Hong Kong Case Law: Decisions & Judgments

Topic

Novelty

Legal area

Court

28 Aug 2017

BABYZEN v. ZHONGSHAN YUYU BABY PRODUCTS CO LTD

Citation

BABYZEN v. ZHONGSHAN YUYU BABY PRODUCTS CO LTD
Court

Court of First Instance
Case number

HCA74/2017

Applying the eye appeal test to the registered design and the three prior registered designs, the court concluded the overall visual impression is very similar if not identical; the differences advanced by the Plaintiff are immaterial or dictated by function and therefore the registered design lacked the requisite novelty and registrability. The Defendant established a prima facie case entitling it to revocation and summary disposal of the action.
13 Jul 2016

CELLTRION, INC. v. GENENTECH, INC.

Citation

CELLTRION, INC. v. GENENTECH, INC.
Court

Court of First Instance
Case number

HCA1873/2013

The proposed amendments comply with ss.102 and 103 as they do not add subject‑matter or extend protection; notwithstanding delay, there was no unfair advantage obtained by Genentech nor demonstrated detriment to others, and neither the opponent nor the Registrar opposed the amendments; exercising the court's discretion in the round, the amendments are allowed.
26 Mar 2014

SNE ENGINEERING CO LTD v. HSIN CHONG CONSTRUCTION CO LTD AND ANOTHER

Citation

SNE ENGINEERING CO LTD v. HSIN CHONG CONSTRUCTION CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA1466/2012

The court held the short-term patent invalid and the plaintiff's claim dismissed: the specification failed to disclose the invention clearly and completely (insufficiency) such that a person skilled in the art could not perform the alleged rotator and wedge method without undue burden; moreover the applicant and its partners had made prior enabling disclosures and the search report was inconsistent with the claimed invention, all of which fatally undermined validity; Chim Kee was not liable on the pleaded case.
17 Oct 2012

SNE ENGINEERING CO LTD v. HSIN CHONG CONSTRUCTION CO LTD AND ANOTHER

Citation

SNE ENGINEERING CO LTD v. HSIN CHONG CONSTRUCTION CO LTD AND ANOTHER
Court

Court of First Instance
Case number

HCA1466/2012

The court held that a defendant may apply to strike out a patent infringement claim but the strike‑out application must succeed only in plain and obvious cases; here it was not plain and obvious that the patent was invalid on the material before the court (factual and technical disputes, possible confidentiality of disclosures and need for expert evidence), therefore the 1st defendant's strike‑out application was dismissed and the matter must proceed to trial.
21 Jul 2010

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD

Citation

BURBERRY ASIA LTD v. POLO SANTA ROBERTA LTD
Court

Court of First Instance
Case number

HCMP2696/2009

On visual comparison the court found each Subject Design to be substantially the same as the Burberry Check such that the asserted differences (colour gradations, slight elongation, sense of direction and the superimposed device on Design C) were not materially distinguishing; colour and the minor features relied on were insufficient to confer novelty, and therefore the registrations lacked novelty and were revoked.
19 Apr 2010

ENVIRONMENTAL SYSTEMS PRODUCT HOLDINGS INC. v. DPC TECHNOLOGY LTD

Citation

ENVIRONMENTAL SYSTEMS PRODUCT HOLDINGS INC. v. DPC TECHNOLOGY LTD
Court

Court of First Instance
Case number

HCMP1465/2008

The prior art identified (notably US 2003/0040854 and other US patents), corroborated by the APO search report and expert affidavit, anticipates or renders obvious the claimed features of the ST Patent; the respondent failed to produce credible evidence of a triable issue or to displace the applicant's prima facie case; accordingly the ST Patent HK1080272 is revoked under s91(1)(a) of the Patents Ordinance for lack of novelty and inventive step.
9 Mar 2010

RE HONG KONG SHORT-TERM PATENT NO. HK1120707

Citation

RE HONG KONG SHORT-TERM PATENT NO. HK1120707
Court

Court of First Instance
Case number

HCMP1195/2009

No triable issues existed because the PRC patent publication predates the filing of the Hong Kong short-term patent and the Hong Kong specification is not new and lacks inventive step over the PRC disclosure; accordingly summary judgment was granted to revoke the Hong Kong patent.
9 Apr 2008

RE STAR INDUSTRIAL CO LTD

Citation

RE STAR INDUSTRIAL CO LTD
Court

Court of First Instance
Case number

HCMP1078/2007

The respondent's own sworn affirmation stated the products were put on sale before the filing dates, thus the designs lacked novelty and the motion for revocation succeeded; an adjournment was refused because Sun Hoi had ample time to verify its affidavit and offered no supporting affidavit or explanation to justify ignoring the existing sworn statement.
22 Oct 2003

SUN SHUN FUK FOODS CO LTD v. TRIPLE NOODLE & FOOD CO LTD

Citation

SUN SHUN FUK FOODS CO LTD v. TRIPLE NOODLE & FOOD CO LTD
Court

Court of First Instance
Case number

HCA2299/2003

The court refused to determine invalidity at interlocutory stage absent undisputed evidence establishing clear invalidity; found there was a serious question to be tried on both validity and infringement and that the balance of convenience favoured the plaintiff given the scale of plaintiff's sales and advertising and the defendant's comparatively small sales of the accused items; accordingly granted an interim injunction restraining the defendant from using designs confusingly or deceptively similar to Registered Design No.0111026.9, subject to the usual undertaking as to damages and costs i…
17 Aug 2000

CHAP MEI PLASTIC TOYS MANUFACTORY LTD. v. SHUN FAT TOYS CO. LTD.

Citation

CHAP MEI PLASTIC TOYS MANUFACTORY LTD. v. SHUN FAT TOYS CO. LTD.
Court

Court of First Instance
Case number

HCA846/2000

The Defendant produced no contemporaneous evidence to rebut the prima facie novelty of the registered design at the 1996 registration date; showing/promoting a sample at a trade fair constituted exposing for sale under s31(1)(b); the s51 endorsement error only affects damages which the Plaintiff abandoned; therefore there was no bona fide triable defence and summary judgment with permanent injunctive and ancillary orders was granted to the Plaintiff.