Designs

The new Designs Ordinance came into force on 27th June, 1997. The Ordinance establishes a Designs Registry and provides for the registration of new designs in Hong Kong.

Prior to the enactment of the Ordinance design protection in Hong Kong was obtained by merely registering the design in the United Kingdom. There were no additional procedures for re-registration of designs in Hong Kong and provided that the design remained registered in the United Kingdom it was enforceable in Hong Kong.

Registration of designs requires the design to be new i.e. it must not have been published in Hong Kong, or elsewhere, before the filing date of the application. The Registry does not carry out an examination as to novelty of the design, but merely examines the application to ensure it complies with the formalities. Provided the application satisfies the formalities, the design will be registered.

Registration is for 25 years from the date of filing and renewal fees are payable every 5 years.

Registration gives the owner the exclusive right to make in, or import into Hong Kong, articles in respect of which the design is registered. The owner of the registered design can thus stop others from making, importing or selling articles bearing the design which is the same as, or substantially similar to the registered design.

Proceedings for infringement can only be commenced after the certificate of registration has been issued. In an action for infringement the registered owner is entitled to seek an injunction and damages or an account of profits and delivery up of infringing copies and tools.

Registered designs have concurrent copyright protection for 25 years from the first marketing of the article, whereas designs which are registrable, but have not been registered, enjoy copyright protection for 15 years only.