The Trade and Industry branch of the Administration has circulated for comment, a draft Registered Designs Bill (the Bill). The Bill contains a draft Registered Designs Ordinance (the Ordinance), which permits the designer-the person who creates a design-to apply for registration of a design (cl 1).
‘Design’ is defined as ‘the elements of appearance of…an article, resulting from specific features or elements or the lines, contour, colors, patterns, shape or material of the article or an imitation. …’ (c1 2). Any design registered under the Registered Designs Act 1949, shall be deemed to be registered under the Ordinance.
As discussed in my last column, the draft Trademarks Bill proposes to broaden the definition of ‘tradenTark’ from a mark that has to be visually perceptible to one that can be represented graphically (although the registration of certain shapes and odours will not be permitted). The Registered Designs Ordinance may fill some of this gap, but the registration of smells and sounds now permitted in some jurisdictions under trademark law does not appear to be possible in Singsong, even presuming the promulgation of the two Ordinances in their present form.
The designer is treated by the draft Ordinance as the original owner of the design unless the design was created on behalf a commissioning party who shall be treated as the original owner unless otherwise specified contractually. Similarly, where a design is created by an employee in the course of employment, it shall be treated as the design of the employer unless otherwise specified in the contract between the parties (c1 3).
Designs dictated solely by technical functions other than those that serve the purpose of permitting simultaneousand multiple assembly or the connection of identical mutually interchangeable articles, are not registrable (c14).
To be registrable, a design must be new, which means that no identical design has been published before the application for registration is made. Moreover, the overall impression given by the design must differ from the overall impression produced by a previously published design.
If a design is of a component of a complex article, in order to be registrable it must remain visible during normal use (c15). Designs contrary
to public order, computer programs and protected layout designs are not registrable (cls 7 and 8).
A design may be registered for an initial period of five years from the filing date of the application for registration and may be extended for an additional five-year period, but may not exceed 25 years (cls 28 and 29),
The owner of a registered design may make or import to HongKong for sale or lease or business purposes, any article in respect of which the design is registered (c131). A registered design is personal property that may be transferred, granted or licensed to others (cls 31 and 32). Where there is an infringement of a registered design, the owner can seek the same remedies as can owners of other types of intellectual property, eg bring an action for damages, an injunction to prevent the infringement or for an account of profits (cl48).
However, damages for infringement or account of profit will not be available where a defendant can prove that at the time of infringement he or she had no reasonable grounds for believing that the design was registered. In order to rebut the presumption, it is necessary for the ‘registered’ or an abbreviation thereof and the registration number to appear on the article (c1 51).
Where a person has in his or her possession infringing articles or something specifically designed for making infringing articles, the owner of the registered design may apply to the court to have those articles or things delivered to him or her or to such other persons as the court may direct. The owner of a registered design can also apply to have the infringing articles or anything specifically used to make infringing articles destroyed or disposed of as the court may direct(cls53 and 54)
The decisions or orders of the Registrar may be appealed in the courts. Where an appeal involves an application for registration of a design that has not been published, the appeal should be heard in private. In any such proceedings the Registrar will be entitled to appear, be represented and be heard and unless otherwise directed by the court. The Registrar can also submit particulars of the proceedings held before him or her, and other relevant matters (cls 58 and 59).
The court may make any order or exercise any power that the Registrar could have exercised. Orders made by the courts will be appellable in the Court of Appeal.
The draft Registered Designs Bill is clearly a very substantial step in advancing the legal protection of designs in Hong Kong. The Draft Ordinance is comprehensive and fills many administrative gaps in Hong Kong’s substantive law.
If passed, it will, for the first time, establish the necessary institutions for the administration of the Ordinance, and when coupled with the new trademark law and the extension of copyright law, help to provide Hong Mon with a relatively complete system of intellectual property protection. Now we await only the establishment of a system for the registration of Patents.
