CMS Expert Guide on Preliminary Injunctions in IP in Hong Kong

There is no specific restriction on claims that may be subject to PIs (known as interlocutory injunctions). It is a remedy sought by IP owners for all forms of IP. PIs can provide timely protection to IP owners preventing ongoing infringement of their IP rights leading to irreparable damage pending final determination of the IP disputes.  

It is optional but not required. 

There is no hard deadline but any inexplicable delay would be inferred as lack of urgency. Precedent suggests the Court may refuse granting PIs with a delay as short as 2 weeks. 

Ex-parte (without notice) PIs can be obtained the same day as the application from the Duty Judge.

If an inter parte PI application  is made on a Monday or Tuesday, a PI may be obtained by Friday of the same week, at the earliest. Otherwise, it may be obtained the following Friday.  

Normally, a granted PI is challenged by an application to discharge. See questions 9 and 10.

The evidence presented must be sufficient to show that:

1. there is a serious question to be tried in respect of the claim;
2. the applicant will suffer irreparable damage if PI is not granted;
3. the counterparty will not suffer irreparable damage if the PI sought is granted; and
4. if (ii) and (iii) are not conclusive, on a proper consideration of the balance of convenience or balance of justice, PI shall be granted.

In considering the balance of convenience or the balance of justice, the court is entitled to take into account whether the applicant has demonstrated a strong case on the merits and whether the counterparty had chosen to walk into the existing situation with its eyes open or through a lack of prudence.

Yes, in cases of extreme urgency and with a need for secrecy. The applicant is under a continuing duty of full and frank disclosure, including matters that are not favorable to its case, for the Court’s consideration. Failure to comply may result in the PI being discharged. (see question 9 below). 

For a PI issued under an ex parte application and any subsequent successful applications of continuation of the injunction, the costs will normally be reserved, and will be recoverable from the counterparty if the IP dispute is concluded in the applicant’s favour. Otherwise, if the PI is discharged by the counterparty, the costs of the ex parte application would not be recoverable and the applicant is likely required to pay the counterparty the costs of and occasioned by the discharge application.

If the application is made inter parte, costs are usually recoverable from the counterparty if the PI is granted. 

In most cases, the court will require the applicant to give a cross-undertaking in damages, which is an undertaking to pay damages to the  counterparty for any losses suffered as a result of the injunction, should it subsequently be determined that the injunction ought not to have been granted. The applicant may additionally be required to fortify the undertaking by giving security. The counterparty should apply for the security when the PI is granted and the undertaking is given, and must show a likelihood of a significant loss arising as a result of the PI and a sound basis that the undertaking will be insufficient.

If an ex parte PI is obtained, the restrained party may apply to have it discharged or varied.  If, on hearing the application for discharge, the Court orders the injunction to continue, this may be appealed.

If an inter partes PI is obtained, the restrained party may similarly appeal.  

Where an appeal is sought, the Court will not stay the order unless there are exceptional circumstances, such as that the appeal would be rendered nugatory if the effect of the injunction is not stayed.

Alternatively, if there has been a change of circumstances justifying an application to vary or discharge the injunction, an application may be made.

For an ex parte PI, an application to discharge may be made at the return date, which is usually fixed on a Friday.

For appeal proceedings, depending on court availability, it will usually take several months as the counterparty would need to first apply for leave to appeal. 

Normally, an order for temporary injunctive relief would take effect upon the order being made. However, as a matter of practicality, the obligation for the party to comply would normally start from service of the order. 

Non-compliance may constitute contempt of court. The applicant may apply to the Court for an order to commit the infringer for a fine and/or imprisonment.

Yes. The counterparty can apply to the Court to enforce an undertaking in damages given by the applicant at the time of obtaining the PI for losses caused by the injunction.

In the context of IP, the loss is often the loss of the chance of earning certain profits.

Yes. A PI is only temporary relief and a full trial or hearing on the merits of the case is required to determine whether the applicant is entitled to a final injunction.