|List of Abbreviations|
|CNIPA||China National Intellectual Property Administration|
|Hong Kong||The Hong Kong Special Administrative Region of the People’s Republic of China|
|IPD||Intellectual Property Department of the Hong Kong Special Administration Region|
|Locarno Classification||International Classification for Industrial Designs|
|Registrar||Registrar of Designs|
|RDO||Registered Designs Ordinance (Cap. 522)|
|RDR||Registered Designs Rules (Cap. 522A)|
|WTO||World Trade Organization|
Registration of the design of your product offers protection of your design by enabling you to stop unauthorised manufacture, import, sale or hiring of your design product in Hong Kong. If you intend to manufacture, import, sell or offer for hire your design product (or license someone else to do so) in Hong Kong, you should register your design in Hong Kong.
As intellectual property protection is generally territorial in nature, applying for registration of a design in the Mainland or elsewhere in the world does not automatically give registered design protection in Hong Kong.
If you do not register your design in Hong Kong, you will still have protection of articles produced from your original design drawings under copyright law which lasts for 15 years from first marketing of the article, but such form of protection has limitations. For instance, there is no copyright infringement if another person independently produces a same/similar design without copying. But if a design is registered, the registered owner may take infringement action against a same/similar design of others by virtue of the registration, even if the latter was independently created. It may also help defend your right if the design is registered.
You should consult agents or law firms specialising in intellectual property practice for professional advice to defend your rights.
Generally, a registered design owner, or an exclusive licensee in his own name, can bring civil proceedings for infringement. Infringement proceedings can be brought for infringements committed after the date on which the certificate of design registration is issued.
No, you yourself or your agent can file an application to register your design in Hong Kong provided that you have an address in Hong Kong for service of documents.
If you appoint an agent for filing an application to register your design, your agent is required to notify the Registrar of the address in Hong Kong where your agent resides or carries on his business activities.
We recommend that you seek professional advice from agents or law firms specialising in intellectual property practice. You need to ensure that your application for registration in Hong Kong will not prejudice your application in another country where you may need protection. In some cases, seeking design registration alone may not adequately protect your intellectual property rights underlying your products.
You must provide an address in Hong Kong where you reside or carry on your business activities. Otherwise the Registrar will refuse to recognize you as an agent.
Only new designs are registrable. If you disclose your design before filing an application for design registration in any way, for example, by publishing it in a catalogue, placing an order to manufacture the design product or displaying such product in an exhibition, your design will no longer be considered as new as at the application date. As such, you should keep your design confidential until you have filed an application to register it. Otherwise, any prior disclosure of your design may subsequently render the validity of your registered design open to challenge notwithstanding your registration.
It is only in limited circumstances that prior disclosure of a design does not destroy the novelty of the design. These limited circumstances are set out in section 9 of the RDO and include disclosure in confidence. If you need to disclose your design before filing an application to register it, you should seek professional advice to ensure how your design can be disclosed in confidence.
Display of your design at an “official international exhibition” as defined in section 9(3) of the RDO, i.e. an exhibition falling within the terms of the 1928 Convention on International Exhibitions, before filing an application to register your design in Hong Kong will not destroy the novelty of your design provided that an application to register your design is subsequently filed with the Registrar no later than 6 months after the opening of such exhibition. Please however note that such kind of exhibition is rarely held and not every exhibition held in Hong Kong is regarded as an “official international exhibition” in this context. Therefore, you should double-check the status of the exhibition in which you intend to disclose your design before filing the registered design application.
Updates to the list of official international exhibitions are available from the Bureau International des Expositions, 34, Avenue d'Iéna, 75116, France or can be viewed at http://www.bie-paris.org.
If your application is in order, a certificate of registration will be issued within three months from filing.
You need to file an application with the Registry of the IPD.
You may need to consult agents or law firms specialising in intellectual property practice for professional advice on filing your application.
The section Apply for a registered design on our website explains the procedures and documents required for filing an application to register a design in Hong Kong. Please click to download designs application forms.
To complete the field “Applicant type” in Part 02(d) of Form D1(paper form)/Part 03(d) of Form D1(electronic form) or the field “New applicant/proprietor type” in Part 05(d) of Form D5, you have to indicate whether you are an individual, incorporated entity or unincorporated entity.
The Locarno Classification published by the World Intellectual Property Organization is the system adopted for classifying design articles. The Locarno Classification is "solely of an administrative character" for facilitating design searches and obviating substantial reclassification work when documents are exchanged at the international level. You can refer to the latest edition of the Locarno Classification at http://www.wipo.int/classifications/fulltext/locarno/enmain.htm.
"Article" is defined in section 2 of the RDO as "any article of manufacture and includes any part of an article if that part is made and sold separately". Accordingly, you should state the article (whether it is an article of manufacture or part of an article) to which the design applied for registration applies in Application Form D1.
For example, if you wish to seek registration of a design in respect of ornamentation for handbags, the article and the classification should be stated as Ornamentation for handbags and 3-01 respectively in Application Form D1.
A statement of article identifies the article(s) to which the design is intended to be applied. Your application should include a statement of article in Box 05 of the Form D1. The statement must be specific. Vague, general, or descriptive terms, fanciful names or trade marks should not be used. The statement must be made in both English and Chinese with the same and consistent meaning, and should be no more than 50 words for each language.
Your application, except for certain types of designs such as a textile design, should contain a statement of novelty describing the features of the design which you consider to be new. You can claim novelty for shape, configuration, pattern and/or ornament of an article. The statement of novelty is usually expressed as:
The features of the design for which novelty is claimed are the (*pattern, ornament, shape and/or configuration) of the article as shown in the representations.
(*delete as appropriate)
The statement of novelty in both English and Chinese must be included in the application form.
A “set of articles” are two or more articles of the same general character and of the same design or of the design with certain variations as stated in the definition of “set of articles” under section 2 of the RDO that are ordinarily on sale together or intended to be used together (for example, a tea set containing a tea pot and cups).
The statement of novelty for a set of articles must indicate that the articles in the set have the same (or sufficiently similar) new features of shape, configuration, pattern and/or ornament (for example, each article in a tea set bears the same pattern).
No. You only need to file a copy of the certificate for claiming priority.
No. You may file a copy of the translation of the document if the translation states the name of the translator and his official capacity, if any.
If you amend your design application and the amendment has the effect of excluding one or more designs from your application, you can, at any time while your application is pending, transfer the excluded designs to a new application known as a divisional application.
A divisional application has the same filing date and priority date as the initial application.
Certain time limits (for example, section 15(1) of the RDO on claiming a priority right and section 29(2) of the RDR on renewal of a design registration) are not extendable. The Registrar has no discretion to grant extension of time in these cases.
For extendable time limits, the request for extension of time may be filed before or after the relevant period in question has expired (for example, section 22(2) of the RDR on correction of deficiencies regarding the formal requirements).
We understand that in circumstances of force majeure (such as earthquake or other natural disaster), it may be difficult for affected applicants or parties to meet the specified time limits in relation to their registered design applications and design registrations. Due to the confines of our statutory obligations and powers, we have no discretion to initiate extension of time limits across the board.
You should review your filings in relation to registered design applications and design registrations and in accordance with the RDO and the RDR, consider filing requests for extension of time in applicable cases in the interim to preserve your position before the expiry of specified time limits. We may take into account the extraordinary circumstances faced by affected applicants or parties in considering their requests for time extension on a case by case basis.
For computation of time in respect of filing of documents with the Registry under the RDO and the RDR, if the last day of a time period for filing of documents is a day on which Tropical Cyclone Signal No. 8 or above or a Black Rainstorm Warning Signal (“the signal”) is in force throughout or for part of the day, such deadline shall be extended to the next following business day of the Registry.
The typhoon and rainstorm warning arrangements set out in the above paragraph still apply even if the signal is in force for part of the day which is outside the business office hours of the Registry. For example, if Typhoon Cyclone Signal No. 8 was in force during the period from 1:00 a.m. to 3:00 a.m. only on the last day of a time period for filing of documents, the deadline shall be extended to the next following business day of the Registry.
For details, please refer to paragraph (d) of the "NOTICE OF BUSINESS HOURS AND BUSINESS DAYS OF THE TRADE MARKS REGISTRY, PATENTS REGISTRY AND DESIGNS REGISTRY" published in the Hong Kong Intellectual Property Journal on 14 September 2018.
In general, such deadline will be extended to the next or first business day of the Registry following the day on which the interruption ends. Notwithstanding such extension of deadline, if the renewal fee is paid via our e-filing system after lapse of the original deadline but before the lapse of the extended deadline, due to system constraint, the e-filing system will still require you to pay an additional fee for the “late” payment. In such cases, you are fully entitled to request refund of such additional fee afterwards.
Whilst we will update the entries in the online register of designs as best as we can, there may still be discrepancies in exceptional cases. In case you notice that the status of your registered design application or design registration is not correctly shown on the online register, please contact us so that we can into your case accordingly.
We do not accept cash delivery (i.e. cash sent through mail or our drop-box, if in place) for payment of any fee in relation to any matter or proceedings before the Registrar.
Non-acceptance of cash delivery leads to non-acceptance of its accompanying forms/documents, if any, to be filed with the Registrar, which can seriously prejudice filers’ interests, such as:
The Government accepts NO liability for any loss or damage whatsoever arising from or in connection with any cash delivery.
The relevant rules and regulations on refund are:
Where a fee is paid in error or in excess of the amount specified, the amount paid in error or the excess amount received would be refunded.
The Registry will not accept any unpaid or underpaid mail items. Please ensure your mail items bear sufficient postage before posting. Any mail items bearing insufficient postage will be returned or disposed of by the Hongkong Post. For details, please refer to the Hongkong Post website.
No, the design registration gives you protection in Hong Kong only. To acquire protection outside Hong Kong, you will need to apply for registration in each country or territory in which you need protection. For this purpose, you may need to consult agents or law firms specialising in intellectual property practice for professional advice on filing your application outside Hong Kong.
Your application for design registration in Hong Kong can give you a right of priority for a subsequent corresponding application (if it is filed within six months) to protect your design in the Mainland or any Paris Convention country or WTO member. Please refer to the question below for further information on the relevant requirements and procedures for claiming priority in the Mainland on the basis of a design application in Hong Kong.
Yes. If you have first filed an application for registration of a design in Hong Kong (“the Hong Kong application”), you may claim priority on the basis of the Hong Kong application in a design patent application for the same subject matter that is subsequently filed with the CNIPA (“the Mainland application”). To claim priority, the Mainland application must be filed with the CNIPA within six months from the date of filing of the Hong Kong application.
The documentary requirements are as follows:
The applicant must also submit to the CNIPA, within three months after the Mainland application is filed, a copy of the Hong Kong application which is duly certified by IPD.
To obtain certified copies of documents from IPD, an applicant should file Form D10 with the Registry together with the prescribed fee. For the purposes of claiming priority in the Mainland, the applicant may request the Registry to certify copies of the following documents which constitute the Hong Kong application:-
If the applicant fails to provide the written declaration or to meet the time limit for submitting a copy of the Hong Kong application, the priority claim shall be deemed not to have been made.
An applicant may claim one or more priorities for the Mainland application. Where priority is claimed on the basis of several Hong Kong applications, the priority period for the Mainland application is calculated from the earliest priority date.
You may consider adopting the following strategies to protect your design: