The University of Hong Kong

Department of Law

Academic Year of 2019-2020

Examiner’s Report

[This report will be posted onto intranet immediately after the release of exam results]

Course code: JDOC6005 Course title: Hong Kong Intellectual Property

Report prepared by: Douglas Clark Date: 9 June 2020

Overall students answered the exams well. For the essay questions, I am always
looking for innovative thinking and analysis against real world examples. A few
students did this, but many relied on examples given in class and the lecture notes
which resulted in a lower grade.

The problem questions were generally handled well. Some students recited the facts or
quoted cases in detail which was not necessary. Some brief comments on each
problem question are set out below.

Question 5 raised four principal issues: (a) Is COVID-BUSTER registrable in light of

potential absolute grounds of refusal – could this be overcome by use? (b) was there
infringement under S.18(2) (not S.18(3)) or S.18(4)? (c) was there passing off, in
particular is there goodwill for a product not released on the market yet? and (d)
whether an interlocutory injunction could be obtained?

Question 6 was focussed on trademark/passing off and copyright. For

trademark/passing off the questions were: is Crocodile similar to Alligator and are the
devices similar? For the devices, the answer is yes, for Crocodile and Alligator,
probably no, but some students argued that they were (which is possible). For
copyright, the first issue was were the works are still protected, remembering Alligator
did not have copyright in the underlying scores or words. Chang Ge’s songs were out of
copyright and Sing Song’s will be expiring this year. The next major issue was whether
Crocodile’s activities constituted fair dealing. In terms of enforcement, the principal
discussion was to be on action for infringement and a possible Mareva Injunction.
Very brief discussion of domain name recovery could also have been made.

Question 7 was again focused on trademark and copyright. Most students focussed
on trade mark issues without appreciating that copyright could be invoked. The first
major issue was whether parallel imports could be stopped. In this case probably no. A
brief discussion of why not was sufficient. As for the coupon, the reproduction of the
logo on the coupon is copyright infringement – is it fair dealing? For trade mark
infringement, is it TM infringement to use a TM to promote genuine good? Is it TM
infringement to use 匯豐 on a cash coupon. The types of action that could be taken,
including an interim injunction, needed to be discussed.

Question 8 was patent focussed and looked for discussion of purposive construction,
the procedures for filing patents. A short term patent is the quickest protection, but
discussion should have mentioned that a standard patent could also be applied for.
Finally, whether there was disclosure by public use needed to be considered.

Douglas Clark
9 June 2020