2. The meeting noted that the Chairman had accepted Mr Ronald ARCULLIs late application to join the Bills Committee on grounds of absence from Hong Kong, in accordance with House Rule 23.

3. As agreed at the last meeting, a total of 11 professional/trade associations and tertiary educational institutions which had earlier commented on the draft Bill had been invited to forward their views to the Bills Committee. Since most organisations had not yet sent in their comments, members agreed to postpone the deadline for submissions to the end of April 1997.

4. Miss Margaret NG informed the meeting that the Hong Kong Bar Association had made substantial comments on the draft Bill during the public consultation stage, and most comments had already been incorporated into the Bill. She would ascertain whether the Bar Association would have any further comments on the Bill. As far as she was aware, the legal professionals were more concerned about the implementation aspects of the Bill.

5. Mrs Selina CHOW commented that the Bill should not be controversial as the intention was to afford protection to designers and proprietors. Nevertheless, she was concerned that the trade and interested parties should be fully consulted on the contents of the Bill, particularly on those changes which would affect them. The Chairman said that this could be followed up during the meeting with the Administration.

III. Meeting with the Administration

Background

6. The Chairman welcomed government representatives to the meeting. At the invitation of the Chairman, the Deputy Secretary for Trade and Industry (DS/TI) briefed members on the background and the main features of the Bill, as follows :

The Bill sought to establish an independent designs registration system of international standard in Hong Kong before 1 July 1997 as Hong Kong could no longer depend on the United Kingdom (UK) registered designs laws after the transfer of sovereignty. Articles 139 and 140 of the Basic Law provided that Hong Kong should formulate its own policy on culture and protect by law the achievements and the lawful rights and interests of authors in their literacy and artistic creation. Hong Kong had to ensure that its design registration system also met the standards stipulated in international intellectual treaties and conventions which would continue to apply to Hong Kong after 30 June 1997, namely the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literacy and Artistic Works.
The Law Reform Commission (LRC) had reviewed the copyright law and recommended that Hong Kong should establish its own designs registry with examination capabilities and that the novelty test for registrable designs should be local. It also proposed that the Hong Kong system should model on the UK Registered Design Act 1949 as amended.
While most of the LRC recommendations had been adopted by the Administration, there were two deviations in the proposed legislation. Firstly, on the novelty requirements, the Administration had proposed to follow the international trend of worldwide novelty, rather than local novelty, for registration of designs. Secondly, the proposed system would adopt a formality examination or non-examination approach in line with the practice in European Union (EU) countries and China, since any substantive examination would be subjective in itself and difficult to implement. In this regard, Miss Margaret NG suggested that, to facilitate members deliberations of the Bill, the Administration should prepare a checklist indicating which LRC recommendations had been incorporated into the Bill, and the reasons for not following some LRC recommendations. DS/TI undertook to provide an information paper on LRC recommendations before the next meeting.

Justifications and scope of the Bill

7. At the request of members, the Deputy Director of Intellectual Property (DD/IP) and his colleagues elaborated on the reasons and advantages of introducing the Bill and its coverage.

Under the provisions of the United Kingdom Designs (Protection) Ordinance, Cap. 44 (enacted in Hong Kong in 1928), a design registered in the UK in accordance with the Registered Designs Act 1949 as amended could be protected in Hong Kong. However, from 1 July 1997 onwards, Hong Kong would need its own law to protect intellectual property rights in Hong Kong, in order to fulfil its obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights of the World Trade Organisation (WTO). While the existing legislation such as the Copyright Ordinance and Patents Ordinance could provide protection for artistic works and industrial inventions, no law existed at present to protect industrial designs which were the ornamental aspects of useful articles. A registered designs law was therefore required to fill the gap.
A registrable design must be applied to an article by means of an industrial process and appeal to the eye. It could be two-dimensional or three-dimensional, and covered a wide range of designs such as those for watches, textiles, wallpapers, toys, etc. The Bill would not cover computer programs and layout-designs (topographies) of integrated circuits as these were subject to a separate ordinance.

Proposed changes to existing legislation

8. Miss Margaret NG asked about the similarities and differences between the existing and the proposed legislation. The Director of Intellectual Property and DD/IP advised members that the Bill was modelled on existing legislation and had adopted most LRC recommendations except the non-examination approach and worldwide novelty standard. As this would be a localised law, more comprehensive provisions would be provided, for example, for the establishment of an independent designs registry under the Intellectual Property Department. Comments received during the public consultation stage had also been incorporated in the Bill as far as possible. There were also some textual amendments to improve clarity of existing provisions.

9. At members request, DD/IP highlighted the following features in the Bill:

Clauses 1-4 (Preliminary)

10. Some textual improvements had been made to provide clearer definitions.

Clauses 12-23 (Applications for registration)

11. Clause 13 (Multiple applications) was to allow an application to contain two or more designs, in line with the EU practice, in order to save time and cost to the applicant. Clause 15 (Priority right) provided that persons who had registered their designs in, or in respect of, a Paris Convention country or WTO member, would enjoy priority right in Hong Kong, and that their designs registered in those countries would be treated as new in Hong Kong for six months.

Clauses 24-27 (Examinations and registration)

12. Clause 27 (Formality examination) provided that, in line with the EU practice, only formality examination would take place for registration of a design. The basic data in the application, rather than details of the design, would be checked by the Registrar. In response to the Chairman, DS/TI clarified that protection of registered designs was normally confined to the country where the design had been registered, and that there was no reciprocity arrangement for EU countries although they adopted the same registration standard.

Clauses 28-30 (Duration of registration)

13. Clause 28 (Period of registration) stipulated that the total period of protection would not exceed 25 years, which was in line with the UK Act and consistent with other intellectual property laws in Hong Kong.

Clauses 31-35 (Rights in Registered Designs)

14. Miss Margaret NG and Mrs Selina CHOW suggested the Administration to review the Chinese title of Part III (Clauses 31-35) as the word ¤¤ appeared to be redundant.

Clauses 36-40 (Government Use of Registered Designs)

15. Clause 36 (Declaration of extreme urgency) was consistent with the WTO agreements and other intellectual property laws such as the Layout Designs (Topographies) of Integrated Circuits Ordinance enacted in 1994.

Clauses 44-57 (Proceedings for revocation of registration)

16. The proceedings for revocation of registration and infringement proceedings were similar to those provided in other intellectual property legislation. Clause 57 (Remedy for groundless threats of infringement proceedings) could be found in other intellectual property laws which confer monopoly rights but provide remedies of groundless threats.

Clauses 64-71 (Administration and Miscellaneous Provisions)

17. The clauses provided for the establishment of a designs registry in Hong Kong, and that the register would be available for inspection by the public.

18. Clause 72 (Language of proceedings before Registrar) provided that either Chinese or English could be used in all proceedings before the Registrar under the Ordinance.

Clauses 85-89 (Offences)

19. These clauses provided that falsification of register, misrepresentation, and misuse of the title designs registry were criminal offences liable to a fine and imprisonment.

Clauses 90-93 (Transitional provisions)

20. In response to members concern about the transitional arrangements for designs registered in the UK, the Administration advised that the UK designs registry had been informed of the arrangements and advertisements would also be placed on the UK Patent and Design Journal. Designs already registered in the UK would continue to be protected in Hong Kong until expiry of their current registration certificate which was issued for a period of five years renewable on expiry. For continued protection in Hong Kong, the registered proprietor of the design would have to apply for extension of the registration at the Hong Kong designs registry six months prior to the expiration of the current registration, or within six months of the commencement of the Ordinance. The Administration estimated that about 1,200 renewal applications in respect of the UK registered designs would be received each year. To address members concern, the Administration would prepare an information paper on the notification arrangements for the protection of designs registered in the UK.

Public consultation

21. Mrs Selina Chow asked about the coverage of the public consultation exercise conducted by the Administration and asked if the Administration had reached out to concerned parties to explain the provisions in the Bill which might affect them. DD/IP advised that over 1 000 small and medium enterprises had been consulted on the subject by the LRC prior to law drafting. During the public consultation stage of the draft Bill, the Administration had also written to about 60 organisations including professional associations, manufacturing and industrial organisations and tertiary educational institutions, in addition to press release and advertisements on the Internet. Twelve organisations (including the Hong Kong Bar Association) and one individual had forwarded written comments to the Administration, and most comments had been incorporated in the Bill.

22. Noting that few responses had been received by the Administration during the public consultation stage, Miss Margaret NG remarked that the general public and trade organisations might not have the know-how to understand the legislation and its impact. She shared Mrs CHOWs views that a more user-friendly approach should be adopted for public consultation. To allay members concern, the Administration undertook to make further efforts to enhance the industrys understanding of the Bill, and a seminar would be held for the designers industry in early May.

IV. Date of next meeting

23. The Committee agreed to meet again on 2 May at 2:00 pm to continue discussion with the Administration.

24. The meeting ended at 4:00 pm.

Provisional Legislative Council Secretariat
21 July 1997

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Bills Committee on Registered Designs Bill

Minutes of the Meeting held on Thursday, 17 April 1997, at 2:30 pm in Conference Room B of the Legislative Council Building

I. Confirmation of minutes

II. Internal discussion