Keywords: Trade Marks, Hong Kong, MIIT, China, privacy

HONG KONG ISSUED CONSULTATION PAPER ON JOINING THE MADRID PROTOCOL

By Rosita Li, Partner, Mayer Brown JSM, Hong Kong
Benjamin Choi, Partner, Mayer Brown JSM, Hong Kong

On 11 November 2014, the Commerce and Economic Development Bureau and the Intellectual Property Department of the Hong Kong Government jointly issued a consultation paper on the proposed application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ("Madrid Protocol") to Hong Kong. The three-month consultation will end on 11 February 2015. The purpose of this consultation is to gather views on the benefits, implications and implementation of the application of the Madrid Protocol to Hong Kong.

Features of the Madrid System

The Madrid System for international registration of trade marks is administered by the World Intellectual Property Organization and governed by the Madrid Agreement Concerning the International Registration of Marks ("Madrid Agreement") and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ("Madrid Protocol").

With the introduction of the Madrid Protocol to Hong Kong, applicants domiciled or registered in Hong Kong (whether individuals or businesses) will be able to file applications to register their trade marks in multiple Madrid Protocol member countries by way of a single filing and registration process without the need to file separate applications with different local trade mark offices. Foreign companies holding existing International Registrations of trade marks will also have the option to expand the territorial protection of their marks by designating Hong Kong without the need to file a separate domestic application in Hong Kong.

Current Trade Mark Environment in Hong Kong

At the moment, foreign companies have to file separate applications in Hong Kong in order to protect their trade marks here. Similarly, Hong Kong companies will need to file separate applications in those other jurisdictions to which they wish to extend their trade mark protection.

Statistics show a steady increase in the number of trade mark applications filed with the Hong Kong Trade Marks Registry in recent years, with a noticeable jump of 50% within 4 years (2009 to 2013) in both the total number of applications and the number of applications filed by overseas applicants.

More than 30% of the overseas filings came from applicants in the People's Republic of China ("PRC"). These figures show that Hong Kong has become an increasingly popular jurisdiction for trade mark protection for overseas trade mark owners.

At the same time, there has also been a 50% increase from 2008 to 2013 in the number of trade mark applications filed by Hong Kong applicants in other jurisdictions such as Australia, Japan, the European Union, Singapore, the United Kingdom and the United States.

The above statistics suggest that overseas companies are keen to extend the protection of their trade marks to Hong Kong. Similarly, more and more companies in Hong Kong wish to obtain protection of their trade marks in foreign jurisdictions.

Justification for Application of the Madrid Protocol to Hong Kong

The Madrid Protocol currently has 92 contracting parties including the PRC, the United States, the European Union, Australia, Japan, South Korea, Singapore, the Philippines, Vietnam and India. Several ASEAN member states including Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Myanmar and Thailand have also pledged to join the Madrid Protocol by 2015.

One of the perceived benefits of joining the Madrid System for Hong Kong is that it offers a more efficient and cost-effective one stop service for trade mark owners. It makes it easier and indeed encourages local businesses to promote and market their brands overseas and at the same time serves as an incentive for overseas companies to do the same for their brands in Hong Kong. A Government spokesperson said that "to enhance the competitiveness of Hong Kong as an international business and intellectual property trading hub, the Government believes that it would be in Hong Kong's overall interest to apply the Madrid Protocol to Hong Kong so that we can take advantage of the Madrid System."

Timetable for implementation

The introduction of the Madrid System to Hong Kong will need approval from the Central People's Government of the PRC.

Under the Basic Law of Hong Kong, the application to Hong Kong of any international agreements to which the PRC is a party shall be decided by the Central People's Government, in accordance with the circumstances and needs of Hong Kong and after seeking the views of the Hong Kong Government. Therefore, the Hong Kong Government will need to convey the views and suggestions gathered in this consultation exercise to the Central People's Government and discuss with the relevant PRC authorities about the proposed application of the Madrid Protocol to Hong Kong.

Another step critical for the application of the Madrid Protocol to Hong Kong will be the amendment of the existing Trade Marks Ordinance and Trade Marks Rules of Hong Kong in order to cater for the international registrations regime under the Madrid System.

The current estimate is that it may take some three to four years to complete all these steps. That said, even though it is likely to take at least three to four years before we see the implementation of the Madrid System in Hong Kong, the consultation paper is an important first step, as views from all stakeholders are now sought on this potential landmark change of the trade mark regime in Hong Kong.

MIIT ISSUED DRAFT SMS RULES FOR CONSULTATION

By Eugene Low, Senior Associate, Mayer Brown JSM, Hong Kong

On 4 November 2014, the PRC Ministry of Industry and Information Technology (MIIT) published for public consultation the Draft Administrative Rules for Telecommunication Short Message Services ("Draft SMS Rules"). The key objective of the Draft SMS Rules is to reduce the number of spam SMS messages in China. The public consultation ended on 5 December 2014. MIIT has yet to publish the finalised rules.

The volume of spam SMS messages targeting China's mobile phones have surged in recent years. A recent news report noted that in just the first half of 2013, there were an estimated 200 billion spam messages sent to mobile phones in China. In addition to mobile phone users, Internet users have also fallen prey to spam SMS messages. Tencent, a major IT corporation and the developer of online instant messaging service QQ, reported a total of 356 million junk SMS messages received by its mobile application users in the first half of 2013, 50 million more than that in 2012. The Draft SMS Rules represent the PRC government's efforts to address these concerns.

We summarise below the main provisions of the Draft SMS Rules:

Regulation on SMS service providers and content providers

  • Under the Draft SMS Rules, all SMS service providers must obtain a telecommunications operator licence.
  • SMS service providers must include in the message the sender's genuine phone number or code.
  • SMS service providers must keep records of when a message was sent and received and whether the recipient has subscribed for or unsubscribed for its SMS, for a period of 5 months.
  • SMS content providers must not distribute SMS messages containing restricted contents as set out under the PRC Telecommunications Regulations
  • No person shall employ automated or other means to generate others' phone numbers for the purpose of sending unsolicited SMS messages.

Restrictions on sending commercial SMS messages

  • No person shall send commercial SMS messages without first obtaining the consent of the recipient. Where a recipient has previously given his consent but later chooses to opt out, the content providers must not send further commercial SMS messages to him.
  • SMS service providers and content providers who wish to obtain consent from recipients for sending commercial SMS messages must explain to the recipients the type, scope and duration of time of the proposed SMS messages that will be sent to them. Recipients who have not replied to such an invitation will be deemed not agreeing to receive such SMS messages.
  • SMS service providers and content providers must include in the SMS messages a free-of-charge and efficient "opt-out" facility to the recipients.

Any individual or organisation who contravenes the above may face a penalty of up to RMB 30,000. MIIT may also make a public announcement about the contravention.

Going forward

The Draft SMS Rules reflect the PRC Government's determination in tackling spam SMS messages in the PRC. We will monitor the progress of the implementation of the draft Rules and keep readers updated.

BANKING ON YOUR PERSONAL DATA: RECENT GUIDANCE ISSUED TO BANKS

By Gabriela Kennedy, Partner, Mayer Brown JSM, Hong Kong
Sara Or, Partner, Mayer Brown JSM, Hong Kong
Karen Lee, Associate, Mayer Brown JSM, Hong Kong

Given the private nature of banking services and as banks serve the vast majority of the public, the banking industry is one of the private sectors in Hong Kong for which the Hong Kong Privacy Commissioner receives most complaints. For the same reasons, data privacy compliance by the banking industry attracts particular attention, not only from the regulatory authorities, but also from the public. Due to the sensitive nature of the information handled by the banking industry, the consequences of personal data being mishandled, lost, leaked or stolen can be very serious. The risk is heightened by the increased threat of cyber crime. In October 2014, both the Privacy Commissioner and the Hong Kong Monetary Authority ("HKMA") issued guidelines to banks on how to protect personal data. This article focuses on the handling of customer data by banks.

The Privacy Commissioner's Guidance Note

On 6 October 2014, the Privacy Commissioner issued a Guidance Note on the Proper Handling of Customers' Personal Data for the Banking Industry ("PC Guidance Note"). The PC Guidance Note provides the banking industry with tailored advice on how to ensure compliance with the Personal Data (Privacy) Ordinance ("PDPO"). This advice addresses the following aspects:

Personal information collection statements

On or before the collection of a customer's personal data, a bank is required to notify the customer of certain information in accordance with the PDPO. It is recommended that such notice be provided in the form of a personal information collection statement ("PICS"), which can be provided in the application form used to collect the customer's personal data, or attached to the form as a separate notice. The PICS must specify:

  1. The purposes for which the customer's personal data may be used;
  2. The classes of persons to whom the customer's personal data may be transferred;
  3. Whether or not it is mandatory or optional for the data requested to be provided, and the consequences for failing to provide it;
  4. The customer's right to access and correct his personal data held by the bank, and the name, job title and address of the bank officer who is responsible for handling data access or correction requests.

Banks are advised to communicate effectively the PICS to their customers. The PICS should be in clear and simple language easily readable and understandable, and should also be easily accessible. Banks should therefore take into account the language used and the layout and presentation of the PICS (e.g., simple English or Chinese, reasonable font size, headings to facilitate reading, etc). Banks should ensure that the PICS is presented to customers in a conspicuous manner. They should also consider providing the customers with a help desk or enquiry hotline to assist them in understanding the PICS.

If personal data is collected from a customer over the phone or electronic means, the bank is still required to comply with the PICS requirement. The bank will have to keep good records of having communicated the PICS to a customer before or at the time of collecting his personal data.

Hong Kong Identity Cards ("HKID")

Banks are required by law and HKMA regulatory guidelines to perform KYC and AML due diligence on customers and potential customers. Banks are therefore allowed by the PDPO to collect their HKID numbers. However, a bank may not collect HKID number from a noncustomer, unless otherwise required by law.

For example, a bank is required by the Anti-Money Laundering and Counter-Terrorist Financing (Financial Institutions) Ordinance ("AMLO") to collect the HKID number of a non-account holder when carrying out an "occasional transaction" for them. Examples of an occasional transaction include money changing of an aggregate value of at least HK$120,000, or wire transfer of an aggregate value of at least HK$8,000.

Customer records

Banks should take all reasonably practicable steps to ensure that a customer's contact details are accurate and up-to-date, to ensure that bank statements and other correspondence are not sent to the wrong person. Banks should put in place automated or manual checking procedures to ensure that all information (and variations) provided by the customer from time to time has been correctly entered onto the bank's records.

Retaining customers personal data

Under the PDPO, a customer's personal data must not be kept for longer than is necessary. As such, banks should implement clear data retention policy to ensure that personal data is erased after the purposes for which it was collected have been fulfilled. When determining the period of retention, banks should take into account the purposes for which the personal data is to be used and any applicable regulatory or legal requirements on record-retention periods (e.g., Banking Ordinance, AMLO, Securities and Futures Ordinance, Companies Ordinance, Inland Revenue Ordinance, etc.).

Exceptions may also be made where a longer retention period is justified. Examples include where it is necessary to retain the data as it relates to a current or impending legal action or complaint, or is needed to facilitate performance of a contractual obligation.

As regards retention of a customer's bankruptcy data, the Privacy Commissioner advises banks to retain for no longer than 8 years. The rationale for the 8-year period is that a bankrupt individual would normally be discharged between 4 to 8 years from the commencement of bankruptcy, and so it is not necessary for a bank to retain bankruptcy data for longer than 8 years.

Sharing customers' personal data within the same banking group

Banks should not allow unrestricted sharing of their customers' personal data amongst group entities. Intra-group sharing of customer data has to comply with the PDPO. The PICS should inform a customer of the intra-group sharing, and the sharing of data should not be excessive having regard to the purposes for which data is collected and used and other relevant circumstances. In any other case, a bank is not permitted to share customer data within the group unless with the customer's express consent or unless the bank may rely on a specific exemption in the PDPO.

A bank should establish a group policy on the sharing of customer data. It should also keep up-to-date logs on the transfer of customer data within the group.

Transferring customers' personal data outside Hong Kong

All requirements in the PDPO regulating transfer of personal data apply to a bank transferring customer data, whether within Hong Kong or to a place outside of Hong Kong. In addition, the Privacy Commissioner has been considering an effective date for section 33 of the PDPO. In the meantime, the Privacy Commissioner advises banks to take into account the requirements of section 33 in communicating to customers their practices and arrangements relating to transfer of data if they intend to transfer data outside of Hong Kong.

Disclosing customers' personal data to financial regulators and law enforcement agencies

Even if requested by a governmental agency or regulatory authority to disclose a customer's personal data, a bank should exercise caution and should not make indiscriminate disclosure. Banks should not assume that disclosure requests from governmental agencies or regulatory authorities are automatically and invariably mandatory and binding on banks. Before accommodating a disclosure request, a bank should duly assess the request and determine whether the bank may rely on a legal ground for making disclosure. Typical legal grounds include:

  1. The disclosure is directly related to the original purposes for which the customer data was collected;
  2. The customer has given express consent for disclosure; or
  3. The disclosure is permitted by virtue of a specific exemption in the PDPO, including where the disclosure is required or authorised by law or a court order binding on the bank, or is required in relation to any legal proceedings in Hong Kong.

Using customers' personal data in debt collection

Banks should specify in the PICS that debt collection agents form one of the classes of persons to whom they may transfer customers' personal data. In the absence of that, a bank will have to obtain a customer's express consent before transferring his data to debt collection agents. It is also good practice for a bank to make readily available to a customer of its debt collection policies and practices.

A bank will remain responsible for contravention of the PDPO by its debt collection agents. As such, banks should impose back-to-back contractual obligations on debt collection agents that are consistent with the PDPO and other obligations on the bank. In addition, a bank should not disclose excessive customer data to debt collection agencies.

The same requirements apply with respect to other service providers and data processors appointed by the bank. A bank is required to adopt contractual or other means to manage its service providers and data processors. The PC Guidance Note expressly states that a simple provision requiring a service provider or data processor to comply with the PDPO or the laws of Hong Kong will not exonerate the banks from liability under the PDPO.

Protecting customers' personal data during off-site marketing campaigns

Where banks organise off-site marketing activities to promote their products, this will likely involve the collection of personal data. A bank should implement clear policies and procedures to ensure secure handling of personal data by its marketing staff. The policies and procedures should, among other things, require the staff to keep any forms or documents containing customer data securely stored in a locked container and securely transported to the bank's premises, and prohibit the staff from bringing them home.

Collecting and protecting customers' personal data in e-banking situations

The PC Guidance Note contains advice specifically applicable to e-banking services offered by banks. Particular attention is drawn to the following aspects:

  1. When a customer logs onto a bank's e-banking platform to apply for the e-banking services and provide his personal data on-line, he should be given the PICS before his personal data is collected – the PICS can be given online either on the same webpage or through a prominent link;
  2. Any online form should follow the paper equivalent, and any mandatory items or optional items to be completed should be clearly labelled;
  3. Where cookies are used, it is good practice to disclose the bank's policy regarding cookies, including what kind of information is stored on the cookies and whether a customer may opt out of the cookies and the consequences of opting out; and
  4. It is good practice to inform customers of the specific security measures applicable to online transmission of their personal data.

Handling data access requests

Individuals are entitled to request access to any of their personal data held by the bank. If the bank receives data access request, it is required to respond within 40 calendar days by providing the requested data or notifying the individual that it does not hold his personal data. The bank is allowed to charge a reasonable fee for complying with the data access request, restricting to the direct costs incurred by the bank in complying with the data access request.

Make privacy policies and practices generally available

Banks must take all reasonable practicable steps to ensure that their privacy polices and practices, are accessible by the general public. A banks may post a statement of such policies and practices on its website and include a link on its homepage or other pages where personal data is collected. Such link should be clearly marked, e.g., "Privacy Policy Statement". It is recommended that the privacy policy statement include information such as the kinds of personal data the bank holds, the main purposes for which the data is used, the bank's data retention policy, its data disclosure and transfer policies, etc.

Consequences of breaching the PDPO

Whilst breach of the PC Guidance Note will not in itself constitute an offence, the Privacy Commissioner will take it into account and is likely to weigh unfavourably against the bank in a case or complaint brought before the Privacy Commissioner alleging a contravention of the PDPO.

When the PDPO was amended in 2012, several changes relating to enforcement notices were introduced. More important changes include increased penalties for breaching multiple enforcement notices or for repeated contravention of the PDPO on the same facts after an enforcement notice has been issued and complied with. Further, the Privacy Commissioner is empowered to issue an enforcement notice whether or not the breach is actually continuing or whether or not he is of the opinion that the breach is likely to continue or be repeated (which was a pre-requisite before the PDPO was amended).

The HKMA Circular

On 14 October 2014, the HKMA issued a Circular on Customer Data Protection ("HKMA Circular"). The HKMA Circular focuses on the controls to prevent and detect loss or leakage of customer data and procedures for addressing and reporting such incidents.

The HKMA expects all authorized institutions to complete a critical review of the adequacy and effectiveness of their existing controls and procedures by the first quarter of 2015. In conducting the review, an AI should have regard to the guidance provided in the HKMA Circular and other applicable guidance issued by the HKMA. If the review reveals weakness or areas for improvements, the HKMA expects an AI to implement appropriate measures promptly to strengthen the controls

Major aspects addressed by the HKMA Circular include the following:

  1. Appoint a designated senior officer or committee to oversee the protection of customer data, and the handling and reporting of any loss or leakage of customer data;
  2. Classify customer data according to it sensitivity and risk level, and put in place security controls based on the assessed risk levels;
  3. Have in place policies and procedures covering system controls, physical security controls, mobile computing, etc.;
  4. Implement an awareness programme to remind staff members at least annually of:

    • The importance of complying with the AI's data security polices and procedures;
    • Their obligation to promptly report any data leak or loss of data; and
    • The disciplinary actions that may be taken against staff members for violation of the internal security policies and procedures, or failure to report a data leak or loss;
  5. Have in place access controls to prevent any unauthorised access of customer data, including restricting access to designated staff members on a need-to-know basis; disabling and preventing the use of tools to download massive amounts of data, unless management approval has been obtained, etc;
  6. Have in place controls over the transmission of customer data to external networks and systems, including implementing strong data encryption, preventing access to Internet services that can store data (e.g., external email accounts, cloud service) or file-sharing software, and having controls to detect suspicious activities, such as any massive downloading of data;
  7. Control the ability of staff members to store customer data on portable storage devices, including:

    • Restricting or preventing the use of portable storage devices;
    • Deploy password protect and data encrypt portable storage device and backup tapes;
    • Record the use of portable storage devices;
    • Record the reporting of any loss of a portable storage device;
    • Erase data from the portable storage device when no longer needed;
  8. Ensure the secure disposal or destruction of customer data stored on paper or any other media;
  9. Control the use of personally owned computer devices by staff members in relation to their employment (i.e., "Bring Your Own Device" policy):

    • Staff members should generally only use devices provided by and owned by the AI;
    • However, if an AI has a "Bring Your Own Device" policy, it should comply with the Hong Kong Association of Banks' standards on minimum controls;
  10. Implement physical security controls where customer data is stored, and whenever customer data is being relocated or transported, including security guards, CCTV, etc;
  11. Engage independent third parties to conduct periodic audits on the adequacy of and compliance with the AI's controls over customer data;
  12. Have in place controls over the handling of customer data by third party service providers, including imposing contractual obligations on them to comply with the AI's policies and procedures; and
  13. Report any loss or leakage of customer data to the HKMA, the relevant customers and the Privacy Commissioner where appropriate. The HKMA expects an AI to provide justification for a decision not to report.

Banks should complete the critical review by Q1 2015 in accordance with the HKMA Circular and take necessary and timely steps in light of the results of the review.

Conclusion

Banks are under increased scrutiny from the Privacy Commissioner and HKMA, as well as the general public. There is also heightened expectation for banks to treat data protection as an integral part of their overall compliance infrastructure.

The potential consequences of non-compliance include investigations, fines, civil claims and reputational damage. It is therefore very important for a bank to design and implement an effective data protection compliance policy that addresses all legal and regulatory requirements from various sources that are applicable to it having regard to the nature and scale of business, and its circumstances and needs. For a bank that is part of an international group, the compliance policy will have to address not only requirements under Hong Kong law but also foreign laws and group policies. Apart from management commitment and oversight, a key component of the compliance policy is staff awareness and training.

Whilst cyber security and employee data handling are beyond the scope of this article, we have designated teams and experts to provide advice on those topics. Please contact us if you require further assistance.

To read this Review in full, please click here.

Originally published December 2014

Learn more about our Intellectual Property, Technology, Media & Telecommunications and Privacy & Security practices.

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 2015. 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.