) of the draft Registered Designs Bill, supra note 63, “design” was defined as “the ele-
ments of appearance of the whole or a part of an article resulting from the specific features or ele-
ments of the lines, contours, colours, patterns, shape or materials of the article itself or its ornamenta-
tion.” However, note that both the EU Designs Directive and the draft Registered Designs Bill state
that “a design is not registrable to the extent that it consists of features of appearance of an article
which are dictated solely by a technical function” (draft Registered Designs Bill, ibid., s. 6(l)(a)
[emphasis added]).
67 Draft Registered Designs Bill, ibid., s. 6(1)(b).
“Ibid., s. 5(3).
“Supra note 3.
7 I Ibid., s. 2, where “design” is defined with reference to functionality.
I Ibid., s. 5.
1997]
P TACKABERRY- IPRs IN THE HONG KONG S.A.R.
modeled on the Registered Designs Act 1949, and hence United Kingdom common
law, than on the EU Designs Directive. With respect to procedural matters, the Regis-
tered Designs Ordinance continues to draw upon the EU Designs Directive.
The Registered Designs Ordinance is unlike the Patents Ordinance in that foreign
design registrations will not be re-registered in Hong Kong. Instead, an original appli-
cation for a design may be filed with the Hong Kong Designs Registry and, if it
complies with the formal requirements, an independent Hong Kong design registra-
tion will issue. Contrary to the recommendation of the Law Reform Commission, no
substantive examination will occur. 3 The design will be valid for five years, renew-
able for four further five-year periods, for a maximum of twenty-five years.’
The overlap of design and copyright protection involves complicated issues that
have plagued the courts and Parliament of the United Kingdom for decades. In Legis-
lative Council Committee Stage Amendments to the Copyright Bill,” the Hong Kong
Government attempted to rationalize the copyright and registered-design regimes by
limiting the period of copyright protection of artistic works that have been industrially
applied and thus have become designs. Contrary to the recommendation of the Law
Reform Commission,” these proposed amendments fall short of introducing an unreg-
istered-design right such as that contained in Part III of the Copyright, Designs and
Patents Act 1988.” Pursuant to the proposed amendments, copyright protection for
designs that are registered under the new Registered Designs Ordinance will be ex-
hausted after twenty-five years from the date the design is first marketed.”6 Designs
72 The Registered Designs Ordinance is silent on the issues of interconnections and component
parts. In Canon v. Green Cartridge, supra note 26, the High Court of Hong Kong considered the
spare-parts defense to copyright infringement set out in British Leyland Motor Corp. v. Armstrong
Patents Co., [1986] A.C. 577 (H.L.).
7′ Registered Designs Ordinance, ibid ss. 24 and 27. See Report on Copyright, supra note 41 at
169, para. 17.80. The Intellectual Property Department of the Hong Kong Government has noted that:
The current regional and international trend is to provide a non-examination system for
registered designs. Experience in other countries suggests that even where search and
examination is conducted, it is difficult for the Registrar to determine the registrability
of a design. We take the view that a registered design system with formality examina-
tion only is the best way forward (Sunmary: Registered Designs Bill, supra note 27 at
paras. 7-8).
7′ Registered Designs Ordinance, ibid ss. 28 and 29.
” The Copyright Bill was published in Legal Supplement No. 3 to the Hong Kong Government Ga-
zette No. 8, Vol. CXXXIX. The bill and subsequent committee stage amendments are available at
http://www.houston.com.hk/hkgipd/new_law. html. The Copyright Ordinance, supra note 3, was
passed on 24 June 1997 and came into force on 27 June 1997.
76 Report on Copyright, supra note 41 at 170, par. 17.85. One suggested reason for not offering
protection for unregistered designs is that the international norm is still developing.
Supra note 26.
76 Copyright Ordinance, supra note 3, s. 87(2).
592
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that are not registered under the Registered Designs Ordinance will enjoy copyright
protection for fifteen years after first marketing.”
C. Copyright
The new Copyright Ordinance8 is closely modelled on the Copyright, Designs
and Patents Act 1988.” As in the United Kingdom, copyright in works created by
employees in the course of employment is owned by the employer; however, under
the new Copyright Ordinance, employees are entitled to compensation if the em-
ployer uses the work in a manner beyond that which was reasonably contemplated.”
Ownership of commissioned works depends upon the terms of any contract between
the parties. 3 However, the person commissioning the work “has an exclusive licence
to exploit the commissioned work for all purposes that could reasonably have been
contemplated” by the parties.’ The drafters of the draft Copyright BiW3 must be
praised for including provisions relating to the Internet and World Wide Web.86 Re-
grettably, only s. 26(2) found its way into the ordinance as passed. In addition, special
provision is made for affidavit evidence relating to subsistence and ownership of
copyright7′ and other enforcement measures previously contained in the old Copyright
Ordinance.’
As a result of intense lobbying by several interest groups, a number of Committee
Stage Amendments were made to the Copyright Bill at the eleventh hour before the
handover. In the original bill, the act of parallel importing had been decriminalized.
However, the final legislation states that criminal liability can be incurred only after
Ibid., s. 87(3). In the United Kingdom, registrable designs that are unregistered enjoy copyright
protection for 25 years: Copyright, Designs and Patents Act 1988, supra note 26, s. 52.
8oSupra note 3.
S, Supra note 26.
82 Copyright Ordinance, supra note 3, s. 14(2).
83 Ibid., s. 15. In the absence of any agreement, one must conclude that the author (artist) is the first
owner pursuant to s. 13.
1Ibid., s. 15(2)(a).
8 Copy on file with author. The Copyright Bill as published in the Official Gazette, supra note 75,
differs substantially from the draft Copyright Bill.
8For example, s. 35(1) of the draft Copyright Bill, ibiL, stated:
Copyright in a work which is issued by means of digital transmission is not infringed
by the making of a copy which is reasonably required for the viewing or listening of
the work by the recipient of the transmission for his own private domestic or private
business use.
Under s. 22 of the draft Copyright Bill, the issue to the public of copies of the work by means of
digital transmission was a restricted act. Under s. 101(3) of the draft Copyright Bill, infringement of
this right was actionable in Hong Kong “irrespective of the place of issue.”
87 Copyright Ordinance, supra note 3, s. 121. For a discussion of Copyright Ordinance (Cap. 39),
supra note 19, s. 9, see Pendleton, Garland & Margolis, supra note 2 at IV 207-208.
88 Copyright Ordinance, supra note 3, ss. 122-143.
1997]
P TAcKABERRY- IPRs IN THE HONG KONG S.A.R.
eighteen months from the date the work is first released anywhere in the world. ‘
Further, it will be a defence if the parallel importer can show that the copyright owner
or exclusive licensee has acted unconscionably, for example, by withholding supply
or refusing to supply on unreasonable grounds.’ Civil remedies for parallel importa-
tion remain available for the full term of copyright.
Other contentious issues related to re-transmission of television and sound broad-
casts, decompilation of software and landlord liability. In the original Copyright Bill,’
the existing exemption concerning re-transmission of works by satellite master an-
tenna television (SMATV) systems was removed. In response to lobbying by the
SMATV operators, s. 82(4) was enacted. Under this provision, the copyright owner is
deemed to have granted an implied re-transmission license. The owner may revoke
such an implied license by public notice. 2 The provision permitting decompilation of
computer programs has been deleted from the legislation: whether a particular act of
decompilation amounts to infringement will be determined in light of amended pro-
visions relating to fair dealing.’ The final legislation, like the original bill, does not
make liable landlords who knowingly allow their premises to be used by vendors of
pirated goods.’
D. Trade Marks
Hong Kong localized its trade-marks legislation in 1873; accordingly, the enact-
ment of new legislation prior to the handover was not as crucial as it was for patents,
designs and copyright, which had never been localized. The draft Trade Marks Bill,”
which was not introduced into the Legislative Council before the handover, is based
upon the United Kingdom’s Trade Marks Act 1994,”6 which accords with the recom-
mendations of the Intellectual Property Department.97 The draft bill, if adopted, will
result in a number of changes to Hong Kong’s trade-marks legislation in force at the
” Ibid. s. 35(4). Representatives of the sound recording and film industries had requested that
criminal sanctions be retained for at least two years from first release.
Ibid. s. 36(3). Such a defence is available to all importers, exporters and possessors of, and those
who deal in, infringing copies pursuant to ss. 30 and 31 (secondary infringement of copyright).
9′ Supra note 75.
92 Copyright Ordinance, supra note 3, s. 82(5). This provision will not be activated until after a re-
view of Hong Kong’s broadcasting policy in 1998. See “Speech by STI-Resumption of Second
Reading
at
http://www.houston.com.hklhkgipd/sti-spch.html [hereinafter “Speech by STI”].
available
Debate
on
24
1997″,
for
LegCo
Sitting
June
9′ Copyright Ordinance, ibid, s. 37(3). This section draws upon the relevant provisions in the
United States, “Speech by STr’, ibid at para. 24.
” The Business Software Alliance had recommended such a provision with a view to controlling
the notorious Hong Kong arcades at which counterfeit computer software is sold.
” Supra note 4.
96Supra note 36. See Paper on Trade Marks, supra note 45. See also, T. Hope quoting Averil Wal-
ters, Deputy Director, Intellectual Property Department of the Hong Kong Government, to the effect
that it is the intention of the Government “to use the UK Trade Marks Act 1994 as a model adapted to
suit Hong Kong’s requirements” (supra note 57 at 25).
9′ Paper on Trade Marks, ibid
MCGILL LAW JOURNAL! REVUE DE DROIT DE MCGILL
[Vol. 42
time of writing. 8 In addition to providing protection for well-known trade marks
comparable to s. 56 of the Trade Marks Act 1994, the draft Trade Marks Bill also
permits the defensive registration of such trade marks.”
With the coming into force of the Patents Ordinance, Registered Designs Ordi-
nance and Copyright Ordinance, Hong Kong will have localized all of its intellectual-
property legislation. In this manner, the rights of domestic and foreign owners of IPRs
will be safeguarded, so far as that is possible. Basing the Patents Ordinance, Copy-
right Ordinance and draft Trade Marks Bill on statutes of the United Kingdom should
aid in smoothing Hong Kong’s transition from a British colony to a region of China
governed by common law. To this end, each piece of legislation contains provisions
intended to ensure that IPRs enjoying protection prior to the handover will continue to
enjoy protection in the Hong Kong S.A.R.'”
III. The Enforcement of IPRs in China Today: How Might Hong
Kong Be Influenced?
The “one country, two systems” policy enshrined in the Basic Law’ notwith-
standing, over time Beijing’s policies with respect to IPRs are likely to influence the
parallel environment in the Hong Kong S.A.R. to some degree. Three important fac-
tors that affect China’s approach to the protection of IPRs are: (1) the attitude in Chi-
nese societies towards intellectual property and copying; (2) the use of intellectual
property in the P.R.C. to foster economic growth and foreign technology transfers;
and (3) China’s own brand of rule of law (particularly, the close relationship between
the state and judiciary). It will be argued that despite the absence of a tradition of of-
ficially sanctioned protection for IPRs in the P.R.C., much effort has been expended
developing legislation that is comparable to that of developed nations. However, it is
“‘ Such changes include abolishing the distinction between Parts A and B of the Register; allowing
for assignment of trade mark applications; adopting a simple system to record trade mark licenses;
extending the definition of trade mark infringement; and permitting comparative advertising in certain
situations. In addition, the requirement that a trade mark be “visually perceptible” in order to be regis-
trable has been removed, thereby permitting, at least theoretically, the registration of smells and
sounds. See. generally J. O’Connell, “Decolonising Hong Kong’s Intellectual Property Laws” [1995]
11 Eur. Intell. Prop. Rev. 555; C. Woods, “Trademark Law Reform in Hong Kong” (1996) 9:4 I.P.
Asia 38; B. Yen, “Developments in Hong Kong’s Trade Mark Law” (1995), available at Intellectual
Property Department, Hong Kong Government: http:llwww houston.com.hk/hkgipd/barryyen.html.
9’ Supra note 4, s. 59. Such registrations are not permitted under the Trade Marks Act 1994. See A.
Frth, Trade Marks: The New Law (Bristol: Jordon, 1995) at 121.
‘” See Patents Ordinance, supra note 3, s. 158, Copyright Ordinance, supra note 3, s. 192, and
draft Trade Marks Bill, supra note 4, sch. 4. The transitional provisions regarding registered designs
(Registered Designs Ordinance, supra note 3, s. 91) are particularly generous to owners of designs
registered in the United Kingdom, presumably because such owners automatically enjoyed design
rights in Hong Kong under the old law.
“‘ Supra note 5.
1997]
9F TACKABERRY – IPRs IN THE HONG KONG S.A.R.
595
the perceived deficiencies in the enforcement of those fights that cause concern in the
international business community.
An examination of the tradition in Chinese societies of copying suggests that the
application of Anglo-American views of IPRs to the P.R.C. cannot occur without a
certain degree of difficulty. It has been argued that “copyright is viewed by many
Asians as a Western concept.”‘” A study conducted by Swinyand, Rinne and Kau
found that copyright protection “goes firmly against the grain of Asian culture, which
supports the concept of sharing, not protecting, individual creative work.”‘”3 The
authors found that their Singaporean subjects tended to justify copyright infringement
on utilitarian grounds; while the subjects acknowledged that their unauthorized
copying of computer software was illegal, within the Chinese cultural context they
did not view it as immoral’
Historical explanations for the tendency to copy have been suggested.”4 It has
been noted that in many Asian cultures, faithful imitation (for example of classic
paintings) is a generous compliment.” The accurate reproduction of ancient works of
the masters by accomplished calligraphic artists may help to account for a general
proclivity to copy.”‘ In order to become a government official in Imperial China –
generally viewed as a most worthy achievement”‘ –
it was necessary to pass a series
of grueling examinations, which entailed a sizable amount of memorization and re-
production of classic Confucian texts.”‘ Confucian beliefs, which are still widely held
in the P.R.C., stress collectivism, sharing intellectual products with society and a con-
02 EG. Altbach, “Economic Progress Brings Copyright to Asia” (1988) 139:9 Far Eastern Econ.
Rev. 62.
’03 W.R. Swinyard, H. Rinne & A.K. Kau, “The Morality of Software Piracy: A Cross-Cultural
Analysis” (1990) 9 J.B. Ethics 655 at 662. Ocko argues that the concept of ownership in Chinese
culture requires further research before it can be concluded that there is no tradition of ownership of
intellectual property in China (J. Ocko, “Copying, Culture, and Control: Chinese Intellectual Property
Law in Historical Context” (1996) 8 Yale J.L. & Human. 559). See also W.P. Afford, To Steal a Book
is an Elegant Offense: Intellectual Property Law in Chinese Civilization (Stanford: Stanford Univer-
sity Press, 1995).
,04 Clearly, this perception is not unique to Asian cultures. According to the Business Software Alli-
ance (BSA), the 1995 piracy rate in the United States (the lowest in the world) was estimated to be a
hefty 26%. Incidentally, the 1995 piracy rate in China was estimated to be 96%, and in Hong Kong,
62%. See BSA, “More Than $13 Billion Lost Worldwide to Software Piracy Joint BSA/SAP Survey
Reveals” (18 Dec. 1996), available at http://www.bsa.org/ piracy/piracystudy95/SPABSA. htm.
103 J.R. Floum, “Counterfeiting in the People’s Republic of China” (1994) 28 J. World Trade 35.
6 Swinyard, Rinne & Kau, supra note 103 at 657.
‘O’N. Wingrove, “It’s Not Always Piracy, Say Hong Kong Engineers” (1993) 36 Research Technol-
ogy Management 4; N. Wingrove, “China Traditions Oppose War on IP Piracy” (1995) 38 Research
Technology Management 6.
‘ K.-S. Yang, “Psychological Transformation of the Chinese People as a Result of Societal Mod-
ernization” in M.H. Bond, ed., The Handbook of Chinese Psychology (Oxford: Oxford University
Press, 1996) 479.
109 K. Ho, “A Study into the Problem of Software Piracy in Hong Kong and China” (1995), c. 2, s.
2.1; available at http://www.houston.com.hk/hkgipd/piracy.html.
596
MCGILL LAW JOURNAL / REVUE DE DROITDE MCGILL
[Vol. 42
cem with the past.”‘ Since the vast majority of Hong Kong’s population is composed
of ethnic Chinese, most of whom, or whose parents or grandparents, immigrated from
China,”‘ its Confucian cultural heritage is closely tied to that of China.”‘
Due in part to this cultural heritage, China did not enact its first comprehensive
trade-marks, copyright and patent laws until the early twentieth century, and this oc-
curred largely as a result of pressure from Western nations.”‘ The Republican gov-
ernment also promulgated laws protecting JPRs during the period 1928-1932. How-
ever, the Imperial and Republican enactments were never effectively implemented
due to foreign invasions, civil wars and political instability. The patent and trade-
marks laws enacted after the establishment of the P.R.C. were not pursued, largely due
to the chaos that resulted from the Great Leap Forward and the Cultural Revolution.
However, it would be incorrect to state that Chinese history is devoid of examples in
which intellectual property has been protected. Ocko points out, for example, that the
concept of authorship did exist in traditional China and that guilds in Imperial China
were somewhat effective in restraining the unauthorized use of their trade marks. “‘
A cultural bias that favours the sharing of ideas is, of course, incompatible with
the internationalization of intellectual property, which is fueled by the globalization of
economies. China, as a new member of the world trading network, must react to con-
siderable foreign pressure to develop an intellectual-property regime that accords with
international standards. Further, as a developing nation wishing to attract foreign in-
vestment, the P.R.C. arguably has a vested interest in maintaining vigorous enforce-
ment of IPRs: the success of China’s modernization drive depends, to a large extent,
upon transfers of technology by foreign corporate investors. It is acknowledged that
strong arguments can be made that selective enforcement of IPRs may be an appro-
priate policy, particularly with respect to developing countries such as China.”‘ That
” See Ho, ibid.; S.G. Redding, The Spirit of Chinese Capitalism (Berlin: de Gruyter, 1990); W.P.
Alford, supra note 103; Yang, supra note 108.
.. According to Redding, 99% of Hong Kongers are Chinese (ibid. at 23). Official statistics on the
ethnic makeup of Hong Kong’s population are unavailable. However, statistics regarding usual lan-
guage spoken are illustrative. In 1991, the most recent census figures available, 97% of Hong Kong’s
population identified a Chinese dialect as their usual language spoken (see Census and Statistics De-
partment of the Hong Kong Government, “Hong Kong 1991 Population Census – Main Tables”
(1992) 70-71). According to Redding at 187, “It may now be asserted more confidently that Overseas
Chinese society [including Hong Kong society], as a kind of offshore version of traditional Chinese
society, preserves its verticality and its distinct form of order, and preserves also the legacy of weak
horizontal cooperativeness.”
“‘ For a discussion of Confucianism in the Hong Kong context, see D.W. Ling, “Confucianism and
English Common Law: A Hong Kong Lawyer’s Observation” (1995) 1:1 J. Chinese & Comp. L. 72
at 80.
See generally, Alford, supra note 103 at 30-68.
“4 Ocko, supra note 103. In Ocko’s view, “an intellectual property consciousness, or sensibility, has
probably existed in China for a long time” (ibid at 571). See also Alford, supra note 103.
“‘ See F Machlup & E. Penrose, “The Patent Controversy in the Nineteenth Century” (1950) 10 J.
Economic History 1; C.A.P. Braga, “Guidance From Economic Theory” in W.E. Siebech et aL, eds.,
Strengthening Protection of Intellectual Property in Developing Countries: A Survey of the Literature
(World Bank Discussion Papers) (Washington: The World Bank, 1990) [hereinafter Strengthening
1997]
P1 TACKABERRY- IPRs iN THE HONG KONG S.A.R.
being said, the P.R.C.’s frenzied promulgation of “world class” intellectual-property
legislation since the 1980s is evidence that it views effective protection of IPRs as
necessary to encourage technology transfer.”‘ Many companies doing business in
China agree.”‘ On the other hand, as a developed region with an economy increas-
ingly based on the provision of services rather than the manufacture of products,
Hong Kong’s policy objectives with respect to intellectual property differ signifi-
cantly from those of the P.R.C.
At first glance, the recognition of IPRs in China appears to be contrary to basic
Marxist-Leninist (and, incidentally, Confucian) principles, which hold that the prod-
ucts of innovation and creativity belong to the society, not the creator.”‘ China’s eco-
Protection of Intellectual Property]; R.E. Evenson, “Survey of Empirical Studies” in Strengthening
Protection of Intellectual Property, ibid; U. Anderfelt, International Patent-Legislation and Develop-
ing Countries (The Hague: Martinus Nijhoff, 1971); A.S. Oddi, “The International Patent System and
Third World Development: Reality or Myth?” [1987] Duke L.J. 831; D. Brenner-Beck, “Do As I Say,
Not As I Did” (1992) 11 U.C.L.A. Pacific Basin L.J. 84; R.L. Gana, “Has Creativity Died in the Third
World? Some Implications of the Internationalization of Intellectual Property” (1995) 24 Denv. J. Int’l
L. & Pol’y 109; C.M. Correa, “The TRIPs Agreement and Information Technologies: Implications
for Developing Countries” (1996) 5 Info. & Comm. Tech. Law 133; R. Acharya, “Intellectual Prop-
erty Rights and Information Technology: the Impact of the Uruguay Round on Developing Coun-
tries” (1996) 5 Info. & Comm. Tech. Law 149; K. Peterson, “Recent Intellectual Property Trends in
Developing Countries” (1992) 33 Harv. Int’l L.J. 277; M.D. Rowat, “An Assessment of Intellectual
Property Protection in LDCs From Both a Legal and Economic Perspective – Case Studies of Mex-
ico, Chile and Argentina” (1993) 21 Deny. J. Int’l L. & Pol’y 401; P Gakunu, “Intellectual Property:
Perspective of the Developing World” (1989) 19 Ga. J. Int’l & Comp. L. 358; S. Lall, “The Patent
System and the Transfer of Technology to Less-Developed Countries” (1976) 10 J. World Trade Law
1; E. Penrose, “International Patenting and the Less-Developed Countries” (1973) 83 The Economic
Journal 768; H.E. Grundmann, “Foreign Patent Monopolies in Developing Countries: An Empirical
Analysis” (1976) 12 J. Development Studies 186.
6 It has been argued that in the absence of laws protecting IPRs, foreign and Chinese inventors and
holders of technology would be likely to retain their innovations for fear that infringement would oc-
cur and negligible benefit from the transfer would be derived: see S. Dong, D. Zhang & M.R. Larson,
Trade and Investment Opportunities in China: The Current Commercial and Legal Framework
(Westport: Quorum, 1992).
“7 p. Tackaberry, “Intellectual Property Risks in China: Their Effect on Foreign Investment and
Technology Transfer” (Faculty of Law, City University of Hong Kong, 1997) [unpublished]. This ar-
ticle is a survey of the PRs-related concerns of Western and Japanese companies doing business in
China. There is anecdotal evidence that the perceived failings of China’s IPRs regime act as a disin-
centive for foreign companies to transfer their technology to Chinese joint ventures. See R.L.
Thurston, “Country Risk Management: China and Intellectual Property Protection” (1993) 27 Int’l
Law. 51 and N. Holloway, “Seeds of Worry” (1995) 158:46 Far Eastern Econ. Rev. 97. A biotechnol-
ogy industry expert has said: “Many foreign bio-tech firms were wary of bringing their best crop va-
rieties to China because of concerns over their intellectual property rights” (E. Lococo, “US Pact to
Boost Agribusiness” Hong Kong Standard (18 June 1996) A3). Chrysler alleges that it recently lost a
bid to produce minivans in China because “it did not want to risk exposing its cash cow minivan to
Chinese copycat manufacturers.” See T. Munroe, “China Uses its Market’s Size to Bully World Trad-
ers” The Washington imes (22 October 1995) Al.
,S Alford, supra note 103; Y Yang, “The 1990 Copyright Law of the People’s Republic of China”
(1992) 11 U.C.L.A. Pacific Basin L.J. 260.
598
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nomic reforms were rationalized on the basis that foreign technology which improves
the lot of the people is useful to socialism and is therefore desirable.”” Class struggle
is no longer viewed as the key link to socialism; instead economic development
through an open door policy is the “central task”.’20 The Hong Kong S.A.R.’s capital-
ist system lacks the central planning of China’s “socialism with Chinese characteris-
tics”. Nevertheless, both governments will likely continue to recognize the potentially
significant, albeit somewhat different, role to be played by enforceable IPRs in foster-
ing economic growth.
While China’s intellectual-property legislation, generally speaking, meets or ex-
ceeds the requirements of the major international agreements,”‘ it is the application of
those laws that causes dissatisfaction in the international business community. It ap-
pears the ultimate source of discord may be China’s own brand of rule of law,’2 which
entails a close relationship between the state and key players in the enforcement proc-
ess, including law-enforcement officials, the Bureaus of Administration of Industry
and Commerce and the courts. As an example, China’s Copyright Law'” clearly pro-
hibits the manufacture and sale of counterfeit computer software, recorded music and
films. However, it has been revealed that local officials protect, or at least ignore, the
activities of pirate factories within their jurisdiction.'” The close connection between
Foreign Investment” (1996) 7 Australian Intell. Prop. J. 32.
“9 Alford, ibid.; L. Leong, “Trademark Law in the People’s Republic of China: Encouragement of
,2 J. Wu, On Deng Xiaoping Thought (Beijing: Foreign Languages Press, 1996). One must bear in
mind that despite the array of reforms, “public ownership constitutes the mainstay” of China’s econ-
omy (Decision of the CPC Central Committee on Some Issues Concerning the Establishment of a
Socialist Market Economic Structure, Daily Rep. China (FBIS) (17 November 1993) at 23 quoted in
W.H. Simon, “The Legal Structure of the Chinese ‘Socialist Market’ Enterprise” (1996) 21 J. Corp. L,
267).
.2. See S. Kwok, “The PRC Makes Slow But Steady Progress” (1996) 9:10 I.R Asia 18.
, The term “rule of law” is used to describe modem Western legal systems that have comprehen-
sive, systematic, coherent and logically consistent rules that are independent of other institutions (for
example, the state) and which are administered by trained legal professionals. In Weber’s model, rule
of law gives individuals confidence that their disputes with others, including the state, will be adjudi-
cated on the basis of the facts and the law only (see M. Weber, The Theory of Social and Economic
Organization (New York: Oxford University Press, 1947)). Weber believed rule of law was necessary
for capitalism to thrive because “the predictability in the operation of such a rational legal system
would provide the psychological security which capitalists and investors need in their business activi-
ties”: A.H.Y Chen, An Introduction to the Legal System of the People’s Republic of China (Hong
Kong: Butterworths Asia, 1992) at 3. For a discussion of “rule of law” in the Hong Kong context, see
Ling, supra note 112 at 83-84.
‘ Copyright Law of the People’s Republic of China, 15th Sess., 7th N.P.C., 7 Sept. 1990 111-700.
124 See F Chen, “Current Resistence to the Investigation and Punishment of Trademark Infringe-
ment in China and the Countermeasures to be Adopted” (1994) 39:4 China Patents & Trademarks 69;
J. Yu, “Protection of Intellectual Property in the P.R.C.: Progress, Problems and Proposals” (1994) 13
U.C.L.A. Pacific Basin L.J. 140; J.T. Simone, “Trade Sanctions Loom Again” (1996) 10:1 China L.
& Prac. 29; O.D. Nee & E. Bowler, “China” (Forum: Intellectual Property Protection in China, South
Korea, Australia and Malaysia) (1995) 8 Asia Bus. L. Rev. 28; H.J.H. Weare, “Enforcement Still a
Problem for Trademarks” (1996) 9:10 I.E Asia 25.
1997]
P TACKABERRY- IPRs IN THE HONG KONG S.A.R.
599
state and enforcement mechanisms in the P.R.C. can also lead to government in-
volvement in the enforcement of foreign-owned IPRs.’
While asserting that judges in China are independent from the influence of the
Communist Party, Chen Chunlong, vice-president of the Beijing Higher People’s
Court, recently acknowledged that Party members are “responsible for the spiritual
education in a court”.’26 Su Chi, vice-president of the First Beijing Intermediate Peo-
ple’s Court, states that “Chinese or foreigners, whoever is in the right, wins the law-
suit because we only judge by law and evidence.. 2 Presumably, Mr. Su meant who-
ever is in the right from a socialist perspective: it is well known that adjudicative
committees composed largely of judges who are members of the Communist Party of
China conduct a prior review of significant cases – which may be based only on a
short oral presentation by the judge responsible for the case’2′ –
and make recom-
mendations as to their proper disposition.” Chen describes the judicial process as
“first decide, then try”. 9 In the words of Lewis, laws in China are actually “tools of
bureaucrats, agencies and government companies” which “makes for an unpredict-
able environment”.’2 ‘ Clearly, the application of law in China is much more closely
connected to state policy and whim than in the West.’
‘ For this reason, foreign companies frequently choose to focus their enforcement activities in
226 A. Ngai, “Judicial System ‘independent of Communist Party’ South China Morning Post (6
Hong Kong, through which many counterfeit products originating in China are exported.
March 1997) 10.
,2 L. Cao, “China Protects Foreign Copyrights: Solemn Promise” (1996) 39:2 Beijing Rev. 25 at
25. For an erudite discussion of the relationship between “rule of law” and Deng’s “socialism with
Chinese characteristics”, see D. Guo, “Enlightenment of Law and Rule of Law in China” (1996) 2:2
J. Chinese & Comp. L. [forthcoming].
,28 Chen, supra note 122 at 120. See also D. Tan, “Judicial Independence in the People’s Republic
of China: Myth or Reality?” (1993) 68 Australian L.J. 660; Hansen, supra note 43.
29 M.Y.K. Woo, “Adjudication Supervision and Judicial Independence in the RR.C.” (1991) 39
Am. J. Comp. L. 95. See also Dong, Zhang & Larson, supra note 116 at 5. See also C. Wang,
“Introduction: An Emerging Legal System” in C. Wang & X. Zhang, eds., Introduction to Chinese
Lamv (Hong Kong: Sweet & Maxwell, 1997) 1.
,’ Chen, supra note 122 at 120.
‘ D. Lewis, ed., The Life and Death of a Joint Venture in China, 2d ed. (Hong Kong: Asia Law &
Practice, 1995) at 44.
‘2 According to W.C. Jones, “Policy in China is law. It does not merely influence law”: W.C. Jones,
“The Constitution of the People’s Republic of China” (1985) 63 Wash. Univ. L.Q. 707 at 713. See
also L. Wang, “China’s Patent Law and the Economic Reform Today” (1991) 9 Pacific Basin L.J.
254. In the months following the Tiananmen Square “incident’, Chinese officials discriminated
against foreign joint venture partners. See J. Child, Management in China During the Age of Reform
(Cambridge: Cambridge University Press, 1994) at 245, 291, 305. Since 1995, subscribers to the In-
temet have been required to register with the government and the government has made it impossible
for subscribers to access numerous politically sensitive websites. See Kwok, supra note 121; M.
Clough, “Cyberspace: Why Nations Could Fear the Intere’ Los Angeles Times (4 February 1996)
MI; S. Faison, “Chinese Tiptoe Into Internet, Wary of Watchdogs” The New York limes (5 February
1996) A3; “China Ban on Interet” Hong Kong Standard (9 September 1996) A2. More recently,
these restrictions were relaxed to allow access to such websites as CNN and The Wall Street Journal
See “Net surfers given access to news sites” South China Morning Post (16 January 1997) 10. The
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[Vol. 42
It has been suggested that rule of law may not be necessary for the successful op-
eration of Chinese and other East Asian economies.’ 33 Yet, most foreign investors
would evidently prefer to operate within a legal system that produces predictable re-
sults with a minimum of government interference.’ ” Herein lies Hong Kong’s greatest
challenge. If the courts of the Hong Kong S.A.R. are able to resist any attempts by
Beijing to intervene in their application of the intellectual-property laws,”‘ Hong
Kong will continue to reap the perceived benefits of a jurisdiction in which the IPRs
of foreign companies, innovators and artists can be enforced in a reliable and objec-
tive manner.’
measures are justified on the basis that they control communication that is “harmful to the security of
the nation.” Those who fail to comply are subject to severe punishment (“Interet users warned on
laws” South China Morning Post (9 August 1996) 9). The overall effectiveness of these measures
remains to be determined; those with financial resources sufficient to permit access to Internet gate-
ways outside China would, it appears, be able to render the regulations impotent as detection would
be problematic.
“‘ According to C.A.G. Jones, “To the extent that the Chinese and East Asian economies are mu-
tually interdependent, they can continue to operate in an environment of legal pluralism, where ‘rule
of relationships’
[familism and guanxi] rather than ‘rule of law’ is central” (C.A.G. Jones,
“Capitalism, Globalization and Rule of Law: An Alternative Trajectory of Legal Change in China”
(1994) 3 Social & Legal Studies 195 at 215). See also Y. Ghai, “The Rule of Law and Capitalism:
Reflections on the Basic Law” in China, Hong Kong and 1997, supra note 44 at 343.
‘ See Hansen, supra note 43. Tackaberry, supra note 117.
,35 Art. 158 of the Basic Law, supra note 5, states: “The courts of the Hong Kong Special Adminis-
trative Region shall exercise judicial power independently, free from any interference. Members of
the judiciary shall be immune from legal action in the performance of their judicial functions.” Han-
sen, supra note 43, a former member of the Hong Kong judiciary, states at 12: “Recent events in
Hong Kong have also highlighted an apparent failure to fully understand the doctrine of the separa-
tion of powers and judicial independence.” In particular, he finds it “surprising” that Sir T.L. Yang,
while Chief Justice of Hong Kong, would run for the political office of Hong Kong S.A.R. Chief Ex-
ecutive.
While acknowledging that the Basic Law contains some checks and balances, Hansen notes that
future Hong Kong judges will ultimately be appointed by Tung Chee-hwa, the Hong Kong S.A.R.’s
Beijing appointed Chief Executive. However, Mr. Tung has stated: “For the sake of judicial inde-
pendence, the Chief Executive will have no role to play [in the selection of judges] but to convene the
first meeting [of the commission to select judges] before the chief justice has been chosen” (L. Choy,
“Tung vows to stand back from hiring judges” South China Morning Post (I March 1997) 6). In
April 1997,.Mr. Tung dropped two independents from the body that appoints judges and replaced
them with “Pro-China and pro-business” members (A. Li & L. Choy, “Tung drops independents from
judges body” South China Morning Post (12 April 1997) 1). It has been noted that the Court of Final
Appeal, which replaces the Privy Council, will consist of “four Judges appointed by Beijing’s satrap
and one overseas Judge” (Editorial, “Hong Kong and New Zealand” [January 1997] New Zealand
L.J. 1). This editorial describes a statement made by Martin Lee, leader of Hong Kong’s Democratic
Party, to the effect that, “Only overseas Judges could be trusted to keep the parties on a level playing
field and not be influenced by the status or identity of the parties” (ibid. at 1). The recent appointment
of Andrew Li Kwok-nang as Chief Justice of the Court of Final Appeal should allay some of these
concerns, at least for the time being: see text below, accompanying note 143.
13’ According to Christopher Patten, “Patten Speech”, supra note 1
at para. 4:
1997]
P TAcKABERRY- IPRs IN THE HONG KONG S.A.R.
Conclusion
Hong Kong and Taiwan – Chinese societies with Confucian traditions – have
evolved from sites of rampant infringement of IPRs to more sophisticated societies
whose governments acknowledge the global and domestic importance of the protec-
tion of intellectual property.'” While China’s earnest efforts to improve its enforce-
ment of IPRs must be acknowledged, “‘ it is at an earlier stage of this development.
Further, as a developing nation with a largely planned economy, China’s intellectual-
policy objectives differ substantially from those of the Hong Kong S.A.R., a wealthy
developed region with one of the freest market economies in the world.
As Hong Kong reverts to Chinese rule, it is at risk of being drawn into the types
of intellectual-property disputes that have plagued Sino-United States relations re-
cently.”9 However, Hong Kong’s common-law tradition, which, according to the Ba-
sic Law,”
is to continue at least until the year 2047, will be viewed as a significant as-
set by many foreign businesses. Assuming the Hong Kong judiciary can resist any in-
volvement of P.R.C. government officials in its enforcement of IPRs, domestic inno-
vation should be encouraged in the Hong Kong S.A.R.,’M and its status as a respected
We, more than anyone, know the value of free trade, and know how much free trade
depends upon confidence in the respect that will be shown to legal rights. We have a
reputation to defend, a reputation that adds value to the goods and services we offer.
at para. 29:
As a committed member of the free trade club, and a passionate advocate of the bene-
fits of free trade, Hong Kong is necessarily – necessarily – a staunch defender of in-
tellectual property rights. Our credibility as a free trader depends upon being an honest
trader. Who will invest in new processes and production of original products here if the
fruits of their research and investment, their technology and their designs are not safe-
guarded? The cost to Hong Kong, and to your business opportunities here, of failing to
maintain and enforce our protections for intellectual property is hard to put a figure on,
but all too easy to envisage.
‘. In Taiwan (and other Asia Pacific countries such as South Korea), this did not occur without
considerable foreign pressure, particularly from the United States. See Alford, supra note 103 and
C.C. Li, The Protection of Intellectual Property Rights as a Strategic Component of the Republic of
China’s Economic Policy (Ann Arbor: U.M.I., 1991). In Hong Kong, organized distribution of coun-
terfeit products still continues. It has been alleged that Hong Kong businesses are masterminding
some of the pirate factories in China. This suspicion, together with the apparent rapid increase in 1996
and 1997 in the number of Hong Kong arcades selling counterfeit software led the United States to
place Hong Kong on
at
http:llwww.ustr.gov/releases/1997/04/97-37.pdf. See “Patten Speech”, supra note 1; M. Sharp,
“Software alliance puts gun to pirates” Sunday Morning Post (4 May 1997) 3.
301 Watch List
the Special
‘ Only as recently as the late 1970s has modem China been in a position to embark upon the ear-
in May
1997;
available
nest protection of IPRs. See text above, accompanying notes 116-117.
,’ For a summary of these disputes, see R. Ross-MacDonald, “Developments in Intellectual Prop-
erty Protection and Enforcement in the People’s Republic of China” (1996) 1 Asian Commercial L.
Rev. 222.
” Supra note 5.
14′ However, as YL. Cheung, a Hong Kong games-software developer, states: “Foreigners are reluc-
tant to have alliances with Hong Kong [software] companies because they are afraid of piracy” (S.
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[Vol. 42
member of the international trading network should remain intact. At present, the ex-
tent to which the Hong Kong S.A.R.’s autonomy in the area of intellectual-property
policy will be maintained can only be a matter of conjecture. However, the recent ap-
pointment of Andrew Li Kwok-nang Q.C., a liberal, non-aligned, British-educated
lawyer, as Chief Justice of the Court of Final Appeal should provide some comfort to
those who wish to see a continuation of Western-style rule of law in Hong Kong. Mr.
Li’s appointment was met with almost unanimous approval from British, pro-
democracy and pro-Beijing factions,”2 an unusual occurrence in pre-handover Hong
Kong.
The convergence of the intellectual-property laws of Hong Kong and China
seems inevitable, at least in the long term. However, in view of the “one country, two
systems” approach adopted in the Basic Law, an official policy of harmonization is
not now in effect, and, it is submitted, should not become an objective in the imme-
diate future. By modelling most of its new intellectual-property legislation on the
statutes of the United Kingdom, the Hong Kong Government has evidenced its inten-
tion to maintain a course distinct from that of China. It is hoped that this legislative
foundation will be accompanied by a clear separation of the judiciary and the state. In
this manner, the Hong Kong S.A.R. will maintain its generally favourable reputation
in this era of the globalization of economies and internationalization of intellectual
property.
Doulaverakis, “HK has talent to lead global games industry” South China Morning Post (13 May
1997) T-2). The recent proliferation of counterfeit software in Hong Kong has caused a Business
Software Alliance (BSA) representative to allege that software companies “have been slow to come
[to Hong Kong] because they are afraid of having their products pirated” (Sharp, supra note 137),
The BSA also alleges that Hong Kong’s high piracy levels make Singapore and Taiwan more attrac-
tive for technology companies and wonders “how Hong Kong could be a successful hi-tech centre
without stamping out blatant copyright abuse” (Sharp, ibid.; M. Sharp, “Pirates sell Windows 97”
South China Morning Post (4 May 1997) M-l).
Artists, entrepreneurs and inventors in the P.R.C. have for some time complained that piracy and
difficult-to-enforce intellectual-property laws are thwarting their efforts to enter the Chinese market.
See Nee & Bowler, supra note 124; A. Higgins, “The New China: Cartoon Capers Land Pirates in
Courts” The Guardian (5 June 1996) 12; M. Fomey, “Now We Get It” (1996) 159:7 Far Eastern
Econ. Rev. 40. Ling Yan, a Chinese computer-software developer says, “Knock-off products merely
singe the hair on foreigners’ arms, but they bum us out by the roots” (ibid. at 40). Well known Chi-
nese authors, software developers and musicians such as Ling Yan, Wang Shuo and Cui Jian say they
are losing a substantial portion of their revenues to infringers (see Forney, ibid. at 40-41). To make
matters worse, some Chinese creators are suffering because foreign entertainment companies are
unwilling to promote their work in music and films without adequate protection of IPRs (see “Record
Firms to Scout Talent” Eastern Express (19 June 1996) 6).
,42 See C. Yeung, “Andrew Li named as top judge” South China Morning Post (21 May 1997) 1;
C.K. Lau, “A man to keep faith in the law” South China Morning Post (22 May 1997) 19.
