Design Protection in Hong Kong
What is a design?
Design elements of a wide range of products such as the shape, configuration, pattern or ornament of an article can be registered as registered designs provided that they appeal to and can be judged by the eye in the finished article.
Owners of registered designs have the right to prevent others from manufacturing, importing, using, selling or hiring out their design products.
Territorial protection of registered designs
The design registration system of Hong Kong provides territorial protection. Hence, designs registered with the State Intellectual Property Office of the People’s Republic of China or designs registries of other countries or regions do not automatically receive protection in Hong Kong. In order to obtain protection as registered designs in Hong Kong, designs must be registered under the Registered Designs Ordinance (Chapter 522) and the Registered Designs Rules (Chapter 522A) of Hong Kong.
Why register a design?
If you have registered a design, you will have the exclusive right to the design in relation to the article for which the design is registered. If other people use it in the course of trade or business in Hong Kong in relation to the same or similar articles without your consent, they may be liable for infringement of your design and you may take legal action against him.
The period of protection of a registered design is renewable for periods of five years, up to a maximum of 25 years.
Filing your design application
You should complete the application form and fill in an address for service in Hong Kong and send it to the Designs Registry (the “Registry”) of the Intellectual Property Department (IPD) of the Government of the Hong Kong Special Administrative Region (HKSAR). The application fee for the registration of a single design includes a filing fee of HK$785 and an advertisement fee of HK$155. For the details of the application forms and fees, please refer to the website of IPD of the HKSAR Government.
How to classify the articles?
You must list out in your application form the articles in respect of which you wish to register your design. You should also classify the articles according to the class or classes in the International Classification for Designs (“the Locarno Classification”). You may refer to the latest edition of the Locarno Classification.
If you wish to apply for registration of a design in respect of “graphic symbols and logos, surface patterns, ornamentation” in Class 32 sub-class 00 of the Locarno Classification, you need to specify the article(s) to which the Class 32 sub-class 00 items are to be applied. For example, if you wish to seek registration of a design in respect of an “ornamentation” and the ornamentation is to be applied to handbags, you may specify the article as “ornamentation for handbags” in your application for registration.
If you file an application for registration of design and wish to claim priority in your application based on a previous application for registration of the same design filed in a Paris Convention country or a World Trade Organization member, you are required to specify the article and the class in your application form as mentioned in the preceding paragraph even if such previous application is classified in Class 32 sub-class 00.