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Registered Design

Design GUard

What are registrable designs?

 

Definition:
As defined in section 2 of the Registered Designs Ordinance (“RDO”), a “design” means features of shape, configuration, pattern, or ornament applied to an article by any industrial process, being features which in the finished article appeal to the eye. 
 
Some examples are as follow: 
 
(1) Three-dimensional:
  • The shape or configuration of a mobile telephone
  • The shape or configuration of a piece of jewelry
  • The shape or configuration of electrical appliances such as kettles, toasters etc
  • The shape or configuration of toys
 
(2) Two-dimensional:
  • The pattern or ornament on fabric
  • The pattern or ornament on wallpaper
 
 .

What Are Registrable Designs?

Requirement of novelty (RDO section 5(2)) – assessed on a worldwide basis

A design that has been registered in pursuance of a prior application, whether or not that design has been registered in respect of the same article for which the application is made or in respect of any other article; or

A design that has been published in Hong Kong or elsewhere before the filing date of the application, whether or not that design ahs been published in respect of the same article for which the application is made or in respect of any other article, Or 

If it differs from such a design only in immaterial details or in features which are variants commonly used in the trade 

What Are Unregistrable Designs?

Design GUard

What are Unregistrable Designs?

i) a method or principle of construction;
 
or
 
ii) features of shape or configuration of an article which are dictated solely by the function which the article has to perform;
or are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
 .

What does it mean by “features dictated solely by function”?

 

 

For instance, the designs of wallets with slots and sizes configured to carry driving licences were seen as merely performing a technical function and hence not registrable.

 

These are also unregistrable as stipulated by statute: – 

 

  • A design is not registrable in respect of an article if the appearance of the article is not material. (RDO section 6)
  • A design contrary to public order or morality (RDO section 8)
  • Computer programmes, protected layout-designs (topographies) and designs for articles of a primarily literary or artistic character are also not registrable (section 8, RDO)
 
 

 

Certain classes of designs are excluded from registration under that Ordinance:

  • 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,
  • printed matter primarily of a literary or artistic character 
  • book jackets, calendars, certificates, coupons, dress-making patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers, and similar article

How to distinguish between Registered Design and Copyright?

Scope of protection of copyright and registered designs is different:

Copyright is only good against copying. It does not provide a monopoly right. Therefore, if a similar or identical work to the copyright work is produced, it will not infringe the copyright work provided that it is not a copy of it. On the other hand, registered deign is protected even against an independent creation if that creation results in a design which is not substantially different from the registered design.

Test of infringement for copyright is relative easier

Future Suggestions

Make known your design registration

Under section 5(1) of the RDO: In proceedings for the infringement of a registered design, damages will not be awarded and no order will be made for an account of profits against a defendant who can prove that, at the date of the infringement, he was not aware and had no reasonable grounds for believing, that the design was registered. It is thus advisable to have the registered design number either printed on the packaging or advertising material and/or have it engraved or embossed on the product.

Make known of your copyright

On the same note, even though there is no legal requirement to put any copyright notice on the work, it is advisable to put a notice to warn others from copying. The purpose of such notice is to remind others that although access to the work is given, the copyright owner does not waive any claim to assert his or her ownership and exclusive rights to disallow any unauthorised reproduction of the work. Neither the absence of a copyright notice nor a “rights reserved “notice prejudice a copyright owner’s right.

Keep record of process of creation

 

Due to the lack of requirement of any registration for copyright to arise, author or copyright owners are advised and should keep a complete record of the process of creation of work from inception to completion. This is not only useful for enforcement purposes, but would be valuable in proving independent creation if faced with an allegation of copying. 

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