It is beyond doubt that giving your products a distinctive and conspicuous look adds value to your business. The problem is – how do you protect your designs from being copied?
What is protected under the Registered Designs Ordinance?
The Registered Designs Ordinance (Cap.522) protects the design of a product or any of its part that can be made and sold separately. The design must be registered with the Designs Registry of the Intellectual Property Department to be subject to protection under the Ordinance.
A design refers to features of shape, configuration, pattern or ornament applied to the product. Design registration protects only the appearance of the product but not its functional features. For instance, assuming the Coca-Cola glass bottle is a registered design, design registration protects only the specific appearance and colour of the bottle, but not the way in which coke is stored in the glass bottle. The look of a laptop pay be protected if its design is registered, but the registration does not protect the specific functions of such laptop.
What designs are eligible for protection?
Only new designs are registrable. A design cannot be regarded as new if:
- it has been registered previously in respect of any article;
- it has been published previously in any part of the world; or
- it differs from a previous design in only immaterial details or in features which are variants commonly used in the trade. However, it is possible to have the registered design by combining a number of existing designs provided that it has a distinctive quality.
A search can be done online to see what designs have already been registered.
However, please note that the Hong Kong Designs Registry carries out only a formality check, meaning that the Design Registry will only check if applicants have submitted the appropriate fees and documents will not ascertain if the design of the application is new. The issue of new design is only material in infringement proceedings, where the infringing party could raise the defence that your design is not “novel” and therefore should not have, in first place, been registered and protected. Therefore, please note that successful registration does not suggest your design satisfies the novelty requirement.
In addition, please be aware that disclosure of a design before filing an application may destroy its novelty, causing the registration to be invalid. Therefore, to ensure the validity of the registration, it is advised that you should not market your designed products in Hong Kong or anywhere else in the world before applying for registration.
What are the application procedures?
An application requires :
- filing of a completed application form (Designs Form D1),
- payment of the filing fee and advertisement fee, and
- a set of clear representation of the design.
- Application Form
Firstly, to register your designs, you need to submit a completed application form to the Designs Registry. A specimen of the completed form is available here. Please note that this form cannot be submitted electronically, including filing via the IPD e-Filing System.
- Filing and Advertising Fees
Secondly, at the time of the application, you will need to submit a prescribed filing fee and a prescribed advertising fee. The advertising fee is currently $155 per design, while the amount of filing fee varies, depending on these three factors:
- how many articles to which the design(s) is/are applied;
- how many designs you are seeking to register; and
- whether the articles form a “set” of articles (if your designs are to be applied to more than one article).
Please note that you can register more than one design in a single application only if the articles to which the designs are applied belong to the same “class” (whether they belong to the same “set” or not).
Thus, to determine the required filing fee, you should first understand the concepts of “class” and “set”:
- Articles are categorized into different “classes” according to the Locarno Classification List. Please refer to the list here to decide which class the articles of your design(s) is/are applied belong to.
- A “set” of article means “two or more articles of the same or similar design and of the same general character that are usually sold together or are intended to be used together”. For example, a tea set is a set of articles.
Using the above definitions, you will be able to find out how much you need to pay with reference to the table here.
- Representation of the Design(s)
Thirdly, you should attach to the completed application form a set of clear representation of the design. The representation can either be a drawing or a photograph. Rules concerning the size of the representation are detailed here.
After completing the abovementioned procedures, you will receive a notice which indicates the official filing date of the application. Successful applicants will receive a certificate of registration within 3 months.
Rights of a registered design owner
The registered owner of a design has the exclusive right sell and use the articles to which the design is applied. The initial period of protection is 5 years, and this protection can be renewed for additional periods of 5 years, with a maximum period of 25 years. A renewable fee will be charged for each renewal and the applicant should submit the renewal application by Form D11. Details can be accessed here.
|Checklist for your understanding You understand it is the appearance, but not the functional features of a product that is protected under the Registered Designs Ordinance. You are aware that a design has to be new to be qualified for registration. To register your design(s), you must submit to the Design Registry:a completed application form (Designs Form D1),filing fee and advertisement fee, anda set of clear representation of the design. You understand your rights as the owner of a registered design.|
 Registered Designs Ordinance (Cap.522), s.5
 Registered Designs Ordinance (Cap.522), s.12(5)
 Registered Designs Ordinance (Cap.522), s.2
 Registered Designs Ordinance (Cap.522), s.31(1)
 Registered Designs Ordinance (Cap.522), s.28