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OLN ranked among Asialaw’s Leading Lawyers 2021

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Asialaw has announced their Leading Lawyers 2021 and we are pleased to announce that OLN has been ranked once again.

Congratulations to the following Partners for being ranked!

  • Gordon Oldham – Senior Statesman (Dispute Resolution)
  • Richard Healy – Distinguished Practitioner (Dispute Resolution)
  • Vera Sung – Distinguished Practitioner (Intellectual property)
  • Tracy Yip – Distinguished Practitioner (Corporate and M&A)
  • Anna Chan – Notable Practitioner (Dispute Resolution)

About Asialaw Leading Lawyers

Asialaw Leading Lawyers identifies outstanding private practice legal professionals – divided into market-leading, leading and rising stars in the same 18 practice areas and 24 jurisdictions listed above. Asialaw consults buyers of legal services, as well as lawyers in private practice who have deep knowledge of the markets. Please see here for more details about Asialaw Leading Lawyers.

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Holiday Notice from Intellectual Property Team

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Holiday Notice

Due to the public holidays in China and Hong Kong, our office and the respective intellectual property offices have the following schedule

OfficeCloseOpen 
China1 October 2020 to 8 October 2020  9 October 2020
Hong Kong  1 October 2020 to 4 October 20205 October 2020

Please note that Sunday, 27 September 2020 and Saturday, 10 October 2020 are working days in China, and deadlines on trademarks that due on 27 September 2020 and 10 October 2020 cannot be postponed.

For urgent matter, please send by email to ip@oln-law.com, or sms to (852) 6028 2100. Thank you.

Purchase of a property in France by Hong Kong resident: key elements to be taken into consideration

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When it comes to buying a property in France for a French national residing abroad, some difficulties in carrying out the process may arise. These may in particular be related to the (1) the financing of this project and (2) its signature by means of a power of attorney.

1.    Legal opinion:

Getting a loan from a bank located in France can sometimes be more delicate if the borrower is not a French resident. Indeed, some banks can be quite cautious and reluctant as they will find it more difficult to check the borrower’s financial situation and background information.

It is noted that lending criteria can vary tremendously from one bank to another. Nevertheless, generally speaking, before lending money banks will carefully take into consideration the following elements with regards to the borrower:

•    The level of income and indebtedness;
•    The amount of the personal contribution;
•    The professional situation;
•    Place of residence; and
•    The guarantee.

In addition to these elements, in the context of an application for a loan made in some foreign countries such as Hong Kong or Dubai, some banks will require from the borrower to provide a “Legal Opinion” signed by a qualified lawyer in the country of residence of the borrower. 

This legal opinion confirming information regarding the situation of the borrower (personal status, capacity to enter into a loan agreement, no indebtment…) will be a condition precedent to making this loan to the borrower.

A template of Legal Opinion is generally provided by French banks.

One can expect that the local lawyer will only have to sign the template for minimal fee. However, the local lawyer drafting the legal opinion will be responsible for each statement contained in this document and it is therefore critical for him/her to check that they are all correct (knowing that most of the supporting documents will be in another language). His/her work will also consist in amending the template sent by banks and ensure it complies with the Hong Kong law requirements. Therefore, this kind of file is time consuming and one should expect a local lawyer to spend at least a few hours working on it.

In addition, even though the Legal Opinion is drafted and signed by a Hong Kong lawyer, it requires the assistance of lawyers qualified in French law for the verification and analysis of all the documents provided by the borrower as well as the explanation of the rules of French law.

Seeking the assistance of a firm which includes both local and French lawyers who are familiar with this type of document and transaction is essential. Endless back and forth exchanges with the banks and some potential misunderstandings on the content of the Legal Opinion may indeed delay the release of funds.

2.    Power of attorney:

In France, a Notaire is a public official responsible for receiving all the “actes” and contracts to which the parties wish to confer the seal of authenticity, to assure their date, to hold them in trust and to deliver authentic copies of them. The Notaire has the monopoly in matters relating to purchases, sales, exchanges, co-ownerships, land plots, leases, mortgages etc.

Given the international pandemic, many buyers find it difficult to travel to France to sign in person the deed of sale at the Notaire’s office. Therefore, they usually sign over a power of attorney and send it to the Notaire in charge of the transaction.

a.    Private form/public form

There are two types of powers of attorney for France: those in private form (“acte sous seing privé”) and those in public form (“acte authentique”). 

The difference lies in the fact that a power of attorney in private form is established directly between the parties whereas a power of attorney in public form is received before a French Notaire. 

The nature of the document needed generally depends on the transaction undertaken.

Authentic powers of attorney are those made for the regularization of solemn deeds as in the case of a donation. Also in the context of the purchase of a property off-plan, French law provides that the power of attorney must be in public form. 

Regardless of the form of the power of attorney and even though a power of attorney in private form is more straightforward as it requires less formalism, the drafting will require the assistance of a local lawyer/Notaire to ensure the validity of the document.

Besides, the signature of a power of attorney in private form will have to be certified by the French consulate or a Notaire who can attest that it is indeed the person who signed the document.

b.    The specific case of Off-plan purchase (“Vente en l’état futur d’achèvement”)

France is one of the most secure countries in the world when it comes to buying off-plan property (VEFA) as buyers’ interests and money are protected by a number of clauses along the way.

As stated above, a power of attorney in public form is required for this type of transaction which means the document may need to be authenticated and signed before a Notaire in order to be valid and enforceable under French law.

It used to be possible to sign such power of attorney before French consulate and diplomatic services officials as an alternative to a French Notaire. However, since 1 January 2019, French consulate or embassy do no longer provide such notarial services.

This major change complicates somewhat the process as it may turn out to be an impossible mission to find a French qualified Notaire allowed to practice overseas.

Based on our recent experiences, it appears that some Notaires in France may be reluctant in accepting a power of attorney in public form executed before a Hong Kong qualified public notary but the rule does not seem absolute. Some Notaires may accept a power of attorney executed in these conditions. In any event, individuals who are facing this situation have to make sure with their Notaire beforehand this solution is feasible before considering it. 

Disclaimer: This article is for reference only. Nothing herein shall be construed as 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. 

China – Update Statistics & Procedurals of Trademark Administrative Litigation

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With the high-speed development and improvement of China’s economic and judiciary practice, both Chinese substantive law and procedural law have been broadly developed in recent 20 years, particularly in respect of administrative litigation proceedings. 

LATEST STATISTICS

According to the latest monthly report issued by China Intellectual Property Administration (“CNIPA”) on trademark review cases (No. 2020.07), during the period of 16 June – 15 July 2020, the number and rate of administrative litigation got a rise. The detailed statistics are as follows:

Trademark Cases in relation to administration litigation

Court Level

Year over year rate

Month over month rate

1,894

The First Instance

Increase by 10.24%

Increase by 9.67%;

 

467

The Second Instance

Decrease by 28.37%

Increase by 40.66%;

20

Retrial, The People’s Supreme Court (“PSC”),

Decrease by 72.60%

Decrease by 67.74%.

The CNIPA also released total number and rate of administration litigation cases between the period of January – July 2020, namely:

Trademark Cases in relation to administration litigation

Court Level

Year over year rate

7,238

The First Instance

Decrease by 10.75%

2,990

The Second Instance

Decrease by 10.29%;

404

Retrial, The People’s Supreme Court (“PSC”),

Increase by 15.10%.

PROCEDURALS

If CNIPA maintains our application for review of refusal/non-use cancellation/invalidation unfavorable to our clients in the administrative examination proceedings, how can we seek judiciary remedy further? 

An appeal against such unfavorable decisions before the Beijing Intellectual Property Court (“Court”), i.e. an administrative lawsuit, can be lodged at a prescribed time.

THE FIRST INSTANCE

If an(a) applicant/registrant/opponent/petitioner is not satisfied with CNIPA’s decision on application/cancellation/opposition/revocation of the mark in connection with their rights, they are allowed to initiate an administrative lawsuit against CNIPA’s decision within 30 days (for foreign individual/companies/entities), and which is calculated from date receipt of the decision (or 15 days for domestic applicant) before the Beijing Intellectual Property Court (“Court”).

After initiating the appeal by the afore-mentioned deadline, the Court will grant the plaintiff (foreign individual/companies/entities) 3 months’ time to supplement notarized and legalized Power of Attorney (“PoA”) and personal identity/company documents to the Court as follows:

1.    PoA – signed by the representative of the company;

2.    Certificate of Legal Representative –signed by the said representative;

3.    Articles of Incorporation or Certificate of Incorporation of the plaintiff, showing the said representative has the authority to sign legal documents on behalf of the plaintiff; and

4.    Personal ID/passport (individual)/Certificate of Good Standing (company/entity) of plaintiff, indicating the current status of the plaintiff i.e. the company is subsisting on the register and active; the company is not subject to dissolution; and the company has not been liquidated, bankrupt, under custody or revoked. 

In general, the local Registrar of Companies (Companies House/Registry), who has issued a “Certificate of Incorporation of the company”, can issue document 4 above.

If all these notarized and legalized documents are in order, the Court will issue a notice of acceptance and set down a hearing for the case in around 1.5 months’ time, and make a decision in 2 – 3 months’ time.

Points to note:

  • It is advisable to send us copies of documents 3 and 4 above by email first, so we can ascertain whether they are in order before notarizing and legalizing by the Chinese Consulate to save time and cost. 
  • For Hong Kong companies/individuals, the said documents need to be notarized by a Hong Kong Lawyer who is appointed by the Ministry of Justice of China, i.e. China-Appointed Attesting Officer, and legalized and stamped by China Legal Services (Hong Kong) Co., Ltd. with their special seal for Hong Kong notarization.
  • In view of the Court may change their practices from time to time, and it needs time to arrange for official translation by the designated translation agent to prepare Chinese translation as requested by the Court, if any, it is advisable to have the notarized and legalized documents in hand preferably a month prior to the deadline, so we can confirm with the Court and therefore work with the translation agent.

THE SECOND INSTANCE

If any party is dissatisfied with the decision made in the First Instance, the party can appeal to the Beijing High Court (“High Court”) within 30 days (for foreign individual/companies/entities), which is calculated from date receipt of the decision (or 15 days for domestic applicant) from the CNIPA. 

There is no requirement of any further notarized and legalized documents from the plaintiff/applicant to appeal to the Hight Court. 

The High Court usually conducts paper examination under the appeal, grounds and evidence submitted by the parties, and seldom sets down a hearing unless it is necessary.

It takes the High Court 3-6 months’ time to issue an appeal decision. Once the appeal decision is issued, it becomes final.  

RETRIAL 

As you may note, retrial proceedings are exceptional to the two instance of court proceedings. General speaking, the chance of success in retrial proceedings before the Supreme People’s Court (“SPC”) is not optimistic. In addition, the SPC will even dismiss a retrial request directly.

Nevertheless, if there are obvious mistakes either in substantive rights or procedural rights that affected the decision issued in the Second Instance, requesting the SPC to retry the case is a remedy for the judge to correct the mistakes in the retrial proceedings.

From the second table above, there were 404 retrial cases between January – July 2020, which indicates the year over year increase by 15.10%. This is a significant number that shows a chance of success in overturning a final decision by way of retrial. In fact, the SPC did overturn many cases e.g. the landmark PRETUL case (the Supreme People’s Court – No. 2014 – 38). The SPC re-tried the case, and overturned the final decision. 

Moreover, could precedents be applied when ruling a case in the said Court proceedings above?

Although case law is not binding in China, based on the current practices, the judge tends to take into account of a precedent when ruling the case, if the plaintiff/defendant cites the precedent. This means precedents would facilitate to overturn the case in the Court proceedings above, which requests the Court to adopt the same reasoning.

This tendency has been indeed improved and ascertained by the SPC in its ‘Guidance on the Application of Law to Strengthen Research of Similar cases (Trial)’ coming into effect since 31 July 2020 (“Guidance”). For more details of the Guidance, please see the SPC’s official publication in Chinese at http://www.court.gov.cn/fabu-xiangqing-243981.html.

Thanks for reading and we will keep you updated of further interesting/meaningful development of PRC administrative lawsuits. 

Should you have any inquires pertaining to trademark right and protection in China, please contact evelyne.yeung@oln-law.com or angel.luo@oln-law.com, and we will be pleased to answer and assist.

Disclaimer: This article is for reference only. Nothing herein shall be construed as 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.

Dealing with Vexatious Litigants in Civil and Administrative Proceedings

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A ‘vexatious litigant’ is someone who persistently pursues legal actions but does not have sufficient grounds for doing so, and usually exhibit the following hallmarks: 

  • Subjecting the defendant to inconvenience, harassment, expense out of all proportion to any likely gain (Attorney General v Barker [2001] WL 191122 (English Queen’s Bench)).
  • Repeating the same cause of action against the same party perhaps with minor variations (Barker, supra).
  • Automatically appeals or challenges every decision (Barker, supra).
  • Fails to take notice of or give effect to court orders (Barker, supra).
  • Non-compliance with procedure, e.g. last minute presentation of evidence, delay/non-compliance with deadlines, not following court orders, defective service or complete failure to serve, complaining that the other litigants should not be served or had not been served.
  • When present at a hearing, some vexatious litigants are unable to conduct themselves with decorum and may hurl abuse at the opposite parties and/or the judge (Ng Yat Chi v Max Share Ltd and Another [2005] 1 HKLRD 473 (CFA)).
  • Will almost invariably be unrepresented or refused legal aid based on the merits tests (Ng Yat Chi, supra)
  • Deceitful conduct (Yuen Oi Yee Lisa v Charoen Sirivadhanabhakdi & Ors [2015] HKDC 1336)
  • Appeals, using parallel appeal routes, and multiple proceedings, including to complain to administrative bodies, commencing new action for damages in District Court or High Court and seeking appeals to the Court of Appeal and Court of Final Appeal. (X v MM and Anor [2018] HKDC 215).

The vexatious litigant will try to apply for legal aid, but even if the vexatious litigant satisfies the means test, he/she may have trouble passing the merits test.  

Below are a few tools available to victims of vexatious litigation

 1.    Injunctions

An injunction is an order of Court that requires a party to refrain from doing a specified act (prohibitory injunction) or to do a specific act within a specified period (mandatory injunction). 

Examples of prohibitive conduct in the context of vexatious litigation:

  • Disclosing confidential/personal information to unrelated third parties (except for obtaining legal advice).
  • Harassing the innocent party (e.g. by sending letters/emails/telephone calls).
  • Making/publishing defamatory statements against the innocent party.

Examples of mandated conduct in the context of vexatious litigation:

  • Disclosing the list of parties to whom information now protected by an injunction has been disclosed.

2.    Strike out/strike out based on res judicata

The Court may on its own motion or on application, and at any stage of the proceedings, order a pleading to be struck out or amended on the basis that it: 

(a) Discloses no reasonable cause of action or defence, as the case may be; or 
(b) Is scandalous, frivolous or vexatious; or 
(c) It may prejudice, embarrass or delay the fair trial of the action; or 
(d) It is otherwise an abuse of the process of the court.

Strike out based on res judicata is often used to bring the vexatious claim to an end on the basis that after a matter has become the subject of adjudication, the Court will not (except under special circumstances) permit the parties to later reopen the same matter.

3.    Restricted Application Orders/Restricted Proceedings Orders/s. 27 High Court Ordinance (Cap. 4) orders

Practice Direction 11.3 establishes two orders that the Court can make to stop vexatious litigants with respect to their future conduct: Restricted Application Orders (“RAO”) which restrict vexatious litigants from pursuing current proceedings and Restricted Proceedings Orders (“RPO”) which restrict vexatious litigants from pursuing defined multiple proceedings that have already been commenced.  

A s. 27 High Court Ordinance (Cap. 4) order is the most draconian and restricts the vexatious litigant from pursing any future proceedings unless the Court’s leave has been obtained. 

4.    Default judgment

As vexatious litigants are often non-compliant with procedure, including with deadlines, obtaining default judgment under Order 13 Rules of High Court (Cap. 4A) (“RHC”) can be a quick way to dispose of the proceedings or to obtain the desired relief.

5.    Unless orders

If directly applying for striking out/summary judgment is not desirable, the innocent party may choose to rely on obtaining unless orders, and by utilising the vexatious litigant’s failure to comply with Court directions, proceed to strike out the action or obtain final judgement.

6.    Summary judgment

In the context of vexatious litigants, summary judgment under Order 14 RHC provides the quickest way to obtain certain orders such as a permanent injunction, assuming that neither striking out nor default judgment applied/was successful.

7.    Committal Orders

Under Order 52 RHC, the Courts have a general power to make an order for committal based on contempt of court (e.g. on breach of injunction or breach of an order of court). This is especially useful if the vexatious litigant consistently fails to comply with Court orders and there is no other way to stop the vexatious litigant.

8.    Order to prohibit publication and Anonymity Order

The use of anonymity orders and publication bans protect the identity of the innocent party and minimizes the embarrassment/damage to the reputation of the innocent party. 

If you wish to learn more about how to deal with vexatious litigants, please feel free to speak to our litigation partner, Eunice Chiu.

Eunice Chiu
+852 2186 1885
Partner, Dispute Resolution
Oldham, Li & Nie

China – Trademark Electronic Application

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With the China Intellectual Property Administration (“CNIPA”)’s Announcement to “Regulations of Trademark Electronic Application (No. 323)” on 27 August 2019, taking effective from 1 September 2019, the majority of trademark matters now can be filed through CNIPA’s E-filling system, such as applications for trademark registrations, assignment, change of names/addresses, renewal of registration and deletion of goods/services, for more matters, please see the list below. The E-filling system is obviously more convenient and efficient, in particular, nowadays, distancing working is required/recommended during the outbreak of the COVID-2019 pandemic. 

E-filling of Trademark matters: 

1. Application for trademark registration; withdrawal of trademark application
2. Change of name/address of registrant/applicant
3. Change of regulations/authorized user of certification/collective marks; withdrawal of the change
4. Change of trademark agent/address for services; withdrawal of the change
5. Deletion of goods/services; withdrawal of the change
6. Recordal of assignment of application/registration; withdrawal of the recordal
7. Early termination of trademark license recordal
8. Removal of registered trademark; withdrawal of the removal
9. Recordal of trademark license; withdrawal of the recordal
10. Recordal of change of name of licenor/licenee; withdrawal of the recordal
11. Issuance of trademark registration certificate
12. Issuance of trademark registration certificate for international registration designating China
13. Correction of trademark application
14. Re-issuance of trademark registration certificate
15. Re-issuance of change of assignment renewal certificate
16. Change of agent (change of name/address of the agent)
17. Application for review of refusal

In addition, CNIPA offers applicants 10% discount of official fees if the application is filed via E-filling system. We set out the processes of the most popular use of applications for trademark registration i.e. E-filling Vs Paper filling as follows:

ProcessesE-fillingPaper filling
Application formOnline inputOriginal signed application form
Filling timeOnline submit before 8 pm on working daysSubmit in person before 4:30 pm on working days; ormail the application form by currier, but the filling date is the date when CNIPA confirms receipt
CorrespondingNotices of filling receipt, corrections (if any), refusal (if any), publication and registrationElectronically notificationsPaper notifications
Official costRM￥270/US$45 per applicationRM￥300/US$50 per application

The comparison above shows E-filling is not only more flexible, but also time/cost effective. 

We therefore will use e-filing unless we are instructed to do otherwise, or in some cases when E-filling is not applicable. For instance, the descriptions of goods are not in standard description. 

Should you have any trademark matters/questions pertaining to filling strategies and protection in China, please contact vera.sung@oln-law.com or angel.luo@oln-law.com and we will be pleased to answer and assist.

Disclaimer: This article is for reference only. Nothing herein shall be construed as 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.