January 2024

The long-awaited statue “Mainland Judgments in Civil and Commercial Matters (Reciprocal Enforcement) Ordinance (Cap. 645)” has finally come into force on 29 January 2024. The Ordinance cordially facilitates the mutual enforcement of judgments in civil and commercial matters given between mainland and Hong Kong and widens the scope of the “Arrangement” which only applied to commercial contracts and monetary judgments.

The Ordinance saliently covers judgments on contractual disputes and also infringements of intellectual property rights. This saves the complication, time and cost for the intellectual property possessor to commence a fresh action in mainland and most importantly, the judgment can be enforced across the border to seize the available assets of the judgment debtor. As the Ordinance dispenses with the need for the exclusive jurisdiction requirement to opt for either mainland or Hong Kong courts as the exclusive forum for disputes, Hong Kong could be a desirable forum for overseas parties to commence an intellectual property claim as the judgment obtained can now be enforced both in Hong Kong and mainland.

Section 2 of the Ordinance has a wide coverage of “specified intellectual property right” which includes copyright, trade mark, geographical indication, industrial design, patent, layout design of integrated circuit, right to protect undisclosed information and right enjoyed by a person in respect of a new plant variety. A judgment is excluded from the Ordinance if it is an “excluded judgment” provided for under section 7 of the Ordinance like a judgment given in proceedings for tortious dispute over an infringement of an invention patent or utility model, or for a determination of the licence fee rate of a standard essential patent.

One further notable feature is that the Ordinance allows recovery of damages in respect of infringement of intellectual property rights but no specific performance or injunctive relief (except for the right to protect undisclosed information) can be enforced. A judgment on validity of an intellectual property right is also excluded, though a judgment based on ruling of validity, establishment or subsistence of an intellectual property right is recognized.

Under the Ordinance, the enforcing party has to show that the act of infringement is committed in the place where the judgment is granted and that the intellectual property right is protectable under the law of that place. This is reasonable and aligns with the usual doctrine of law.