The IP Panel
The new panel is separate from HKIAC’s regular panel of arbitrators and includes well regarded IP lawyers, retired judges and leaders of professional organisations.
HKIAC’s timing is deliberate. The panel’s launch comes soon after the December 2015 publication by the territory’s Department of Justice of a consultation paper proposing amendments to Hong Kong’s Arbitration Ordinance.
The proposed amendments will make it clear that intellectual property disputes are arbitrable in Hong Kong and under Hong Kong law, and that it would not be contrary to public policy to enforce an award on these issues. Submissions in response to the consultation paper, due before 18 January 2016, were generally in support of the proposed amendments. Hong Kong’s legislative body, Legco, currently proposes to introduce a finalised bill implementing the proposed amendments during the second quarter of 2016.
HKIAC’s IP panel includes 30 members from 12 jurisdictions, speaking seven languages. HKIAC boasts that the panel’s members:
…collectively offer over 850 years of experience in IP matters including licensing issues, copyright infringements, FRAND [fair, reasonable and non-discriminatory] disputes, as well as the registration of patents, trademarks and designs.
HKIAC will select arbitrators from the panel for IP cases that it administers. The panel will also be a source of arbitrators to be appointed to IP disputes elsewhere in the world.
Arbitration of IP disputes
IP practitioners globally are becoming increasingly aware of the advantages of arbitration, as IP issues and agreements become ever more complex and multi-jurisdictional. Arbitration provides a solution that is perceived to be fair, binding and enforceable in multiple jurisdictions.
HKIAC is handling an increasing number of IP disputes. For example, in 2015, HKIAC handled 227 domain name disputes, a 13% increase from 2014.
Both the proposed amendments and HKIAC’s creation of the new panel aim to cement Hong Kong’s position as a favourable location to arbitrate IP matters. HKIAC will join other jurisdictions like the United States and Belgium, where arbitration of disputes on IP issues, such as patent validity and infringement, is expressly allowed.
The new panel and the proposed legislative changes will also put Hong Kong in stark contrast to mainland China where IP matters are deemed to be administrative issues and cannot be arbitrated.
Similar panels have been established already by other arbitral institutions, including by the Singapore International Arbitration Centre (SIAC), a direct rival to HKIAC. If HKIAC is to retain its strong reputation as an arbitral centre, it must keep pace with developments in its region.
Ling Chun Wai, a barrister at Des Vouex Chambers, who is listed on the new panel said:
I am thrilled by the establishment of the new IP arbitrators’ panel by the HKIAC. It will further enhance Hong Kong’s status as a hub for ADR generally and in the Asia-Pacific region in particular and put it in the international spotlight for the resolution of IP disputes in particular.
HKIAC, in creating the panel, hopes to strengthen Hong Kong’s reputation as an arbitral centre for IP disputes. HKIAC supports the proposed amendments to Hong Kong’s arbitration legislation, saying that once implemented, the amendments will:
…be useful in demonstrating Hong Kong’s commitment to developing itself into a global centre for resolving IP disputes and an IP trading hub in the Asia-Pacific region, given its modern legal infrastructure, independent judiciary, robust IP protection and presence of multilingual IP industrial and dispute specialists.
The launch of the Panel and the proposed amendments to the Arbitration Ordinance demonstrate the commitment of Hong Kong to develop into a global centre for resolving IP disputes. Interestingly, although international arbitration of IP disputes is on the increase, arbitration is still not as widely used in IP as it is in other practice areas. It will be interesting to see whether these developments will result in more IP disputes being arbitrated in Hong Kong.
This blog post first appeared on Practical Law Arbitration Blog on 3 May 2016.