Shadow company in Hong Kong is a company registered in Hong Kong with name or part of its name which is very similar to the trademark of another company.
Representatives of shadow companies often pose themselves as representatives of the owners of such trademarks when contracting with manufacturers to produce counterfeit products bearing such trademarks or other third party for the trading of the counterfeit products.
Owner of the trademark may take the following legal actions against the shadow company and/or its directors.
Trademark Infringement Action
Pursuant to the Trade Marks Ordinance, the owner of a registered trademark under the Trade Marks Ordinance (Cap. 559) has the exclusive right to use the mark in the Hong Kong for the goods and/or services registered.
The trademark owner may take infringement proceedings against a person who uses, in the course of trade or business, a sign identical or similar to the registered trademark in relation to identical or similar goods or services.
The trademark owner can seek for damages, injunctions or delivery up or disposal of infringing goods, material or articles from the Court against the shadow company and/or director.
If the trademark is not registered in Hong Kong, the trademark owner may bring legal action in passing off against misrepresentation as to the source of the goods and/or services by the shadow company and/or director.
3 elements have to be established for a passing off action:
1st: the trademark owner’s goods and/or services, with the use of the trademark, have acquired a goodwill or reputation in the market.
2nd : there is a misrepresentation by the shadow company and/or director leading or likely to lead the public to believe that the goods and/or services offered by the wrongdoer are goods and/or services of the trademark owner.
3rd: the trademark owner has suffered or is likely to suffer damage as a result of the shadow company and/or director’s misrepresentation. If the passing off is proved, the Court may grant an injunction order to restrain the wrongful act, and an order for damages to be paid by the shadow company and/or director to the trademark owner.
For legal advice or services on shadow company disputes or trademark infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799 Email: firstname.lastname@example.org]
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