The Director of Intellectual Property (DIP) informed the meeting that the Administration had organised a seminar to explain the provisions of the Bill to designers, and that the response was very positive. Since many participants were not familiar with the Designs law, they had sought clarifications on a number of points in the Bill. In response to members, DIP confirmed that the participants welcomed the Bill which was to provide protection to the industry. Members noted that the participants had not made any specific comments to amend the contents of the Bill.

II. Clause-by-clause examination

2. The Chairman then took members through the Bill clause by clause. Members noted that the Administration had proposed certain Committee stage amendments (CSA) to the Bill vide LegCo paper CB(1)1601/96-97(01).

Part I - Preliminary (clauses 1 to 4)

3. Members noted that under clause 2, the reference to Part I of the Copyright , Designs and Patents Act 1988 would be have to be amended at a later stage upon enactment of the Copyright Ordinance. A CSA would be introduced to the Copyright Bill to bring about the consequential amendment to the Registered Designs Bill.

Part II - Registration of Designs (clauses 5 to 11)

Clause 7

4. In reply to Miss Margaret NG, the Deputy Director of Intellectual Property (DD/IP) advised that different countries might adopt different morality standards for registration of designs, and Hong Kong would likely adopt a rather liberal approach in this respect.

Clause 8

5. Members noted that the Administration had accepted members comments and proposed a CSA to put it beyond doubt that this Ordinance would exclude designs for articles of a primarily artistic character as these "designs" had already been protected as copyright works.

Clause 13(a)

6. Members noted that the Administration had proposed a CSA to amend "class of designs" to read "class of articles" for clarity reasons.

Part III - Rights in registered designs (Clauses 31 - 35)

7. Members noted that the Administration had accepted the Committees comments and proposed a CSA to change the Chinese translation for "rights in registered designs" of the subtitle of Part III from "¦bµù¥U¥~Æ[³]p¤¤ªºÅv§Q"to "µù¥U¥~Æ[³]pªºÅv§Q".

Part IV - Government use of registered designs (Clauses 36 - 40)

Clause 40(3)

8. Members noted that the Administration had proposed a CSA to clarify the reference to the payment of fees and the period prescribed under section 28(5).

Part V - Legal Proceedings (Clauses 41 - 63)

Clause 47

9. Miss Margaret NG sought clarification on the effect of revocation of registration and whether the profits derived from the sale of the revoked registered design was recoverable. DD/IP advised that as the revocation would have the effect that the registration was deemed never made, any profits derived from the sale of the revoked registration could be recovered.

Clause 50

10. In reply to Miss Margaret NG, DD/IP advised that there were similar provisions in the Copyright Bill to allow the holder of an exclusive licence under a registered design to have the same right as the registered proprietor in instituting court proceedings.

Clause 51(3)

11. Members noted that the Administration had proposed a CSA as in Clause 40(3) to clarify the reference to the payment of fees and the period prescribed under section 28(5).

Part VI - Administration and Miscellaneous Provisions (Clauses 64 - 78)

12. Members had no comments on this part.

Part VII - Rules and Regulations (Clauses 79 - 84)

Clause 80(2)(b)

13. Members noted that the Administration had proposed a CSA to amend "section 14" to read "section 16" which was the correct section on "Claiming priority".

Clause 83

14. Members noted that the Administration had proposed a CSA to delete paragraphs (a), (b) and (c) which were no longer necessary.

Part VIII - Offences (Clauses 85 - 89)

15. In response to Miss Margaret NG, DD/IP advised that infringement of rights were not criminal offences. No similar provisions existed in the Copyright law as copyright works did not require registration.

Part IX - Transitional Provisions, Consequential Amendments and Repeal (Clauses 90 - 96)

Clause 91

16. Members noted that the Administration had proposed a CSA to delete the phrase "of the class" in sub-clauses 91(1) and 91(2) for clarity. Another CSA was proposed to modify sub-clause 91(2) to the effect that all applications for registration must be filed in the UK before rather than on the commencement date of the Bill, if these designs were to be deemed registered in Hong Kong.

Clause 92

17. Members noted that the Administration had proposed a CSA to state more clearly the transitional arrangements for designs previously registered under the UK Designs Law.

Chinese translation of clause titles

18. Members noted that the Administration had proposed a CSA to provide Chinese translation for the title in Clause 94 (Provisions as to industrial property) under the contents and Part IX of the Bill. The Deputy Secretary for Trade and Industry (DS/TI) explained that the Chinese authentic text of the clause titles were not available at the time when the Bill was drafted.

Schedule

19. Members noted that the Administration had proposed CSAs to change the Chinese translations of the names of some Paris Convention Countries to make them consistent with those in the Trade Marks Ordinance. Members also noted the following additions and deletions to the list of member countries under the Schedule:

Addition of Equatorial Guinea and Sierra Leone to the list of countries acceded to the Paris Convention
Addition of Angola, Papua New Guinea and Solomon Islands to the list of World Trade Organization (WTO) members
Deletion from the list of WTO members Sierra Leone and Tanzania which had been included in the list of the Paris Convention Countries under United Republic of Tanzania.

The Chinese version of CSAs

20. Members noted the Chinese version of the CSAs tabled at the meeting and had made no comments.

CSA to the Copyright Bill

21. Regarding the reduced copyright protection for registered designs, DS/TI informed the meeting that a CSA would be introduced to the Copyright Bill to make it clear that any artistic work, if registered for industrial uses under the Registered Designs law, would have its copyright cut down. On the term of copyright protection for registrable but unregistered designs, DD/IP clarified that any two-dimensional drawing would still have copyright protection as artistic work. However, if it was put to industrial use but was not registered under the Designs law, it would not enjoy monopoly rights but only copyright for a period of 15 years. This was to encourage registration of industrial designs under the Designs law.

Legislative timetable

22. The Bills Committee supported the Bill as amended by the draft CSAs proposed by the Administration, and agreed to report back to the House Committee on 23 May 1997. DS/TI said that the Administration hoped to resume Second Reading before mid June so that the subsidiary legislation could also be passed before the end of the legislative session.

23. The meeting ended at 5:35 pm.

Provisional Legislative Council Secretariat
6 August 1997

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Bills Committee on Registered Designs Bill

Minutes of the Meeting held on Thursday, 15 May 1997, at 4:45 pm in Conference Room B of the Legislative Council Building

I. Matters arising from the previous meeting