IPR Climate in Hong Kong and Macau: The best protection for an American company is to make sure that its products are available in the local market in authentic form. Local agents, dealers and partners also have a strong incentive to stop any piracy or counterfeiting and, with good local connections, have a better chance of making that happen than an American company that is not actively participating in the market. In Hong Kong, the chief law enforcement agency for IPR is the Hong Kong Customs and Excise Department, which works closely with affected industries and conducts vigorous anti-piracy and anti-counterfeiting operations. However, protecting copyrights or trademarks takes vigilance. For more information, see Investment Climate Statement - Protection of Property Rights.
Protecting Your Intellectual Property
Several general principles are important for effective management of intellectual property (“IP”) rights in both Hong Kong and Macau. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Hong Kong and Macau than in the United States. Third, rights must be registered and enforced in Hong Kong and Macau, under local laws. There is no such thing as an “international copyright”. For example, a U.S. trademark and patent registration will not provide protection in Hong Kong and Macau. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works in accordance with international agreements.
The granting of patent registrations is generally based on a first-to-file (or first-to-invent, depending on the country) basis. Similarly, registering trademarks is based on a first-to-file (or first-to-use, depending on the country) basis, so you should consider how to obtain patent and trademark protection before introducing your products or services to the Hong Kong and Macau market. It is vital that companies understand that intellectual property is primarily a private right, and that the U.S. government cannot enforce rights for private individuals in Hong Kong and Macau. It is the responsibility of the rights’ holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Hong Kong and Macau law. A list of legal services providers in Hong and Macau is available on the U.S. Consulate General Hong Kong & Macau website.
While the U.S. Government stands ready to assist, there is little we can do if the rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. Government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government advice be seen as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentives) of would-be bad actors. Projects and sales in Hong Kong and Macau require constant attention. Work with legal counsel familiar with Hong Kong and Macau laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that small- and medium-sized companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations based in Hong Kong, Macau, and the United States. These include:
- The U.S. Chamber and local American Chambers of Commerce
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- The Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Innovation Organization (BIO)
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues — including enforcement issues in the U.S. and other countries — call the STOP! Hotline: 1-866-999-HALT or visit STOPfakes.gov .
- For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199, or visit USPTO.
- For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-3000, or visit Copyright.gov.
The U.S. Department of Commerce has IP Attachés in key markets around the world. You can get a list of the IP attachés and their detailed contact information at USPTO. Below is a list of the IP Attachés based in China: