Jurisdiction - Hong Kong
Intellectual Property
Introduction to Intellectual Property in Hong Kong

July, 2011

 

As a Special Administrative Region of the People’s Republic of China, Hong Kong has a high degree of autonomy and will retain its own legal system until 2047.  Under the Basic Law, for intellectual property purposes, Hong Kong remains a separate jurisdiction from the rest of China.  The intellectual property laws and court decisions of the People’s Republic of China do not apply to Hong Kong.  Intellectual property rights registered or protected in Hong Kong will not extend to Mainland China and vice versa.

 

Before 1997, apart from the protection of trade marks, Hong Kong’s intellectual property laws derived from UK legislation.  Prior to the change in sovereignty, Hong Kong implemented its own copyright,registered designs and patents legislation.  A new Trade Marks Ordinance was passed on 2000. 

 

As a common law jurisdiction, the Hong Kong courts may rely on previous judgments in similar cases within Hong Kong.  They may also refer to other common law jurisdictions such as England, Australia and Canada.  Although, these are not legally binding, they can be highly persuasive, particularly where the wording of the legislation is similar. 

 

Trade Marks

 

Hong Kong has had an independent trade mark registration system for well over a hundred years.  The current Trade Marks Ordinance (Cap.559) came into force in 2003.  It is closely based on the UK Trade Marks Act 1994.

 

A trade mark is a sign that distinguishes the goods and services of one trader from those of another.  A trade mark may consist of words, personal names, designs, letters, characters, numerals or any combination of these.  Even sounds, smells or the shape of goods or their packaging may be a trade mark. 

 

Distinctiveness is a key requirement.  Invented words or logos are more likely to be registrable than marks consisting of common or descriptive words.  Words which praise the quality, function or other characteristic of goods or services are generally not registrable.  A trade mark application may also be rejected if the mark applied for resembles a prior application or registration.  Hong Kong operates an examination system and applications will be examined by the Trade Marks Registry for registrability and conflict with prior marks.

 

A trade mark registration will give the registered proprietor the exclusive right to use the trade mark in relation to the goods and services for which the mark is registered.  A trade mark registration is initially valid for 10 years from the date of application and can be renewed indefinitely for successive periods of 10 years.

 

Copyright

 

Copyright law in Hong Kong is principally governed by the Copyright Ordinance (Cap. 528).  The Ordinance is largely based on copyright sections of the UK Copyright, Designs and Patents Act 1988.  However, Hong Kong’s copyright law has developed away from the UK in many significant areas.

 

Copyright is the right given to the owner of an original work.  Copyright can subsist in literary, musical, dramatic and artistic works, computer software, sound recordings, films, broadcasts and cable programmes.

 

In order to attract copyright, a work must be “original”.  Copyright arises automatically when a work is created and fixed in a material form, usually in writing or in the form of a drawing or recording.  The duration and type of protection afforded varies according to the type of copyright work.  However, the general rule is that copyright lasts for the life of the author plus 50 years.

 

Hong Kong uniquely operates an “open qualification” system.  This means that any original copyright works created by any person and/or published by any person anywhere in the world will qualify for protection in Hong Kong.  Copyright works created in Hong Kong are recognized in other countries by virtue of international copyright conventions. Currently, Hong Kong is party to the Berne Convention, Universal Copyright Convention, the Phonograms Convention and the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights.

 

The law provides protection against acts such as unauthorised copying of a work or issuing a work to the public.  Certain dealings with infringing works are also prohibited, such as knowingly importing, exporting or selling infringing copies.

 

Hong Kong has wide-ranging criminal provisions including offences relating to dealing in and selling counterfeit works, illegal recording in public entertainment venues such as cinemas and concerts.  In addition, there are specific “business end-user” criminal provisions which prohibit the use of pirated computer software and the unauthorised copying or distribution of certain printed works, in the course of business.  Amendments to the law to address protection of copyright in the digital environment, including criminal liability for the electronic communication of works and a safe harbour for online service providers, have recently been proposed.

 

Patents

 

Patent law in Hong Kong is governed by the Patents Ordinance (Cap.514).  A Hong Kong patent is based on the re-registration of patents already granted in the UK, the European Patent Office (designating the UK) and the PRC.  International applications under the Patent Co-operation Treaty covering those countries will also qualify.  

 

A Standard Patent application is divided into two stages.  The first step involves filing a request to record a pending application in the UK, Europe or the PRC.  This must be done within 6 months of the publication of the designated overseas application.  Once the overseas application has proceeded to grant, an application for registration and grant must be filed in Hong Kong within 6 months of the grant of the designated patent application. 

 

The grant of the Hong Kong patent is dependent on the grant of the designated patent application.  However, once granted the Hong Kong patent is largely independent of the corresponding designated patent.

 

A patent protects “inventions” and covers new products, substances, methods or processes which are novel and may be applied industrially.  The invention must be “novel” – new over everything available to the public anywhere in the world as at the patent filing date. 

 

A patent will allow the patentee to stop others from using a patented process, or using, manufacturing, or selling, the patented invention without his consent. 

 

A standard patent confers a monopoly of 20 years from the date of filing the application.  A separate regime for the registration of “Short-Term Patents” protects products or processes with a short commercial life.  Applications for Short-Term Patents are made directly to the Patents Registry and are not based on any corresponding application elsewhere.  The application can cover the same subject matter as a Standard Patent and the requirements for novelty and inventive step are the same.  There is no substantive search and examination but the application must be accompanied by a search report from a prescribed searching authority.  A Short-Term Patent is valid for 8 years from the application date.

 

Registered Designs

 

The Registered Designs Ordinance (Cap.522) replaced the regime formerly based on the UK Designs (Protection) Ordinance and introduced an independent design regime to Hong Kong.  The Ordinance generally follows the UK Registered Design Act 1949. 

 

A registrable design consists of features of shape, configuration, pattern or ornament applied to an article by an industrial process.  The features must have what is known as “eye-appeal”, in that the appearance of the article must be relevant to a customer’s decision to buy the product.  

 

A registered design protects the outward appearance of a product and can be registered for a wide range of articles including appliances such as kettles and light fittings, wallpaper and textiles, jewellery, watches and toys.

 

A design registration is valid for an initial period of 5 years from the date of filing the application.  The registration may be renewed for 4 further periods of 5 years, for a total of 25 years.

 

A design registration will prevent the unauthorised manufacture, import, use, sale or hiring items which look the same as the registered design in Hong Kong.  In deciding whether there has been infringement, one must look at whether the substance of the registered design has been taken. 

 

Protection of Integrated Circuit Designs

 

The Layout-Design (Topography) of Integrated Circuits Ordinance (Cap.445) protects original layout designs of integrated circuits created after 31 March 1994.  The Ordinance confers a right similar to copyright and prevents the reproduction or commercial exploitation of a protected layout design, an integrated circuit in which the protected layout design is incorporated, or an article containing the integrated circuit in which the protected layout is incorporated.

 

Protection is for 10 years after the product is first commercially exploited or, if not commercially exploited, then 15 years from creation.

 

Passing-Off

 

This is a common law action that can be used to protect an unregistered trade mark, trade name or an individual’s name or reputation and the look of a particular product including packaging.  In order to establish passing off, it is necessary to show that the plaintiff has a reputation or goodwill in Hong Kong, that a misrepresentation is being made in the course of trade which will confuse the public into believing that his business or goods and services are those of the plaintiff’s, or that they are somehow associated; and that the misrepresentation is likely to cause damage to the business or goodwill of the plaintiff.

 

Passing off can be used to prevent all sorts of misrepresentations that cause confusion and damage to a plaintiff.  The categories of potentially actionable misrepresentations are not exhaustive.

 

Conclusion

 

China recently became the world’s second largest economy, overtaking Japan and, with China’s economic development showing no signs of slowing down, Hong Kong’s historic role as the go-between for China and the rest of the world, becomes more important than ever.  Hong Kong’s comprehensive intellectual property regime supports Hong Kong’s position as an international trading centre and stepping stone to China. 

 

 

For further information, please contact:


Charmaine Koo, Deacons 

charmaine.koo@deacons.com.hk

 

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