In this issue, we provide an overview of the test the registered owners have to satisfy in order to establish that their rights in the registered design have been infringed.

Registration of Design
Designs are registered and protected in Hong Kong under the Registered Designs Ordinance (Cap 522) (“RDO”). A “registrable” design means any 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. Article is defined under section 2 of the RDO to mean any article of manufacture and includes any part of an article if that part is made and sold separately.

Under the RDO, the registered owner enjoys the exclusive right to sell, hire, or offer or expose for sale or hire in Hong Kong any articles in respect of which the design is registered and to which that design or a design not substantially different from it has been applied. The registered owner can also make in Hong Kong or import into Hong Kong such article for sale or hire or for use for the purpose of trade or business. Once registered, the owner enjoys protection of up to 25 years, starting from the filing date of the application (and subject to payment of renewal fees every five years).

Infringement of registered design
Section 31(2) of the RDO concerns infringement of the right in a registered design. It is an infringement if a person without the consent of the registered owner and while the registration is in force:

1.         Does anything which is the exclusive right of the registered owner (set out above);
2.         Makes anything for enabling any infringing article to be made in Hong Kong or elsewhere;
3.         Does anything in relation to a kit[1] that would constitute an infringement of the design if it had been done in relation to the assembled article; or
4.         Makes anything for enabling a kit to be made or assembled, in Hong Kong or elsewhere, if the assemble article would be such an infringing article.

Test of Infringement
However, it is not always easy to judge whether an act done by a person falls within the ambit of the registered owner’s exclusive rights.

In Valor Heating Co Ltd v Main Gas Appliances Ltd [1973] RPC 871, the Court was asked to adjudge on whether the Defendant has infringed the rights of the Plaintiff in the design of a gas fire. Whitford J held that infringement must be considered “not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether the same article is the one you originally saw.” This is also known as the test of imperfect recollection.

Having considered that the plaintiff’s fire had a generally square appearance whereas the defendant’s was very much squatter and in an oblong shape, and that the side plates gave  very different appearances to the two gas fires, Whitford J held that the defendant’s fire was substantially different from the fire of the registered design, hence no infringement could be established.

The same test was adopted in the Hong Kong case of Tang Fun Kee Manufacturing Co Ltd v Fortuna Plastic Manufactory [1980] HKC 555. The plaintiff in this case registered a design for a lantern with a torch and a fluorescent tube in the same body. The plaintiff then sued the defendant for infringement of its registered design as well as copyright. For the test of infringement, Barker J held that only the shape and configuration and not the object for which the article was made must be considered. The Court was entitled to look at the article manufactured from the registered design and lay that side by side with the alleged infringing article and make a comparison.

Barker J considered the cross section of the articles – the plaintiff’s article was basically square whereas the defendant’s article was roughly hexagonal. The tops of the two articles were also different – the top of the plaintiff’s article was flat whereas that of the defendant’s article was peaked, removable and placeable on the base. The back of the defendant’s article was different in profile and position from that of the plaintiff’s article. Yet, despite the above identified differences, having applied the test of imperfect recollection, Barker J did not take the view that the two articles were substantially different and held that there had been infringement by the defendant.

Damages
Once liability is established, the infringer may be held liable for damages, injunction, account of profits or other relief available to the plaintiff as is available in proceedings in respect of the infringement of other proprietary rights.[2] However, section 51 of the RDO specifically provides that damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for believing, that the design was registered. Thus, registered owners should always protect their interests by having the registered design number printed on their products in a prominent place.

Conclusion
In determining whether there has been infringement of registered design, the Court will consider whether the alleged infringement is the same, or not substantially different from the registered design. The Court will have regard solely to the shape and configuration (but not purpose) of the article manufactured from the registered design and the alleged infringing article, and decide, on its impression, whether the two are the same or not substantially different.

[1]    “Kit” means a complete or substantially complete set of components intended to be assembled into an article. [2] Section 48 RDO

For enquiries, please contact our Intellectual Property & Technology Department:

E: ip@onc.hk

T: (852) 2810 1212

W: www.onc.hk

F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised 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.