Douglas Clark, Global Head of Dispute Resolution considers issues around the arbitration of IP disputes in Hong Kong.
Emergency and Interim Relief
In IP disputes, it is often necessary to apply for an interim injunction to stop alleged infringing acts. In general, it has often been necessary to apply to a court for an injunction. For a Hong Kong seated arbitration, in addition to applying for an injunction from the court, it is possible to apply for: (a) emergency relief before the appointment of a tribunal; (b) interim relief from the tribunal; and (c) interim preservation orders from Mainland Chinese courts.
Emergency relief allows parties to apply for interim measures at an early stage in a dispute before a tribunal has been appointed. The HKIAC Rules for emergency relief are set out in Schedule 4 to the 2018 HKIAC Rules. These provide for the appointment of an emergency arbitrator within 24 hours of the application being filed. The application is to be handled on paper and a decision should be made within 14 days of the application. For an injunction against a party in Hong Kong, this can be much faster than applying for an interim injunction from the court (other than an ex-parte or truly urgent injunction) where the court will give directions for filing evidence and a hearing date be set for some months later. If the injunction is granted the Hong Kong Court of First Instance will enforce it relatively quickly. If the party is outside Hong Kong, it may take some time to enforce an emergency award and a direct application in the country the party is located may be more efficient.
A tribunal once appointed may also grant interim measures. In Hong Kong, under s.36 of the Arbitration Ordinance (which enacts Article 17A of the UNCITRAL Model Law) the tribunal is required to be satisfied in accordance with a test similar (but not identical) to the American Cyanamid test, namely:
- harm not adequately reparable by an award of damages is likely to result if the measure if not ordered;
- such harm substantially outweighs the harm likely to result if the measure is not granted; and
- there is a reasonable possibility that the requesting party will succeed on the merits of the claim.
Enforcement of interim measures in Mainland China
In 2019, Hong Kong and China entered into an arrangement to allow for mutual assistance to enforce interim measures in China. This is done by direct application to the court in the other jurisdiction to grant preservation measures. In order to do so, it is necessary to establish that arbitration has been commenced (or is about to be commenced in Hong Kong). Since the arrangement was put in place, the HKIAC has received over 50 requests for letters of support for interim measures in the Mainland of China. It is necessary for an application to the court's of Mainland China to have a notarized and legalized power of attorney to PRC attorneys in place. This can take a number of months to prepare so parties who think they may need to apply for interim relief from a PRC could should get this process commenced as soon as possible.
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