Check list of major comments received

Clause/Topic

Concerns raised by consultees

Consultee

Summary of Government Response

Clause 2 : definition of article

the definition borrowed from a draft EU Directive is unfamilar;

broadening the definition increases the potential for overlap with other form of IP;

a more elaborate definition would be more useful.

HK Bar Association

HK Institute of Trade Mark Practitioners (HKITMP)

HK Tourist Association (HKTA)

The definition in the gazetted Bill now follows the much narrower definition in the UK Registered Designs Act 1949 (the 1949 Act) with which practitioners are familiar.

Clause 2 : definition of article

definition of ‘article’ and ‘design’ do not cover computer software.

HK Jockey Club (HKJC)

Computer programs are not registrable. Generally speaking, an industrial design is the ornamental aspect of a useful article.

Clause 3(3) : ownership of designs

rights of employer and employee should be clearly defined;

whether the words ‘in the course of his employment’ are too broad;

whether the ownership of designs as a result of teacher-supervised student projects should be spelt out.

HKJC

HKITMP

HK Institute of Education (HKIE)

The clause is intended to reflect the general law, the detail of which is to be found in the case law.

Clause 5 : novelty - component part

concern that parts which are not visible in normal use are excluded from protection;

concern that the definition of normal use excludes maintenance, servicing and repair;

protection for parts is against the interest of users and the public.

HKITMP

Chartered Institute of Patent Agents (CIPA)

HK University of Science and Technology (HKUST)

Retail Management Association (RMA)

The gazetted Bill now follows the provisions in the 1949 Act which requires that to be registrable, parts must be made and sold separately (see cl 2(1) definition of ‘article’)

Clause 6 : novelty test

the draft Bill abandons the important element of eye appeal required under the present law.

HK Bar Association

The gazetted Bill now follows the 1949 Act in adopting the test of ‘eye appeal’ and ‘aesthetic character’.

Clause 5: publication exceptions - limitation on worldwide novelty

there should be no exception from absolute novelty.

CIPA

HKITMP

The gazetted Bill now adopts absolute novelty as the standard.

Clause 9(2) : publication exception - exhibition

the six-month grace period from first publication is not sufficient. A period of 12-18 months is needed.

HKUST

The Convention on International Exhibitions (Paris 22 November 1928) allows 6 months (see cl 109 in Patents Bill).

Clause 12 : applications for registration

application requirements should be consistent with the proposed new Hague Act;

it should be possible to file a statement of novelty if the applicant chooses;

representation of the design in cl 12(2)(b) should be defined to include dimensional drawings, computer images and photographs.

CIPA

HKITMP

HK Productivity Council

Agreed.

The rules will require the filing of a statement of novelty.

Any representation of the design which is suitable for reproduction will be accepted.

Clause 13 : multiple applications

multiple applications are supported;

presumes Locarno classification is to apply.

HKITMP

CIPA

Noted.

It will be stated in the rules.

Clause 21 : amendment of applications

supported but the scope of amendment should be limited.

HKITMP

The clause states that the scope of an application is not to be increased by the inclusion of matter not disclosed in the application initially filed.

Clause 22 : division of applications

right to divide is supported but no division should conflict with cl 21(2).

HKITMP

The dividing of an application is procedural only.

Clause 25 : registration and publication

the publication should include at least one representation of the design.

HKITMP

The rules will provide that a representation of the design will be published on registration.

Clause 31 : rights conferred by registration

the test for infringement should be the same as that for novelty;

clause 31(2)(b) & (d) are too broad.

HKITMP

The gazetted Bill provides that the tests are the same.

There is no change in the existing law.

Clause 48 : proceedings for infringement

the clause should not allow for the possibility of conversion damages and may usefully positively exclude them.

HKITMP

There is no specific reference to conversion damages in the clause. It should best be left to the court to decide on damages.

Clause 72 : language of proceedings

it should be possible to change the language of proceedings.

HKITMP

Johnson Stokes & Master (JSM)

It will be stated in the rules.

Clause 77 : designs relevant for defence purpose

queries references to Secretary for State and United Kingdom.

HKITMP

It will be dealt with in the adaptation of law exercise.

Clause 86(2) : false representation that design is registered

the scope of the offence should extend to any promotional or advertising literature for the article.

JSM

The scope of the offence is sufficiently wide.

Compulsory licences

compulsory licensing provisions found in the 1949 Act should be incorporated.

HKITMP

HK Bar Association

The compulsory licensing of registered designs is not usual. The US, China, Germany, Canada, France make no such provision. Australia’s Law Reform Commission does not recommend it.

Unregistrable designs

Registrable but unregistered designs

the absence of an unregistered design right makes clarification of the overlap between designs and copyright imperative;

the long term of copyright protection given to unregistrable designs and to registrable but unregistered designs is undesirable.

HK Bar Association

City University of Hong Kong

HKITMP

CIPA

We will address the question of unregistered design right once the registered designs system is in place.

We are considering amendments to the Copyright Bill to remove copyright protection for registered designs and to cut down the term of copyright protection for registrable but unregistered designs to 15 years, in effect preserving the position under the present law.

Clause/Topic

Concerns raised by HKITMP

Summary of Government Response

Clause 2 : interpretation

some aspects of definitions of ‘article’ and ‘design’ in the draft Bill were welcomed but have been lost in the gazetted Bill;

re-introduction of the requirement that only parts which are ‘made and sold separately’ are registrable is regretted;

the re-introduction of the ‘eye-appeal’ or ‘aesthetic character’ test in the definition of design is regretted.

In the light of comments received on the draft Bill, we have decided to model the Bill on the 1949 Act. Whilst some consultees welcomed some aspects of the new concepts in the draft Bill, most favoured the certainty of the concepts in the 1949 Act which is the existing law.

Clause 5(2)(b) : novelty

the definition of ‘published’ should be defined.

It is the term used in the 1949 Act and carries the same meaning as in that Act.

Clause 9(1)(c) : confidential disclosure of textile design

see no reason why it should be included.

There is no change in the position of the existing law.

Clause 10 : provisions as to artistic works

the clause should be deleted.

This clause removes protection from an artistic work which has been exploited.