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Intellectual Property Rights in Hong Kong

Trademarks

A trademark is defined under the Trade Marks Ordinance (Cap 559) (“TMO”) as any distinctive sign, capable of being represented graphically, which distinguishes the goods or services of one undertaking from those of other undertakings.
 
Trading names, signatures, newly invented words, geographical names, distinctive packaging, smells, sounds, and colors can be registered as trademarks. 
 
Registration, renewal, and protection of trademarks are both governed by the TMO. In order to obtain protection as registered trademarks in Hong Kong, trademarks must be registered under the TMO, with the Intellectual Property Department (“IPD”). 
 
The owner of a registered trade mark has the rights and is entitled to certain remedies under the TMO if other traders use the registered trade mark in Hong Kong in relation to the same or similar goods or services without the owner’s consent.
 
The application of the registered trademarks should specify the class(es) of goods/services in respect of which the trade mark is proposed to be registered, in accordance with the Nice Classification (10th Edn, World Intellectual Property Organization). Classes Nos. 1 to 34 are applicable to goods while Class Nos. 35 to 45 are applicable to services. 
 
Patents 
 
An invention which is new can be patented in Hong Kong, as long as it is susceptible to industrial applications and does not belong to the excluded classes of invention.
 
Once a patent is granted, the party will have the exclusive right to use the invention. If other people use it in the course of trade or business in Hong Kong without the consent of the patent owner, they may be liable for infringement of the patented invention and the patent owner may take legal action against them.
 
The patent registration system of Hong Kong provides territorial protection. Registration procedure shall comply with the Patents Ordinance (Cap 514), and the Patents (General) Rules (Cap 514C).
 
Patentability

The registration of patents must meet five requirements and they are (1) novelty; (2) inventive step; (3) have utility; (4) be described fully; and (5) be capable of industrial application.
 
The invention is not patentable if it is: (1) a discovery; (2) a scientific theory or mathematical method; (3) an aesthetic creation such as a literary, dramatic, or artistic work; (4) a scheme or method for performing a mental act, playing a game, or doing business; (5) the presentation of information, or a computer program, although if the invention involves more than these abstract aspects, so that it has physical features, then it may be patentable; or (6) an invention if it is a new animal or plant variety; a method of treatment of the human or animal body by surgery or therapy; or a method of diagnosis.
 
Standard and short-term patents
 
There are two types of patents in Hong Kong: standard and short-term patents. Protection under standard patents is renewable annually for a maximum term of twenty years. Protection under short-term patents is renewable after four years from filing, for a maximum term of eight years. The Registrar of Patents examines every patent application to ensure that it meets the formal filing requirements. However, IPD does not conduct substantive search and examination of the novelty or inventiveness of the invention.
 
The grant of a standard patent in Hong Kong is based on the registration of a patent granted by one of three patent offices, called “designated patent offices”: 

  • The State Intellectual Property Office, People’s Republic of China;
  • The European Patent Office, in respect of a patent designating the United Kingdom; and
  • The United Kingdom Patent Office.
A standard patent application in Hong Kong is made in two stages by filing: 
  • a request to record the designated patent application, that is the Chinese, EP(UK) or UK published patent application (stage 1); and
  • a request for registration and grant in Hong Kong of the Chinese, EP (UK) or UK granted patent (stage 2).
To register a short-term patent, the application should be made directly with the IPD. The rationale of a short-term patent is to supplement the standard patent system by offering protection to inventions of a shorter commercial life. The registration requires filing a search report issued by an international searching authority or any one of the three designated patent offices, namely the PRC, the UL or European Patent Offices. Therefore, the application is not based on a substantial examination on patentability and can offer a fast and inexpensive means for protecting simple inventions. 
 
Registered Design
 
According to the Registered Designs Ordinance (Cap 522), designs mean features of shape, configuration, pattern, or ornament applied to an article by an industrial process, being features which in the finished article appeal to and are judged by the eye. It does not include: a method or principle of construction; or features of shapes or configurations which are dictated solely by the function which the article has to perform, or dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
 
Registered design owners have the right to prevent others from manufacturing, importing, using, selling, or hiring the design product. The period of protection of a registered design is renewable for periods of five years and up to a maximum of 25 years.
 
To be registrable, the designs must be new at the time of the filing of the application for registration and be dissimilar or non-identical to any earlier registered designs (i.e. novelty).
 
The Registered Designs Ordinance (Cap 522) and the Registered Designs Rules (Cap 522A) of Hong Kong organise territorial protection of designs in Hong Kong.
 
Copyright    
 
A copyright is the right given to the owner of an original work. This right can subsist in: literary works, computer software, musical compositions, dramatic play, artistic works such as drawings, painting, and sculptures, sound recordings, films, broadcasts, editions of literary, as well as performances. Copyright works made available on the internet are also protected.
 
In fact, the subsistence of copyright does not require the work to have an aesthetic value, nor to be clever, nor very creative. it exists even in an item as simple as a photograph taken by an ordinary person in daily life.
 
Copyright is an automatic right and arises when a work is created. Unlike other Intellectual Property rights such as patents, trademarks, and industrial designs, it is not necessary to register a copyright in Hong Kong in order to get protection under the law.


November 2015

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