Hong Kong: Compare, But Beware – Recent Judgment On Comparative Advertising In Hong Kong

Last Updated: 9 January 2019
Article by Gabriela Kennedy and Amita Kaur Haylock
Most Read Contributor in Hong Kong, September 2019


Historically, there have always been tensions in intellectual property law around how to balance the exclusive rights granted to intellectual property rights owners, while also allow for healthy competition between businesses to benefit consumers. One area where this tension is evident is in comparative advertising – e.g. where advertising materials identify a competitor, and identify a company's products or services as superior.

A recent judgment of the Hong Kong High Court ("Court") provides guidance on comparative advertising for the first time, including the interpretation of section 21 of the Trade Mark Ordinance (Cap. 559) ("TMO")13. In this case, the Court dismissed a trade mark infringement claim brought by the PCCW-HKT Group ("PCCW"), against its competitor, Hong Kong Broadband Network Limited ("HKBN")14. In doing so, the Court demonstrated support for comparative advertising, allowing more freedom for advertisers to highlight their companies' market advantages, and encouraging healthy competition.


In 2015, HKBN launched an advertising campaign with a number of catchphrases that included: "PCCW Home Telephone Service customers say goodbye to bloated monthly fees!" and "電訊盈科家居電話用戶唔駛再忍受 咁大食嘅家居電話用費". These catchphrases included trade marks registered by PCCW, such as "PCCW" and "電訊盈科" ("Marks").

There was no dispute by the parties that HKBN used the Marks. However, PCCW argued that HKBN had infringed PCCW's trade mark rights under sections 18(1) and (4) of TMO, as HKBN used the Marks in the course of business, thus taking unfair advantage of the reputation of the Marks. HKBN relied on section 21 of the TMO as a defence which states that there is no infringement of registered trade marks, if they are used in accordance with honest practices in industrial or commercial matters.

The factors that the Court may consider in determining "honest practices" include, in particular, whether:

  1. the use takes unfair advantage of the trade mark;
  2. the use is detrimental to the distinctive character or repute of the trade mark; or
  3. the use is such as to deceive the public.

PCCW claimed that HKBN's use of the Marks was not in accordance with honest practices in industrial or commercial matters. One of the reasons given to support this contention was the use in the advertisements of the expressions "bloated fees" and " 大食" (meaning gluttonous in Chinese).

HKBN rebutted this claim by asserting that a reasonable consumer reading the advertisements would likely take the view that the catchphrases used were honest15, true and not misleading, and that the use of "bloated" and "大食" (i.e. gluttonous) was just advertising language or puff, with no effect of discrediting PCCW, given the context of the advertisements.


The Court held that HKBN had successfully established a defence under section 21 of the TMO against PCCW's infringement claim, as the use of the Marks was in accordance with honest practices in industrial or commercial matters.

The Court also held that the purpose of comparative advertising is to identify the differences of services between competitors. Here, HKBN did not seek to use the Marks to benefit from their attributes or take a "free-ride", but was merely highlighting the price differences between the parties. Hence, there was no unfair advantage taken of the Marks.

In determining the meaning of "honest practices", the judge took into consideration the test of whether a reasonable man would take the claim in the advertisement to be one which was made seriously.16 The judge held that an average consumer in Hong Kong would be used to price comparisons of services, and would understand the words "bloated" and "大食" (i.e. gluttonous) as merely meaning "expensive" in more colourful language. Therefore, there was nothing unfair or dishonest when HKBN highlighted their reduced prices using the Marks and the expressions.

Other Jurisdictions

Comparative advertising is not explicitly prohibited under the Advertising Law of the People's Republic of China ("PRC")17, however, advertisements should not disparage ("貶低") the goods or services of any other producer or trader (Article 13) and should not engage in any form of unfair competition (Article 31).

While both Hong Kong and the PRC have not made direct references to the use of comparative advertising in their trade marks and/or advertising legislations, some jurisdictions in Asia-Pacific, such as Australia and Singapore have. The Australian Trade Marks Act exempts trade mark infringement in the context of comparative advertising.18 According to Australian case law, while there are no special principles that apply to comparative advertising, the facts in the advertisements must be true and accurate.19 As for Singapore, the Singaporean Trade Marks Act explicitly caters for the "fair use" of a registered trade mark in comparative advertising.20 One of the factors which the court will take into account when interpreting "fair use" is whether the average consumer would find the advertisement materially misleading.21

Both Hong Kong and the PRC have legislations to prevent the use of misleading information in advertisements. Under the Trade Description Ordinance (Cap. 362), any person who applies a false trade description (defined to include a misleading trade description22) in an advertisement in the course of trade or business, commits an offence.23 Similarly, under Article 8 of the Anti-Unfair Competition Law of the PRC, business operators may not promote their goods or services in a false or misleading manner, in an attempt to defraud or mislead consumers.24


In the recent PCCW/HKBN judgment, the Court's interpretation of the provision governing the use of a trade mark in advertising in Hong Kong demonstrates a support for comparative advertising, whilst also clarifying the test to be applied for a party to rely on the provision.

In a city that is unapologetically focused on a free market economy, business in Hong Kong is highly competitive. The support for comparative advertising aligns with Hong Kong's laissez-faire ideology. This should encourage fair competition, and also enable businesses to cater their goods or services to meet consumer demands and expectations.


15. Evidence was adduced to show that during the relevant period, PCCW's prices for fixed line telephone service were "largely" more expensive than HKBN.

16. A test established in the English case: Vodafone Group PLC v Orange Personal Communications Services Ltd [1997] FSR 34.

17. Please refer to the Advertising Law of the PRC at: http://www.npc.gov.cn/npc/cwhhy/12jcwh/2015-04/25/content_1934594.htm (Chinese only)

18. Section 122(1)(d): "... a person does not infringe a registered trade mark when... the person uses the trade mark for the purposes of comparative advertising".

19. Gillette Australia Pty Ltd v Energizer Australia Pty Ltd [2002] FCAFC 223.

20. Section 28(4)(a): "... a person who uses a registered trade mark does not infringe the trade mark if such use... constitutes fair use in comparative commercial advertising or promotion"

21. Allergan Inc. & Anor v Ferlandz Nutra Pte Ltd [2016] SGHC 131

22. Section 2 of the Trade Description Ordinance.

23. Section 7(1) of the Trade Description Ordinance: "... any person who – in the course of any trade or business— (i) applies a false trade description to any goods; or (ii) supplies or offers to supply any goods to which a false trade description is applied... commits an offence".

Section 8(1) of the Trade Description Ordinance: "The following provisions of this section shall have effect where in an advertisement a trade description is used in relation to any class of goods or services."

Section 8(2) of the Trade Description Ordinance: "The trade description is to be taken as referring to all goods or services... for the purpose of determining whether an offence has been committed under section 7(1)(a)(i)"

24. Please refer to the Anti-Unfair Competition Law of the PRC at: http://www.npc.gov.cn/npc/xinwen/2017-11/04/content_2031432.htm (Chinese only).

Visit us at www.mayerbrownjsm.com

Mayer Brown is a global legal services organization comprising legal practices that are separate entities (the Mayer Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; Mayer Brown JSM, a Hong Kong partnership, and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2018. The Mayer Brown Practices. All rights reserved.

This article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein. Please also read the JSM legal publications Disclaimer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions