The New Law
A summary of the main provisions of the Registered Designs Ordinance follows:
Ownership of designs - Generally the designer is treated as the original owner of the design. Where a design is created pursuant to a commission the person commissioning the design is the owner subject to any agreement to the contrary. Where a design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the original owner of the design.
Registration of Designs - A design which is new may be registered in respect of any article or set of articles. A design is not new if:
- it is the same as a prior registered design;
- it is the same as design that was published anywhere in the world prior to the application date; and
- it differs from such designs only in immaterial details.
A design is not registrable in respect of an article if the appearance of the article is not material.
Confidential Disclosure - An application for the registration of a design shall note be refused and the registration of a design shall not be invalidated by reason of:
- disclosure under confidential circumstances;
- disclosure to a government department who must consider the merits of the design; or
- disclosure at an official international exhibition provided the application is made not later than 6 months after the opening of the exhibition.
Priority Application - An applicant can take advantage of the priority date for a corresponding application in a Paris Convention country or World Trade Organisation member. A copy of the previous application must be filed.
Functional Features - a design which has both functional and aesthetic features is registrable but the registration does not protect the functional features.
Spare parts - designs for spare parts are registrable if the parts are made and sold separately. However, many types of designs for spare parts will not be registrable because the parts are purely functional, or because they "must match".
Computer programs and protected layout designs (topographies) are not registrable.
Multiple applications - more than one design can be included in the same application if:
- the designs relate to the same class of articles (Locarno classification); or
- the designs relate to the same set of articles.
Examination - designs shall be examined as to formal requirements only. The requirements are set out in the Rules. The Registrar will not consider the registrability of the design; whether the applicant is entitled to any priority claimed in the application; or whether the design is properly presented in the application.
Once examined the applicant will be given three (3) months to correct any deficiencies in the applications. If this is not done the application will be deemed to be withdrawn.
If the formal requirements are satisfied the design will be registered, a certificate of registration will be issued and the registration will be advertised by the Registrar in the Government Gazette.
Duration - the initial period for a design registration is five years from the filing date of the application for registration. The renewal fee is to be paid within three months of the current term. The period of registration may be extended for four additional periods of five years but the total period may not exceed 25 years.
Term of UK Registered Design extended - A UK design registration which is only valid for 10 or 15 years in the UK may be extended in Hong Kong for additional five year periods up to minimum of 25 years.
Rights - the registered owner will have the exclusive right to make, sell or hire in Hong Kong, or import into Hong Kong, any article in respect of which the design is registered and to which that design, or a design not substantially different from it, has been applied. The scope of protection conferred by a registered designs is linked with that designs degree of novelty. Hence, a radically new design will enjoy broad protection but a design which only differs from prior art in minor details will only enjoy narrow protection.
Infringement - the right in a registration is infringed by any person who, without the owner's consent:
- does anything which is the exclusive right of the owner;
- makes anything which enables any article which infringes the owner's rights to be made in Hong Kong; and
- does anything in relation to a kit that would constitute an infringement of the design if it had been done in relation to the assembled article.
- makes anything for enabling a kit to be made or assembled in Hong Kong or elsewhere if the assembled article is identical or substantially similar to an article in respect of which a design is registered.
The rights conferred by registration do not extend to:
- acts done privately for non-commercial purposes; or
- acts done for the purpose of evaluation, analysis research or teaching.
Recognises that a registered design is personal property which may be assigned, mortgaged, licensed or sub-licensed
Government use - the government may use a registered design in periods of extreme urgency whenever it considers it to be necessary in the public interest to maintain supplies or services essential to the life of the community
Determination of rights - after a design is registered any person claiming a proprietary interest in the design may take action to determine:
- who is the true owner of the design
- whether the design should have been registered in the name of the person or persons in whose name or names it was registered
- whether any rights in the design should be transferred or granted to any other person
Revocation - a person may at any time after a design has been registered apply for a determination on whether the design is registrable having regard:
- to public order or morality
- to whether the person is entitled to be owner
The Registrar or Court may order the revocation of the design registration.
Infringement - an infringement of any rights in the registered design is actionable by the owner and he may claim relief by way of damages, injunction, account of profits or other remedies. No proceedings are available in respect of an infringement of registered design committed before the date on which the certificate of the registration of design is issued.
Restriction on recovery of damages - no damages or account of profits will be awarded if the defendant proves that he was not aware and had no reasonable grounds for believing that the design was registered. The mere use of the word registered or any abbreviation or word implying that the design has been registered will not be regarded as notice unless it is accompanied by the registration number.
Rights must be registered - where a person becomes the owner or one of the owners or an exclusive licensee of a registered design he must apply to register the rights within six months, unless it is not practicable to do so. If he does not he will not be entitled to damages or an account of profits in respect of any infringement occurring after the date of the transaction and before the particulars of the transaction are registered.
Relationship with copyright - Registered designs have concurrent copyright protection for 25 years from the first marketing of the article.
Registrable but unregistered designs have 15 years of copyright protection only.
Other remedies - the owner of a registered design may also apply for an order for delivery up, destruction or disposal of the infringing article or anything designed or adapted for the marking of an infringing article.
Declaration as to non-infringement - a person doing, or proposing to do, an act may apply for a declaration that an act or proposed act would nto constitute an infringement of a registered design.
Groundless threats - where a person threatens any other person with proceedings for infringement of a registered design any person aggrieved by the threats may bring proceedings against the person making the threats, provided the threat is not justified.
The relief for groundless threats is:
- a declaration to the effect that the threats are not justified
- an injunction against the continuance of the threats
- damages which have been sustained by reason of the threats
This does not apply to proceedings for an infringement alleged to consist of the making of an article for sale or hire or the importing of anything.
The Register - a Register of Designs shall be kept and the public shall have the right to inspect the Register.
Language - the official language in which the registration of a design is filed shall be used as the language in all proceedings before the Registrar. Both Chinese and English are official languages.
Offences - it is an offence to make a false entry on the register or to falsely represent that a design applied to an article is registered.
Personal liability - where an offence committed by a body corporate is proved to be committed with the consent or connivance of a director, manager or other similar person of a body corporate he as well as the body corporate is guilty of the offence.
