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International Bar Association Annual Conference 2019 in Seoul

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The International Bar Association (IBA) Annual Conference is the premier conference for legal professionals worldwide to meet, share knowledge, network, build contacts and develop business. It also serves to advance the development of law and its role in business and society and to learn from the experience of others. This year, the conference had been held at the COEX Convention & Exhibition Center in Seoul on the 22-27 September 2019.

Anna Chan, Head of the Tax Advisory, Partner, has been invited to be the panelist speaker on the topic “Shadow Banking and its tax implication”. The session was well attended with over 50 officers and delegates all of whom are themselves tax experts of their home jurisdictions. Issues such as availability of tax incentives, risk of transparent entities, withholding tax on interest, interplay of DTA have been covered. Amongst the speakers, we have leading tax experts from the Netherlands, US, Canada, Germany and Luxembourg. The presentation has received lots of positive feedback.

Legal Challenges of using Robotic Process Automation (RPA)

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With the advance of technology, a lot of audit firms have been using Robotic Process Automation (RPA) in auditing. However, notwithstanding the advantages brought along by RPA, audit firms would at the same time be exposed to certain legal risks.

Anna Chan, Head of Tax Advisory, Partner, has recently given a talk at the Accounting & Finance Show HK 2019 on legal challenges relating to Robotic Process Automation (RPA) in accounting. The seminar focused on different means to mitigate legal risks in using RPA and demonstrated how audit firms can protect themselves through careful drafting of agreements in the aspects of intellectual properties issue, the liabilities allocation, data privacy and confidentiality.

The seminar was a great success with over 50 delegates from the Accounting and Finance industry attended.

Legal Update: Hong Kong-Guangdong Framework Agreement on Legal Exchange and Mutual Learning

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On September 7 2019, the Department of Justice entered into a framework agreement with the High People’s Court of Guangdong Province to facilitate the exchange and mutual learning by legal professionals in Hong Kong and Guangdong (the “Agreement”).

The Agreement

Hong Kong has been playing a vital role in the development of the Greater Bay Area. This Agreement takes it one step further by providing a platform for the Hong Kong legal sector to engage in meaningful exchange with its Guangdong counterpart, and to leverage opportunities in the Greater Bay Area.

Under the Agreement,  

  • Courts in Guangdong and legal bodies in Hong Kong will launch projects on legal aspects for mutual exchanges and collaboration for the enhancement of the legal development and safeguard in the Greater Bay Area; and
  • Mutual learning opportunities such as seminars will be held for judicial members and legal practitioners in both jurisdictions to forge a better understanding of each other’s legal system.

Implications

  • A communication mechanism between Guangdong and Hong Kong for the exchange of legal information encourages mutual undertaking on our respective legal system, which will be essential for the implementation of any future cross-boundary co-operation projects that must be underpinned by legislation and firmly rooted in the overarching principle of “One Country, Two Systems” enshrined in the Basic Law.
  • Given the growing economic and trading activities between Hong Kong and mainland China, mutual understanding of each other’s legal principles will help advocates in the Greater Bay Area better grasp the legal issues, expediting the process of dispute resolution.

Conclusion

The Agreement, when viewed in conjunction with the Legislative Council paper “Opportunities for Hong Kong’s Legal and Dispute Resolution Services in the Greater Bay Area” issued in March 2019, can be acknowledged as an attempt to speed up the legal cooperation in the Greater Bay Area that is commensurate with the development of an open economy.   

If you have any questions on the above or on any corporate and commercial law issues, please contact one of the members of the Corporate and Commercial Law team.

Effects on use of a trademark as OEM in China

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With the rapid opening policy development of China, which has attracted more and more international brand owners to manufacture their products in China, called Original Equipment Manufacturer (“OEM”), the opinions on whether use of a trademark as OEM constitutes trademark infringement or whether it is sufficient to defend a non-use cancellation have been gradually developed, i.e. from infringing to not infringing in infringement proceedings, and from being valid to being invalid in non-use cancellation proceedings.

Use of a Trademark as OEM in Infringement Proceedings

It has been arguable that whether using a trademark as OEM and the OEM manufactured goods bearing the trademark without selling/circulation in the marketplace in China would constitute trademark infringement in China. Further, there is no specific law and rules regarding to this issue.

However, we can find some practical guidance by taking reference to some precedents, in particular the landmark PRETUL case (the Supreme People’s Court – No. 2014 – 38). The Supreme People’s Court (“SPC”) re-tried the case, and ruled that use of the PRETUL trademark as OEM does not constitute trademark infringement, on the grounds that the act of physically affixing the trademark to the manufactured goods is not deemed as the valid use of a trademark because such act does not function as an identifier distinguishing the source of goods in accordance with the PRC Trademark Law.

“Article 48 For the purpose of this Law, the use of trademarks shall refer to the use of trademarks on goods, the packaging or containers of goods and the transaction documents of goods, as well as the use of trademarks for advertising, exhibition and other commercial activities for the purpose of identifying the sources of goods.”

In addition, in the PRIME GUARD case (Ningbo Intermediate People’s Court – No. 2017- 02 – 4182), Ningbo Intermediate People’s Court also ruled that use of the trademark as OEM does not constitute trademark infringement, in which the main reasoning follows the landmark PRETUL case as above-mentioned.  

Moreover, in one of our client’s cases, our client’s OEM manufacturer was sued for trademark infringement by a local company who registered a trademark similar to our client’s trademark in respect of same/similar goods in China, we have submitted the following evidence including but not limited to Ningbo Beilun District Court in the first instance in support of our case:

  1. Registration Certificate of the trademark (“Local Reg.”) on the detained goods in the country where the Exported Goods were shipped to;
  2. OEM/Commissioned Manufacturing Contract entered between the manufacturer and the trademark owner of the Local Reg.; and
  3. Other evidence shows the Local Reg. has the legitimated trademark rights of the client’s trademark on the Manufactured/Exported Goods, and the Exported Goods are solely sold directly to the owner of Local Reg, but not in China etc.

We received a Judgment that is in favor of our client’s OEM from Ningbo Beilun District Court, ruling that their manufacturer use of the client’s trademark is an OEM act, and such act does not constitute infringement to the Plaintiff’s trademark rights.

The plaintiff further appealed before Ningbo Intermediate People’s Court. In the second instance, apart from the evidence 1-3 above, we supplemented evidence to enhance that the manufacturer use of the client’s mark is an OEM act and the client, who registered the Local Reg., has the trademark rights on the Exported Goods. Besides, we cited the two precedents i.e. the PRETUL case and the PRIME GUARD case in support our client’s OEM’s case.

We have just received the Appeal Decision that is in favor of our client’s OEM, in which Ningbo Intermediate People’s Court ruled that the plaintiff’s appeal is without merits and the facts affirmed in the first instance are certain and the laws applied are correct. Hence, Ninbo Intermediate People’s Court ruled that:

  • the Plaintiff’s Appeal be dismissed;
  • the Decision made in the first instance be maintained.          

Comment

In brief, to assess the infringement, the Courts primarily take into consideration the following facts:

  • Whether the manufacturer has ever been legally authorized to manufacture the products;
  • Whether the manufacturer has fulfilled duty of reasonable care;
  • Whether the use of the mark by the manufacturer confuses the customers as to the trade origin of the products;
  • Whether the manufacturer has intention of infringing the Plaintiff’s trademark rights.

Based on the current practice and the precedents, including but not limited the aforesaid cased, it is very likely that the Chinese court will rule that use of trademarks as OEM does not constitute trademark infringement if the manufactured goods are solely exported to the country of origin of the Local Reg. and the goods are not sold/circulated in China market.

OEM Use to defend Non-use Cancellation Proceedings

The issue that whether the use of a registered trademark as OEM is adequate to defend a non-use cancellation is disputed in China. Further, there is no relevant law set down to solve this issue.

In practice, some earlier precedents show that a registered trademark used on manufactured goods could be considered as valid use, so that it could defend a non-use cancellation. Whereas, some recent precedents shows such use was deemed as invalid, resulting from which the registration of the trademark will be canceled and removed from the register.

Use of a registered trademark as OEM is valid

In the SCALEXTRIC appeal case (Beijing High People’s Court – No. 2010 – 265), Beijing First Intermediate People’s Court ruled that the TRAB’s decision (No. 4077) be maintained and the registration of SCALEXTRIC be removed from the register on the grounds that the manufacturer use of the trademark as OEM does not comply with the use requirement of trademarks under the PRC Trademark Law. However, in the second instance, Beijing High People’s Court overturned the Decision made in the first instance by taking into full consideration of the user evidence of the OEM submitted and ruled that:

  • Beijing First Intermediate Court’s Decision (No. 2009 – 01840) be withdrawn;
  • The TRAB’s decision (No. 4077) be withdrawn;
  • The Trademark Office re-visit the non-use cancellation on registration of SCALEXTRIC (Reg. No.731233); and
  • The TRAB bears the entire official fees charged for both the first instance and the second instance.

In this case, Beijing High People’s Court ruled that the manufacturer use of the trademark as OEM is valid, and thus maintained the registration on the register

One interesting point to note is that the Beijing High People’s Court also ruled that: if use of a trademark as OEM is regarded invalid, this will be as the grounds for third parties to challenge the trademark via non-use cancellation. If so, this may result in the legitimate trademark being cancelled and removed from the register, which may prejudice to the registrant/right brand holder’s rights.

Use of a registered trademark as OEM is invalid

Nevertheless, on the contrary, in a latest case, i.e. the MANGO case (Beijing High People’s Court – No. 2016 – 5003), Beijing High People’s Court re-affirmed that use of the trademark “MANGO” as OEM is invalid under the PRC Trademarks on the grounds as follows:

  • Use of the trademark “MANGO” as OEM does not function as an identifier distinguishing the source of goods in the marketplace;
  • All the evidence submitted in both first instance and second instance is not adequate to prove the manufacturer use of the trademark, which complies with the requirement of the actual commercial use of a trademark in market circulation; and
  • Beijing First Middle Court’s Decision (No. 2015 -1249) cancelling/removing registration of the trademark “MANGO” from the register is not without merits.

Hence, Beijing High Court ruled to maintain the Decision (No. 2015 -1249) cancelling/removing registration of the trademark “MANGO” from the register.

Comment

It has been arguable that only manufacturing is sufficient to defend a non-use cancellation. However, according the MANGO case as above-mentioned, to effectively defend a non-use cancellation, we opine sales of the goods bearing the registered trademark in China market is advisable. Otherwise, only use of a trademark as OEM is unlikely to be prevailed in non-use cancellation proceedings, if the registration is challenged by a third party. Therefore, if there is no sales evidence in China, the registrant may consider re-registering the mark in every 3-year interval. 

One meaningful and key point to note is that Beijing High Court cited the landmark PRETUL case in support of the reasoning of the MANGO case, addressing that though the applicable articles of the PRC Trademark Law for these two cases are different, the nature of the legal concepts stipulated under the same law shall be treated and applied in the same way; otherwise contradictions/conflicts will be inevitably caused. This is because in the same way, use of a trademark is deemed as invalid in trademark infringement proceedings as ruled by the SPC in the PRETUL case. Thus, under the same concept of use of trademark and use of a trademark as OEM, the use of the trademark as OEM in the PRETUL case is invalid so does it in the MANGO non-use cancellation proceedings.

Although China adopts case-by-case principle and the Courts change practice time to time, we believe that the trend of citing precedents in support of similar cases is gradually increased, which is playing a significant role, in particulars, those ruled by the SPC.

We will continue observing the development of the impacts on the use of a trademark as OEM in China. Lastly, to obviate the risk of trademark infringement and protect your trademark rights in China, it is always advisable to seek professional advice/assistance before starting OEM.  

Emigration from Hong Kong: The Importance of Pre-Migration Tax Planning (4)

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Ice hockey, maple syrup, reindeers and the Northern Lights – One country has got them all. What may now resonate in your mind could well be a country in North America. That’s Right. To conclude our article series on pre-emigration tax planning, this fourth and final piece aims at the second largest country in the world by land area and the top emigration destination by Hong Kong people, Canada. What makes such frosty country as Canada where some regions may have snowy winters lasting for as long as 7 months in a year so attractive for migration? We say, on a comparative basis, Canada has a very welcoming immigration-inclined policy (to be discussed hereinbelow) as marked by the nation’s slogan “diversity is our strength”. This favourable policy and racial diversity are further evidenced by numbers. According to Canada’s official census in 2016, 21.9% of the Canadian population were or had been a landed immigrant or permanent resident in Canada. Statistics also show that in terms of Canada’s demographics, only 32.3% of Canadians consider their ethnic origin to be Canadian, whilst other major ethnic groups are English (18.3%), Scottish (13.9%), French (13.6%), Irish (13.4%), German (9.6%) and Chinese (5.1%). Such large immigrant population are without a doubt attributable to the “perks” of living in Canada, including its universal healthcare system, low crime rates, top-standard education, cultural openness, international food scene, a thriving tech start-up space and the list goes on. All these lend support to Canada being named by the US News and World Report top in the world for having the best quality of life. This article, in line with the previous ones in the series which can be found in the “News & Articles” section on OLN’s website, examines the immigration requirements on the target country, and in this case, Canada, and what can be done pre-arrival in terms of tax structuring to maximise tax benefits.

How to Become Canadian Citizenship

To apply for Canadian citizenship, one must have a permanent resident (PR) status in Canada. There are five main immigration program categories which provide the pathway to obtain the PR status. They include the Express Entry Category, Business Immigration, Family Class Immigration, Canadian Experience Class and Provincial Nominee Programs (PNGs). Each class caters to the qualification and needs of a certain class of immigrants. By way of example, a person may select the Express Entry Category if he is a skilled worker who is in demand by the local labour market, or Family Class Sponsorship if the person would like to migrate to Canada to live with his/her spouse for family reunification, or PNG for most cases if the person has received a job offer from a Canadian employer and is willing to live in a specified province, or Business Immigration if the person would like to establish an eligible new business or purchase and improve on a new business and invest and having a certain amount of net worth (for British Columbia, under the Entrepreneur Immigration stream, the applicant has to invest a minimum of CAD200,000 in the business, having a net worth of a minimum of CAD600,000 and satisfying other requirements). Apart from the above, student visas are also available as a method of immigration. The students holding such visas arrive in Canada on a temporary basis during their studies. Upon completion of that, they are typically entitled to apply for a permanent visa if they have acquired employment or are in a desired profession. As a PR, the person and his dependants will have the right to receive most social benefits Canadian citizens are entitled to receive, including health care coverage and the right to live, work or study anywhere in Canada etc. To apply for Canadian citizenship after obtaining the PR status, the permanent resident has to have lived and filed tax returns in Canada for at least three years during the five years before the date of application for Canadian citizenship, paid any income tax owed and provide proof of language proficiency in either English or French (Canada’s official language).

Effect of Bilateral Double Taxation Treaty between Hong Kong and Canada on Income Tax

Like the United Kingdom, Canada has a bilateral agreement with Hong Kong to prevent double taxation on residents of one or both jurisdictions (the “DTA”). Therefore, although Canada taxes its residents on their worldwide income, the presence of the DTA essentially means that a person with dual residency in both Canada and Hong Kong for income tax purposes may be exempted to pay tax to one of the governments under certain circumstances. Under the DTA, for instance, a resident of Canada or Hong Kong will only be subject to taxation in the other place on profits from a business carried on in such place to the extent such business profits are attributable to a permanent establishment in the other place. Further, for withholding tax on dividends, that will generally be limited to the maximum of 15%. As regards tax benefits to businesses, Canadian resident companies with Hong Kong subsidiaries may repatriate net active business earnings of a Hong Kong subsidiary without additional Canadian taxes.

Pre-migration Tax Planning

It is worth noting that Canada has relatively aggressive tax avoidance rules. Canada’s Excise Tax Act for example contains a general anti-avoidance rule (GAAR). Section 274(2) of the Act states that “the tax consequences will be determined as is reasonable in the circumstances in order to deny a tax benefit that, but for this section, would result, directly or indirectly, from that transaction or from a series of transactions that include that transaction”. To exacerbate matters, even if one technically complies with the Act, if it is not in the “spirit” of the legislation, the structure would still have to pay tax. Tax avoidance is made all more difficult in view of the fact that penalties and interests have been increased, limitation periods extended, advance rulings eliminated and time to resolve tax issues is much longer than before. As such, room for tax structuring is limited. Having said that, it is precisely for this reason a more cautiously and carefully planned tax framework should be implemented to avoid tax pitfalls and to fully take advantage of what is left in terms of Canadian tax benefits.

Trust

Foreign trusts, generally known as “Granny Trusts”, are common tools to defer and mitigate Canadian taxes. To qualify as an offshore Granny trust, there cannot be any Canadian resident contributor, or Canadian beneficiary and a contributor who is (i) a Canadian resident at the time, or (ii) has been a Canadian resident in the past five years, or (iii) will become a Canadian resident in the five years following the contribution, failing which, the trust will be deemed to be a resident of Canada and will be taxable in Canada on its worldwide income. Tax therefore can be avoided even if there is a Canadian beneficiary provided that there was and is no Canadian resident contributor. So, if a Hong Kong family relative contributes money to the trust and the trust later distributes income to Canadian relative, tax can be avoided.

Will

For Canadian estate tax, a Canadian will probating foreign assets would incur estate tax. As a result, prior to arrival to Canada, a Hong Kong will should be prepared to ensure no tax is payable to either government, as there is no estate tax in Hong Kong.

Pension

Under the DTA, pension paid to a resident of another place may only be taxed in the place in which they arise. Therefore income from Hong Kong pension plans is not taxed by the Canadian Government.

Capital Gains Tax

As to foreign properties and assets, individuals who become residents of Canada will only be liable to pay capital gains tax accrued after their arrival in Canada. Immediately before the person becomes a resident of Canada, the person will be deemed to have disposed of the foreign properties and have reacquired it at the fair market value. As such, the migrant will pay tax in Canada upon the actual disposition of his/ her house only on the gain earned after you became a resident of Canada. In this regard, it is best to adjust the value of the person’s foreign property on a “step up” or mark to market basis to minimise Canadian capital gains tax payable later.

Passive income

In terms of gift tax, no gift tax is payable in Canada if the transaction is carried out in an arm’s length. If it is not, tax is payable at fair market value. As such, any gifts should be properly considered and documented in advance.

Conclusion

In closing, despite the aggressive anti-tax avoidance policy of Canada, there is still room to maximise tax benefits for Hong Kong residents preparing to migrate to Canada. Before migration, therefore, the Hong Kong resident is advised to establish a carefully-planned sound tax framework to maximize Canadian tax efficiency.

OLN provides a range of tax advisory services in the migration context. If you have any questions on the above, please contact one of the members of our Tax Advisory Team.

Disclaimer: This article is for reference only. Nothing herein shall be construed as Canadian or Hong Kong legal advice or any legal advice for that matter to any person. Oldham, Li & Nie shall not be held liable for any loss and/or damage incurred by any person acting as a result of the materials contained in this article.

Singapore Convention on Mediation: The “missing third piece”?

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Introduction

It is increasingly common for parties in dispute to seek to resolve issues via alternative dispute resolution (ADR) to avoid costly litigation and being involved in an adversarial situation which is often detrimental to the ongoing business relationship of the parties.  One common form of ADR is mediation and in this regard, The United Nations Convention on International Settlement Agreements Resulting from Mediation, or as commonly known, the Singapore Convention on Mediation (the “Convention”), was ratified on the 7th August this year by 46 signatory states (including the United States, China and Singapore) to establish a framework for enforcement of international settlement agreements through international cooperation at the state level between the signatory countries.  This is particularly significant for international trade as disputes often involve different countries. 

According to the words of the Prime Minister of Singapore Mr Lee Hsien Loong at the signing ceremony, the Convention represents the “Missing Third Piece” in the ADR enforcement framework in the international arena for cross-border disputes where currently many businesses either relied on arbitration, enforced via the New York Convention, or on litigation.

This article explores the substance of the Convention and the potential value it may bring to parties in cross-border disputes hoping to settle by mediation.

The advantage of the Convention

On a high level, the advantage of the Convention is to allow direct enforcement of cross-border settlement agreements achieved from mediations in the signatory jurisdictions.  Prior to the Convention, a party to a litigation could only start the enforcement process (which normally would involve further court applications) in the foreign jurisdiction after judgment was obtained.  Similarly, for arbitration, the winning party would need to first obtain an arbitral award before it could be enforced in the foreign jurisdiction.  These were often time-consuming and costly processes.  The Convention provides for the mechanism whereby the parties can now enforce settlement terms in a much quicker way and bypass these burdensome and expensive routes.

The Requirements

To achieve the aforesaid benefits, it is important to note the requirements for an effective mediation settlement agreement recognised and enforceable under the Convention.  The main requirements as stated in Article 1 of the Convention are as follows:-

  1. the mediation settlement agreement must be in writing; and
  2. at least two parties to the settlement agreement must have their places of business in different States, or alternatively, the State in which the parties to the settlement agreement have their places of business should be different from the State in which a substantial part of the obligations under the settlement agreement is performed or the State with which the subject matter of the settlement agreement is most closely connected. 

Article 1 of the Convention, however, also restricts the ambit of the Convention.  It states that the Convention does not apply to settlement agreements:-

  1. where the transaction being the subject matter of the dispute is for personal, family or household purposes;
  2. where the subject of dispute relates to family, inheritance, or employment law;
  3. that have been approved by a court or concluded in the course of court proceedings and are enforceable as a judgment in the State of that court;
  4. that have been recorded and are enforceable as an arbitral award.

The value of the Convention

Although the Convention will only come into effect 6 months after 3 States have acceded or ratified the Convention, the potential value the Convention may bring to commercial parties in dispute, as mentioned hereinabove, is evident and cannot be understated.

There is no doubt that the Convention represents an important milestone in that it opens up a new path for international cooperation in the cross-border mediation context with the view of providing parties a cost-effective and direct way to settle disputes.

Parties are now afforded a new choice in considering how to move the matter forward when they encounter legal disputes in conducting their business.  For these reasons, the Convention is certainly a welcoming one.  In this regard, individuals and businesses who regularly enter into cross-border transactions should pay close attention to the continuing development of the Convention to gain maximum benefits from it.

OLN provides a wide range of dispute resolution services including arbitration services. If you have any questions on the above, please contact Selwyn Chan, Partner and Notary Public at selwyn.chan@oln-law.com. 
 
For more information about Selwyn Chan, Partner of Oldham, Li & Nie, please visit the following link: https://oln-law.com/selwyn-chan.  
 
Disclaimer:  This article is for reference only.  Nothing herein shall be construed as legal advice.  Oldham Li & Nie shall not be held liable for any loss and/or damage incurred by any person acting as a result of the materials contained in this article.