Safeguards available to non-registered owners of registered designs
Safeguards against abuse of the rights granted by registered designs have been built in under the Registered Designs Ordinance.
Remedies for groundless threats
Where a person by circulars, advertisements or otherwise threatens another person (“aggrieved party”) with proceedings for infringement of a registered design (other than an infringement alleged to consist of making of an article for sale or hire or the importing of anything), the aggrieved party may initiate proceedings against the party making the threats if he can prove that the threats were made and that he is a person aggrieved by such threats. However, a notification of the existence of a registered design does not of itself constitute a threat of proceedings.
The registered design owner may, by way of defence, prove that the acts in respect of which proceedings were threatened would constitute an infringement of a registered design; whereupon the aggrieved party shall not be entitled to the relief claimed unless he can show that the registration of the design concerned is invalid.
The relief available is (a) a declaration to the effect that the threats are unjustifiable, (b) an injunction against the continuance of the threats, and (c) damages.
Revocation of registered design
Any person may initiate proceedings in court to revoke the registration of a design on the grounds that the design was not new or was not registrable for any other reason. The validity of registration can also be challenged by a defendant in an infringement action.