Information Paper for
LegCo Panel on Trade and Industry
New Registered Designs Law for Hong Kong
Introduction
This paper briefs Members on the legislative proposal for the establishment of a new registered designs registration system for Hong Kong before 1 July 1997.
Background
2. A "design" consists of the elements of appearance of the whole or a part of an article which result from features and elements of the lines, contours, colours, patterns, shape or materials of the article itself or its ornamentation. Design articles occupy an important place in our economy and cover an extremely wide range of goods such as domestic appliances, furniture, textiles, fashion, jewellery and watches. In many cases, design is the decisive factor in the commercial success of a commercial product.
3. The investment in developing a design can be heavy and the commercial risk can be high. On the other hand, once a design has become a success, it costs only a fraction of the original research and development cost to reproduce it. Design protection is of great importance to Hong Kong and especially to the small and medium-sized enterprises.
4. Article 139 of the Basic Law requires the Government of the Hong Kong Special Administrative Region (HKSAR), on its own, to formulate policies on science and technology and protect by law achievements in scientific and technological research, patents, discoveries and inventions. Article 140 provides that the HKSAR Government shall, on its own, formulate policies on culture and protect by law the achievements and the lawful rights and interests of authors in their literary and artistic creation. The proposed independent designs law for Hong Kong is compatible with the provisions of the Basic Law.
5. The Chinese and British Sides in the Sino-British Joint Liaison Group (JLG) have agreed on the proposals for localising the registered designs law in Hong Kong. In addition, they have also agreed on the continued application of international intellectual property treaties to the HKSAR. These treaties include the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. Hong Kong will continue to benefit from these Conventions.
The Present System
6. Hong Kong's registered designs law is currently dependent on the United Kingdom registered designs law. Hong Kong does not have a separate designs registry. Registered design can be protected in Hong Kong by applying for registration of the design in the United Kingdom in accordance with the Registered Designs Act 1949 as amended (1949 Act). If registered by the UK Registrar of Designs, then under the provisions of the United Kingdom Designs (Protection) Ordinance Cap 44 (enacted in Hong Kong in 1928), the registered design is automatically protected in Hong Kong. There is no additional procedure to be fulfilled in Hong Kong following registration in the United Kingdom. The registered design remains in force in Hong Kong as long as it remains in force in the United Kingdom.
7. The Hong Kong Law Reform Commission (LRC) had carried out a first review of registered designs law as part and parcel of its reform exercise on the Law Relating to Copyright. The LRC published its Report on Reform of the Law Relating to Copyright in January 1994 after extensive consultation. The LRC recommended that a new registered designs system should be adopted in Hong Kong.
8. The current regional and international trend is to provide a non-examination system for registered designs. Experience in other countries suggests that even where search and examination are conducted, it is difficult for the Registrar to determine the registrability of a design. We take the view that a registered designs system with formality examination only is the best way forward.
Policy Objectives of Registered Designs Law Reform
9. We have drafted a Registered Designs Bill with a view to achieving the following policy objectives:
(a) Localisation: Registered designs law is a branch of Hong Kong's intellectual property laws. The registered designs law in Hong Kong is primarily based on the United Kingdom Registered Designs Act 1949. This system is not appropriate for Hong Kong after 30 June 1997. A designs registry needs to be established in Hong Kong so that designs can be registered locally rather in the United Kingdom.
(b) Modernisation: We need to ensure that the new registered designs law and system reflect regional and international developments.
(c) Compliance with international obligations: We need to ensure that the new registered designs law will continue to meet the international design protection standards as contained in various design related conventions and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement of the World Trade Organisation.
(d) Provision of a user-friendly operational system: We need to create a user-friendly environment to facilitate the protection of new but non-patentable product designs.
The main legislative proposals are set out at the Annex.
Public Consultation
10. We issued in early December 1996 the draft Registered Designs Bill, which has taken into account of the recommendations of the LRC Report, and a consultation paper to about 60 organisations, including design owners and users in the relevant sectors as well as those in the professional and academic fields for their comments. A public seminar was held on 16 December 1996 to explain and clarify the provisions of the draft Bill. The consultation period expired on 6 January 1997. We are carefully examining the submissions received and will make modifications to the draft Bill where necessary.
Legislative Timetable
11. We intend to introduce the Registered Designs Bill into the Legislative Council in March 1997. The Bill has been accorded priority by the Government for enactment before July 1997.
Trade and Industry Branch
January 1997
Annex
Main Legislative Proposals for the Registered Designs Bill
What designs will be registrable?
A design is registrable if it is new (i.e. if no prior identical design has been published and the overall impression it produces on an informed user differs from the overall impression it produces on such a user by any prior design). The Registrar of Designs will have a general discretion to refuse the registration of a design if it is contrary to public order ("ordre public") or morality, or which is obviously not covered by the definition of a design.
Who can obtain registered design protection?
2. Any original owner of a design is entitled to file an application for design registration.
How will one register a design in Hong Kong?
3. We will establish a Hong Kong Designs Registry. The proposed Hong Kong design protection system requires no substantive examination. There will be a formality examination only. The Registrar, after being satisfied the formal requirements have been complied with, will register a design and will publish it.
What about the registrability of a design where application for protection in a convention country has already been made?
4. The law will set out the basis for establishing and claiming a priority date based on an earlier filing in countries which are convention countries or in countries or territories which are members of the World Trade Organisation. The Schedule will list the convention countries, i.e. parties to the Paris Convention, and members of the World Trade Organisation.
What will be the duration of registered design protection?
5. The period of protection of a design with the Hong Kong Designs Registry will be for an initial period of five years. Registration may be extended for four periods of five years each upon payment of the prescribed renewal fee. The maximum duration of protection will be 25 years.
What will be the rights of a registered design owner?
6. A registered design owner will have the right to prevent third parties who have not obtained the owner's consent from making or selling articles bearing or embodying a design which is a copy (or substantially a copy) of the registered design, when such acts are undertaken for commercial purposes. These rights can be transferred.
Will there be any limitation on the rights conferred?
7. The law will contain provisions that will allow use by the Government of a registered design during a period of declared extreme urgency, upon such terms and conditions as may be agreed or as determined by the court.
What will be the remedies against registered design infringement?
8. Civil remedies will be available to the owner of a protected registered design, including injunctions, damages, accounting for profits and orders for delivery up or destruction of infringing goods. There will not be any criminal sanctions for infringement of a registered design.
Can registrations be revoked?
9. A challenge in a court of law on the stated grounds of revocation will be available at any time after registration is granted.
What transitional arrangement will apply to designs already registered with the United Kingdom Design Registry?
10. After the commencement of the new law, designs already registered in the United Kingdom will be deemed Hong Kong registered designs.
11. Designs registered in the United Kingdom after the commencement of the new law but which are based on applications made prior to its commencement will also be deemed Hong Kong registered designs.
12. These deemed Hong Kong registered designs, however, have to be renewed in Hong Kong within six months of the commencement date or six months before the next UK renewal date, whichever is later.
13. Unless the deemed Hong Kong registered design is renewed in Hong Kong, protection in Hong Kong will lapse.
[Designs Bill/informa]
Last Updated on 21 August 1998
