An Ordinance to make new provision in respect of registered design right and related matters in substitution for the United Kingdom Designs (Protection) Ordinance.
[27 June 1997] L.N. 368 of 1997
(Originally 64 of 1997) Section: | 1 | Short title | | 30/06/1997 |
PART I
PRELIMINARY - (1) This Ordinance may be cited as the Registered Designs Ordinance.
- (2) (Omitted as spent)
Section: | 2 | Interpretation | L.N. 40 of 2004 | 07/05/2004 |
(1) In this Ordinance, unless the context otherwise requires"application for registration" (註冊申請) means an application for registration of a design made under section 12; "article" (物品) means any article of manufacture and includes any part of an article if that part is made and sold
separately;
"artistic work" (藝術作品) has the same meaning as in Part II of the Copyright Ordinance (Cap 528); (Amended 92 of 1997 s. 280 & Schs. 2 & 3)
"assignee" (承讓人) includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;
"corresponding design" (相應外觀設計), in relation to an artistic work, means a design which if applied to an article would produce something which would be treated for the purposes of Part II of the Copyright Ordinance (Cap 528) as a copy of that work; (Amended 22 of 1999 s. 3)
"court" (法院) means the Court of First Instance; (Amended 25 of 1998 s. 2) "design" (外觀設計) means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include- - (a) a method or principle of construction; or
- (b) features of shape or configuration of an article which
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; "designer" (設計人), in relation to a design, means the person who creates it or, if there are 2 or more such persons, each of those persons; "employee" (僱員) means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person); "employer" (僱主), in relation to an employee, means the person by whom the employee is or was employed;
"exclusive licence" (專用特許) means a licence from the registered owner of a registered design conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the registered owner), any right in respect of the design that would otherwise be exercisable exclusively by the registered owner, and "exclusive licensee" (專用特許持有人) shall be construed accordingly;
"filing date" (提交日期), in relation to an application for registration, means the date determined under section 14 as the filing date of the application;
"official journal" (官方公報) means the publication for the time being specified under section 84A as the official journal of record; (Added 2 of 2001 s. 20)
"owner" (擁有人) has the meaning assigned by section 3;
"Paris Convention" (《巴黎公約》) means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time;
"Paris Convention country" (巴黎公約國) means - (a) any country for the time being specified in the Schedule as being a country which has acceded to the Paris Convention;
- (b) any territory or area subject to the authority or under the suzerainty of any country referred to in paragraph (a), or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention;
"prescribed" (訂明) means prescribed or provided for by the rules;
"priority date" (優先權日期), in relation to an application for registration, means the date regarded as being the filing date of the application pursuant to section 17;
"protected layout-design (topography)" (受保護的布圖設計 (拓樸圖)) has the meaning assigned to that term by section 2(1) of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445);
"Register" (註冊紀錄冊) means the Register of Designs kept under this Ordinance;
"registered design" (註冊外觀設計) means a design registered under section 25;
"registered owner" (註冊擁有人), in relation to a registered design, means the person whose name is for the time being entered in the Register as the owner of the design or, if there are 2 or more such persons, each of those persons;
"Registrar" (處長) means the Registrar of Designs;
"Registrar of Designs" (外觀設計註冊處處長) means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412);
"Registry" (註冊處) means the Designs Registry administered by the Registrar;
"rules" (規則) means rules made by the Registrar under section 79, 80, 81 or 82, as the case may be;
"set of articles" (物品套件) means 2 or more articles of the same general character that are ordinarily on sale together or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied;
"World Trade Organization Agreement" (《世界貿易組織協議》) means the Agreement Establishing the World Trade Organization done at Marrakesh in 1994, as revised or amended from time to time; "WTO member" (世界貿易組織成員) means any country, territory or area for the time being specified in the Schedule as being a country, territory or area which has acceded to the World Trade Organization Agreement.
(2) Unless the context otherwise requires, any reference in this Ordinance- - (a) to the filing of a document shall be construed as a reference to the filing of the document with the Registrar;
- (b) to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set; or
- (c) to the infringement of a design or registered design shall be construed as a reference to the infringement of any right in the design conferred by this Ordinance.
(3) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions. Expressions Relevant provision Divisional application (分開申請) section 22(1) Formal requirements (形式上的規定) section 24(4)
Government use (政府徵用) section 37(2) Kit (配套元件) section 31(5) Official international exhibition (正式國際展覽) section 9(3) Regular national filing (正規國家提交) section 15(4) Section: | 3 | Ownership of designs | | 30/06/1997 |
- (1) Subject to subsections (2) to (5), the designer of a design shall be treated for the purposes of this Ordinance as the original owner of the design.
- (2) Where a design is created in pursuance of a commission for money or money's worth, the person commissioning the design shall, subject to any contrary agreement between the parties, be treated as the original owner of the design.
- (3) Where, in a case not falling within subsection (2), a design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the original owner of the design.
- (4) Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the original owner, either alone or jointly with the original owner, that other person or, as the case may be, the original owner and that other person, shall be treated for the purposes of this Ordinance as the owner of the design or as the owner of the design in relation to that article.
- (5) In the case of a design generated by computer in circumstances such that there is no human designer, the person by whom the arrangements necessary for the creation of the design are made shall be deemed to be the designer.
Section: | 4 | Application* | 2 of 2009 | 08/05/2009 |
Subject to Part IV, this Ordinance applies to the Government and the Offices set up by the Central People’s Government in the Hong Kong Special Administrative Region. (Amended 2 of 2009 s. 7)
Note:
* (Replaced 2 of 2009 s. 7) Section: | 5 | New designs are registrable | | 30/06/1997 |
PART II
REGISTRATION OF DESIGNS
Registrable designs
(1) Subject to this Ordinance, a design which is new may, upon application by the person claiming to be the owner, be registered in respect of any article or set of articles specified in the application.
(2) A design for which an application for registration is made shall not be regarded as new if it is the same as - (a) a design that has been registered in pursuance of a prior application, whether or not that design has been registered in respect of the same article for which the application is made or in respect of any other article; or
- (b) a design that has been published in Hong Kong or elsewhere before the filing date of the application, whether or not that design has been published in respect of the same article for which the application is made or in respect of any other article,
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade. - (3) The Registrar may, in such cases as may be prescribed, direct that for the purpose of deciding whether a design is new an application for registration shall be treated as made on a date earlier or later than that on which it was in fact made.
A design is not registrable in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.
- (1) Subject to subsection (2), a design the publication or use of which would be contrary to public order ("ordre public") or morality is not registrable.
- (2) The publication or use of a design shall not be considered to be contrary to public order ("ordre public") merely because it is prohibited by any law in force in Hong Kong.
(1) Computer programs and protected layout-designs (topographies) are not registrable.
- (2) Provision may be made by rules for excluding from registration under this Ordinance designs for such articles of a primarily literary or artistic character as the rules may specify.
- (1) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of-
- (a) the disclosure of the design by the owner to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;
- (b) the disclosure of the design in breach of good faith by any person other than the owner of the design;
- (c) in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design; or
- (d) the communication of the design by the owner to a government department or to any person authorized by a government department to consider the merits of the design, or of anything done in consequence of such a communication.
- (2) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only
- (a) that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the owner of the design, at an official international exhibition;
- (b) that after any such display as is mentioned in paragraph (a), and during the period of the exhibition, a representation of the design, or any article to which the design has been applied, has been displayed by any person without the consent of the owner; or
- (c) that a representation of the design has been published in consequence of any such display as is
Section: | 6 | Designs are not registrable if appearance of article is not material | | 30/06/1997 |
Section: | 7 | Designs contrary to public order ("ordre public") or morality are not registrable | | 30/06/1997 |
Section: | 8 | Computer programs, protected layout-designs (topographies) and designs for articles of a primarily literary or artistic character | | 30/06/1997 |
Section: | 9 | Provisions as to confidential disclosure, etc. | | 30/06/1997 |
mentioned in paragraph (a), if the application for registration of the design is made not later than 6 months after the opening of the exhibition.
(3) In this section, "official international exhibition" (正式國際展覽) means an official, or officially
recognized, international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22 November 1928, and any protocols to that Convention, as revised or amended from time to time. Section: | 10 | Provisions as to artistic works | | 30/06/1997 |
- (1) Subject to subsection (2), where an application is made by or with the consent of the owner of copyright in an artistic work for the registration of a corresponding design, the design shall not be treated for the purposes of this Ordinance as being other than new by reason only of any use previously made of the artistic work.
- (2)
- Subsection (1) does not apply if the previous use consisted of or included the sale, letting for hire, or offer or exposure for sale or hire of articles to which had been applied industrially
- (a)
- the design in question; or
- (b)
- a design differing from it only in immaterial details or in features which are variants commonly used in
Cap 522 - REGISTERED DESIGNS ORDINANCE
the trade, and that previous use was made by or with the consent of the copyright owner.
(3) Provision may be made by rules as to the circumstances in which a design is to be regarded for the purposes of this section as "applied industrially" to articles or any description of articles. Section: | 11 | Provisions as to registration of same design in respect of other articles, etc. | | 30/06/1997 |
(1) Where the registered owner of a design registered in respect of any article makes an application- - (a)
- for registration in respect of 1 or more other articles, of the registered design; or
- (b)
- for registration in respect of the same or 1 or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially affect the identity thereof,
the application shall not be refused, and the registration made on the application shall not be invalidated, by reason only of the previous registration or publication of the registered design.
(2) Where any person makes an application for the registration of a design in respect of any article and either- - (a)
- the design has been previously registered by another person in respect of some other article; or
- (b)
- the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially affect the identity thereof,
then, if at any time while the application is pending the applicant becomes the registered owner of the design previously registered, subsection (1) shall apply as if at the time of making the application the applicant had been the registered owner of that design. Section: | 12 | Applications for registration | | 30/06/1997 |
Applications for registration - (1)
- An application for registration of a design shall be filed with the Registrar in the prescribed manner.
- (2)
- The application shall include-
- (a)
- a request for registration of the design;
- (b)
- a representation of the design suitable for reproduction;
- (c)
- the name and address of the applicant;
- (d)
- where the applicant is not the designer, a statement explaining the applicant's rights in relation to the design;
- (e)
- an address in Hong Kong for service of documents; and
- (f)
- such other information, documents or matter as may be required by the rules.
- (3)
- The application may include such other information, documents or matter as may be authorized by the rules.
- (4)
- The application shall be filed in one of the official languages and shall also comply with the requirements of this Ordinance and the rules as to the provision of information in, or the translation of documents into, one or both of the official languages.
(5) The application shall be accompanied by the prescribed filing fee and the prescribed advertisement fee. Section: | 13 | Multiple applications | | 30/06/1997 |
Two or more designs may be the subject of the same application for registration if the designs- - (a)
- relate to the same prescribed class of articles or to the same set of articles; and
- (b)
- comply with any prescribed conditions.
Cap 522 - REGISTERED DESIGNS ORDINANCE Section: | 14 | Filing date | | 30/06/1997 |
The filing date of an application for registration of a design is the earliest date on which- - (a) documents containing everything required by section 12(2)(a) to (c) are filed; and
- (b) the fees required by section 12(5) are paid.
Section: | 15 | Priority right | L.N. 47 of 2002 | 01/06/2002 |
- (1) A person who has duly filed an application for registration of a design in, or in respect of, a Paris Convention country or WTO member, or his successor in title, shall enjoy, for the purpose of registering the same design under this Ordinance in respect of any or all of the same articles, a right of priority for the period of 6 months after the filing date of the first application, subject to compliance with any prescribed conditions. (Amended 2 of 2001
- s. 21)
- (2) Any filing of an application for registration of a design in, or in respect of, a Paris Convention country or WTO member which is equivalent to a regular national filing under the law of that Paris Convention country or WTO member, or under any bilateral or multilateral agreement to which it is a party, shall be recognized as giving rise to a right of priority.
- (3) A subsequent application for the registration of a design that was the subject of a previous application, and that is filed in or in respect of the same Paris Convention country or WTO member, shall be considered as the first application for the purpose of determining priority if, and only if, on the filing date of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority.
(4) In this section, "regular national filing" (正規國家提交) means any filing of an application for registration
of a design in, or in respect of, a Paris Convention country or WTO member that establishes the date on which the application was filed, whatever the outcome of the application may be. Section: | 16 | Claiming priority | | 30/06/1997 |
- (1) An applicant who desires to take advantage of the priority of a previous application shall file with the Registrar in the prescribed manner a statement of priority and a copy of the previous application.
- (2) Where a statement of priority is filed in accordance with this section, the applicant shall for the purposes of proceedings before the Registrar be deemed to be entitled to enjoy the right of priority shown in the statement.
- (1) The right of priority shall have the effect that the filing date of the previous application claimed under section 16 shall be regarded as being the filing date of the application for registration under this Ordinance for the purpose of determining whether the design in question is new.
- (2) Subsection (1) shall not be construed as excluding the power to give directions under section 5(3) in relation to the application for registration under this Ordinance.
- (3) Where an application for registration of a design is filed under this Ordinance and the priority of a previous application is claimed under section 16, then, notwithstanding anything contained in this Ordinance, the application shall not be refused and the registration of the design under this Ordinance shall not be invalidated by reason only of the fact that the previous application has been published at any time after the filing date of the previous application.
- (1) An applicant may withdraw his application for registration of a design by filing a notice of withdrawal with the Registrar before the date on which preparations for publication under section 25 have been completed, as determined by the Registrar.
- (2) A notice under this section shall be-
- (a) made in writing; and
- (b) filed in the prescribed manner.
- (3) Where a notice is filed in accordance with this section, the application shall be deemed withdrawn.
- (4)
- A notice filed in accordance with this section is irrevocable.
Section: | 17 | Effect of priority right | | 30/06/1997 |
Section: | 18 | Withdrawal of applications | | 30/06/1997 |
Section: | 19 | Effect of withdrawal | | 30/06/1997 |
Where an application for registration of a design is deemed by any provision of this Ordinance to have been withdrawn, the following provisions shall apply - (a)
- the applicant shall continue to enjoy the right of priority under section 17 which he enjoyed immediately before the withdrawal; and
- (b)
- no other right may be claimed under this Ordinance in relation to the application.
Section: | 20 | Reinstatement of applications deemed withdrawn | | 30/06/1997 |
- (1)
- Where an application for registration of a design is deemed to have been withdrawn following the applicant's failure to comply with a time limit under this Ordinance (including any time limit set by the Registrar) and the applicant has by notice filed with the Registrar requested reinstatement of the application, then-
- (a)
- any deemed withdrawal of the application that occurred as a direct consequence of the failure to comply shall be deemed to be of no effect and the application shall be treated for the purposes of proceedings under this Ordinance as if there had been no such failure; and
- (b)
- any right or means of redress lost by the applicant as a direct consequence of the failure to comply shall be restored to the applicant.
(2) A notice under this section shall be- - (a)
- made in writing; and
- (b)
- filed in the prescribed manner within 1 month after such deemed withdrawal.
- (3)
- A notice under this section shall be deemed not to have been filed until the omission which constituted the failure to comply with the time limit has been made good.
- (1)
- The Registrar may amend an application for registration of a design on request made to him by the applicant in the prescribed manner.
- (2)
- An application for registration of a design shall not be amended under subsection (1) if, as a result of the amendment, the scope of the application would be increased by the inclusion of any matter that was not in substance disclosed in the application initially filed.
- (1)
- Where a request for amendment of an application for registration of a design has been granted under section 21, and the amendment has the effect of excluding one or more designs from the application initially filed, the applicant may at any time while the initial application is pending make a further application, referred to in this section as a "divisional application", for registration of the design or designs so excluded.
- (2)
- A divisional application shall be entitled to the filing date and the priority date, if any, of the initial application.
Expanded Cross Reference:
32, 33, 34
- (1)
- The provisions of sections 32 to 34 (which relate to rights in registered designs) apply, with necessary modification, in relation to an application for registration of a design as they apply in relation to a registered design. <* Note- Exp. x-Ref: Sections 32, 33, 34 *>
- (2)
- In section 33, as it applies in relation to an application for registration of a design, the reference in subsection (1) to the registration of a design shall be construed as a reference to the making of the application.
Section: | 21 | Amendment of applications | | 30/06/1997 |
Section: | 22 | Division of applications after amendment | | 30/06/1997 |
Section: | 23 | Rights in applications | | 30/06/1997 |
(3) In section 34, as it applies in relation to a transaction, instrument or event affecting an application for registration of a design, the references to the registration of particulars, and to the making of an application for the registration of particulars, shall be construed as a reference to the giving of written notice to the Registrar of those particulars. Section: | 24 | Examination of applications | | 30/06/1997 |
Examination and registration - (1) If an application for registration of a design has been accorded a filing date under section 14 and has not been withdrawn, the Registrar shall examine the application to determine whether it satisfies the formal requirements.
- (2) Where the Registrar determines that there are deficiencies as regards the formal requirements, he shall notify the applicant and give him an opportunity to correct the deficiencies within the prescribed period.
- (3) If any deficiencies as regards the formal requirements are not corrected within the prescribed period, the application shall be deemed to be withdrawn.
- (4) In this Ordinance, "formal requirements" (形式上的規定) means such requirements of section 12 and of any rules made for the purposes of that section as are specified in the rules as being the formal requirements.
Section: | 25 | Registration and publication | L.N. 40 of 2004 | 07/05/2004 |
If on an examination by the Registrar under section 24 an application for registration of a design is found to have satisfied the formal requirements, then as soon as practicable after such examination, but subject to section 26, the Registrar shall- - (a) register the design by entering the prescribed particulars in the Register;
- (b) enter the name of the applicant, or the successor in title to the application, in the Register as the owner of the design;
- (c) issue a certificate of registration to the person who is the registered owner of the design at the time the design is registered; and
- (d) advertise the fact of such registration and publish a representation of the design by notice in the official journal. (Amended 2 of 2001 s. 26)
Section: | 26 | Refusal of applications | | 30/06/1997 |
- (1) The Registrar may refuse an application for registration of a design if, after an examination by him under section 24 and after giving the applicant the opportunity to correct any deficiencies as provided for in that section, he determines-
- (a)