What is a registrable design? 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 and are judged by the eye, which excludes feature of shape that are dictated solely by the function which the article has to perform. A design must have “eye appeal” to be registrable, which means that the aesthetic elements of the design must have influence over a customer to purchase the article. Also, to be registrable, a design must be “new”. Any prior design which has been registered or published in Hong Kong or elsewhere would render a later design with same appearance “not new” and thus not registrable. Application process The application process for a registered design is simple and fast in Hong Kong. The applicant has to file an application form together with drawings or photos showing clear representations of the design, together with a statement of novelty. An application for registered design in Hong Kong is only subjected to formality check and not substantive examination, that is, the Designs Registry will not conduct searches for prior registered or published designs to check whether the design applied for is new. The advantage of this is that it can speed up the application process. But the drawback is that a design so registered is prone to be revoked for lack of novelty, if there is a prior registered or published design with same appearance. Revocation of a design registration Under section 45 of the RDO, on an application by any person, the Court can order a design registration to be revoked on the ground that the design was not new or not registrable for other reasons at the time of its registration. In the case of Burberry Asia Limited v Polo Santa Roberta Limited HCMP 2696/2009, Santa Roberta has registered 3 designs in relation to patterns on textile which Burberry contended were nearly identical to its well-known design patent “Burberry Check”. In considering whether the 3 design registrations met the requirement of novelty, the Court stated that the question was whether the two appearances of competing designs were substantially the same and that the eye, and the eye alone, was to be the judge of identity. Further, it is a legal principle that difference in colors usually would not be taken into account in determining whether the competing designs are substantially similar or different. In the end, the Court held that the 3 designs registrations were not new at the time of registration and were ordered to be revoked. Another example of revocation of a design registration can be found in the case of Elster Metering Ltd v Billions Ltd HCMP 1951/2006 which concerned the designs for a water meter and certain internal component parts. The Court in that case held that the design on the shape of the component parts of the measuring chamber had no appeal to eye as the design was dictated solely by the function and it could not affect the decision of a consumer whether to purchase the water meter or not. Conclusion
While it is easy to register a design in Hong Kong, there is also a risk that the design registration is subject to revocation. Therefore, it is advisable to conduct a search on the record of prior design registrations before the submission of a design application.
The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
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Published by ONC Lawyers © 2013