Consultation on the Draft Hague Convention on Exclusive Choice of Court Agreements




"The exclusion of the registered intellectual property rights from
the operation of the proposed scheme is understandable and is the correct
approach. Most, if not all, of the international conventions relating
to intellectual property rights provide for minimum standards only. At
the local implementation level, there is a great diversity of domestic
laws based on public policy, values and, in some respect, public morality,
e.g. patent rights in respect of human engineering. As a corollary, registered
intellectual property rights are jurisdictional and are subject to local
laws. As registrations of intellectual property rights are based on local
laws, it is best that the question of validity should be left with the
registration jurisdictions. This is quite apart from the rationale put
forward by the Department of Justice, namely, deference to the jurisdiction
of the country of registration, which, ex hypothesi, is applicable to
all judgments regardless of the underlying laws. I note that the exclusion
relates only to the question of validity, but sometimes issues of validity
affect infringement under local laws. Hence, from a practical point of
view, it is questionable whether the exclusion ought to be confined to
validity, particularly when the purpose could easily be avoided by making
validity an issue for adjudication.

Copyright, in a manner of speaking, stands independently
and is protected in the Berne Convention countries regardless of whether
it is registered. But not all domestic copyright laws are the same. Take,
for instance, Hong Kong copyright laws which protect industrial designs,
but the Mainland copyright laws do not afford the same protection. If
copyright is to be made an exception to the exclusion, it may be necessary
to harmonize the "philosophy" of protection.

I had some difficulty with the words "protected
industrial designs" in Article 1(3)(k) of the draft convention. In
Hong Kong, industrial designs are protected by both copyright and registered
designs. Are these words meant to cover copyright protection of industrial
designs? If they are meant to cover registered designs only, this should
be made clear.

I also had difficulty with the word "incidental"
in Article 4. Where does one draw the line between incidental and non-incidental?
Does it depend on the interpretation of individual member states? What
if different member states differ in their understanding of the word "incidental"?
It may be necessary to provide a definition capable of uniform application.

Prepared by: Mr. Martin Liao

A member of the Hong Kong Bar Association

29 March, 2004