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Designs

Here you can find answers to some frequently asked questions related to registered designs

Registered design protection in the Hong Kong Special Administrative Region (the Hong Kong SAR)

Application for registration in the Hong Kong SAR

Pre-filing considerations

Filing an application to register a design in the Hong Kong SAR

Extension of time limit for proceedings before the Registrar of Designs

Term of protection and renewal of a registered design in the Hong Kong SAR

No Cash Delivery

Refund

Unpaid or underpaid mails

Design protection outside the Hong Kong SAR

Registered design protection in the Hong Kong SAR

  • What is a design?

    A “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process.

  • What is a registered design?

    The individual designs of a wide range of products, for example computers, telephones, textiles, jewellery and watches, can be protected by registration of their designs.

    Design registrations protect only the appearance of the products, for example the look of a computer monitor, but they do not protect the way in which the products work. Protection for the way in which a product works may be available under patent law whereas computer software is generally protected under copyright law.

    A registered design owner has the right to prevent others from manufacturing, importing, selling or hiring the registered design product.

    Registered design protection is renewable for periods of five years up to a maximum of 25 years.

  • Do I need to register a design to protect it in the Hong Kong SAR?

    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 the Hong Kong SAR. If you intend to manufacture, import, sell or offer for hire your design product (or license someone else to do so) in the Hong Kong SAR, you should register your design in the Hong Kong SAR.

    As intellectual property protection is generally territorial in nature, applying for registration of a design in Mainland China or elsewhere in the world does not automatically give registered design protection in the Hong Kong SAR.

    If you do not register your design in the Hong Kong SAR, 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.

  • What should I do if I see my design being used without my permission?

     You should consult agents’ or solicitors' firms specialising in intellectual property practice for seeking 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.

  • What kinds of designs are not registrable?

     Under the Registered Designs Ordinance (Cap. 522) and Registered Designs Rules (Cap. 522A), designs that cannot be registered include the following:

    1. Designs in respect of an article if the appearance of the article is not material

    2. Designs that are contrary to public order or morality.

    3. Computer programs or protected layout-designs (topographies).

    4. Designs applied to certain articles:

    – Works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process);
    – wall plaques, medals and medallions; and
    – printed matter primarily of a literary or artistic character including book jackets, calendars, certificates, coupons, dress-making patterns, greeting cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers and similar articles

    5. A method or principle of construction.

    6. Features of shape or configuration of an article which are dictated solely by the function which the article has to perform.

    7. Features of shape or configuration of an article which are dependent upon the appearance of another article of which it is intended by the designer to form an integral part.

Application for registration in the Hong Kong SAR

Pre-filing considerations

  • Do I need to appoint an agent to register my design in the Hong Kong SAR?

    You can file an application to register your design in the Hong Kong SAR 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 solicitors’ firms specialising in intellectual property practice. You need to ensure that your application for registration in the Hong Kong SAR 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.

  • If I act for an applicant as an agent, what information must I provide?

     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.

  • What is confidential disclosure of a design?

    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 Registered Designs Ordinance (Cap. 522) and include disclosure in confidence. If you need to disclose your design before filing an application to register it, you should take professional advice to ensure how your design can be disclosed in confidence.

  • Is there any exhibition in which my design can be displayed without losing its novelty before filing an application to register the design?

    Display of your design in an “official international exhibition” as defined in section 9(3) of the Registered Designs Ordinance (Cap. 522), i.e. an exhibition falling within the terms of the 1928 Convention on International Exhibitions, before filing an application to register your design in the Hong Kong SAR will not destroy the novelty of your design provided that an application to register your design is subsequently filed with the Registrar of Designs no later than 6 months after the opening of such exhibition. Please however note that such kind of exhibition is rarely held, that not every exhibition held in the Hong Kong SAR is regarded as an “official international exhibition” in this context, and that you need to 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.

Filing an application to register a design in the Hong Kong SAR

  • The field “Applicant type” in Form D1 and the field “New applicant/owner type” in Form D5

    (a) 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.

      Individual
    • If you are a natural person, or natural persons making an application in joint names, the box “Individual” should be marked.
    • For a sole proprietorship established in the Hong Kong SAR, an application is usually filed in the name of the sole proprietor trading in the name of the firm (e.g. Chan Siu-ling trading as Chan & Co.). In this case, the box “Individual” should be marked.
    • For a partnership established in the Hong Kong SAR, it is common for an application to list the names of the partners (or at least two of them) followed by the name of the firm (e.g. Chan Siu-ling and Lam Mei-mei trading as Chan & Lam). In this case, the box “Individual” should be marked.

      Incorporated
    • If you are a corporation (i.e. a company incorporated in the Hong Kong SAR, or any other body corporate incorporated/established in or outside the Hong Kong SAR), please mark the box “Incorporated”.
    • Thereafter, you may indicate the country/territory/area of incorporation in Part 02 (e) of Form D1 (paper form)/Part 03(e) of Form D1 (electronic form) or Part 05 (e) of Form D5. If the corporation is being incorporated in the United States, you may also fill in the state of incorporation in Part 02 (f) of Form D1 (paper form)/Part 03(f) of Form D1 (electronic form) or Part 05 (f) of Form D5. Such particulars, if provided by you, may be entered by the Registrar of Designs in the register of designs to enhance the transparency of the public records and also to help the Registrar of Designs and the third parties better identify the (new) owner of a design.

      Unincorporated
    • In many jurisdictions including the Hong Kong SAR, an unincorporated association is not a legal person.
    • If you are an unincorporated entity which nevertheless has legal capacity to hold property under the law of the place where it is established, please mark the box “unincorporated”.

    (b) Please note that the entity named as the applicant for/owner of a design must be capable of holding property, including the design in question. If you have any doubt as to whether you have any legal capacity to hold property, please consult your legal advisers. The Registrar is not in a position to advise you on this.

    (c) Please also note that the Registrar will not verify any information about the applicant type or place (and state) of incorporation (if applicable) as provided by you before entering such information on the register of designs. Any person who wishes to ascertain the veracity of such information should carry out independent inquiries and searches and seek independent advice, if necessary.

  • How do I classify an article in my application to register?

    The International Classification of Designs ("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 Registered Designs Ordinance (Cap. 522) 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.

  • How to write a statement of article?

    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 Designs Form D1. The statement must be specific. Vague, general, or descriptive terms, fanciful name or trade mark 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.

  • What is a statement of novelty?

    Your application, except for registration of 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.

    表述所顯示的物品的(*式樣、裝飾、形狀及／或構形)是聲稱具有新穎性的外觀設計特色。
    (*delete as appropriate)

    The statement of novelty in both English and Chinese must be included in the application form.

  • What is a set of articles?

    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 Registered Designs Ordinance (Cap. 522) 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).

  • When would I need to make a divisional application?

    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.

Extension of time limit for proceedings before the Registrar of Designs
  • What can I do if I cannot comply with a time limit in proceedings before the Registrar of Designs?

    Please note that certain time limits under the Registered Designs Ordinance (for example, section 15(1) of that Ordinance on claiming a priority right) and the Registered Designs Rules (for example, section 29(2) of that Rules on renewal of a design registration) are not extendible. The Registrar of Designs has no discretion to grant extension of time in these cases.

    For extendible 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 Registered Designs Rules on correction of deficiencies regarding the formal requirements). In some cases, the period of extension that can be allowed is specified and the grant of the extension is subject to compliance with additional statutory requirements (for example, section 20(2)(b) and (3) of the Registered Designs Ordinance on filing a notice of request for reinstatement of a design application that is deemed to have been withdrawn).

  • In circumstances of force majeure, can I obtain extension of time for meeting the time limit in proceedings before the Registrar?

    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 relating to their design applications and registrations (collectively “design filings”). 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 design filings and consider filing requests for extension of time in applicable cases in the interim to preserve your position under the Registered Designs Ordinance (Cap. 522) and the Registered Designs Rules (Cap. 522A) before the expiry of specified time limits. We may take into account the extraordinary circumstances faced by the affected applicants or parties in considering their requests for time extension on a case by case basis.

Term of protection and renewal of a registered design in the Hong Kong SAR

  • How long can protection of a registered design continue?

    Registration of a design is for an initial period of five years beginning on the filing date of the application. By paying renewal fees, the registration can be renewed for four further periods of five years, giving protection for a maximum of 25 years.

  • When should I renew my registered design?

    You should renew your registered design on or before its end date of the current subsisting period of registration.

    As regards an associated registered design, please note that such design cannot be renewed in the absence of renewal of the original registered design. As such, please ensure that the original registered design has been renewed before you file the renewal application for an associated design.

    You can check the end date of period of registration of your registered design by using the on-line search (esearch.ipd.gov.hk).

Unpaid or underpaid mails

  • What are the consequences if the document or other things sent to the Registrar of Designs by post bear insufficient postage?

    Please ensure your mail items to the Registrar of Designs bear sufficient postage before posting since any mail items bearing insufficient postage will be returned or disposed of by the Hongkong Post (please refer to the Hongkong Post website (www.hongkongpost.hk) for details). The Registrar of Designs is not responsible whatsoever for any loss or damage caused to or suffered by anyone in connection with such unpaid or underpaid mail items.

Design protection outside the Hong Kong SAR
  • Do I get protection for my design in Mainland China and overseas by virtue of my design registration in the Hong Kong SAR?

    No, registering your design in the Hong Kong SAR gives you protection in the Hong Kong SAR only. To acquire protection outside the Hong Kong SAR, 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 solicitors' firms specialising in intellectual property practice for professional advice on filing your application outside the Hong Kong SAR.

    Your application for design registration in the Hong Kong SAR can give you priority for a subsequent corresponding application to register your design within six months in any Paris Convention countries or WTO member.

 
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