Patents, trade marks, copyright and designs in Hong Kong: overview

A guide to intellectual property law in Hong Kong. The IP in business transactions Q&A gives an overview of maintaining an IP portfolio, exploiting an IP portfolio through assignment and licensing, taking security over IPRs, IP and M&A transactions, and the impact of IP on key areas such as competition law, employees and tax.

To compare answers across multiple jurisdictions, visit the IP in business transactions: Country Q&A tool.This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Mena Lo, Wilkinson & Grist
Contents

Patents

1. What are the legal requirements to obtain a patent?

To be patentable, an invention must:

  • Be new.

  • Be capable of industrial application.

  • Involve an inventive step.

 
2. What categories are excluded from patent protection?

The following are excluded from patent protection:

  • Discoveries, scientific theories or mathematical methods.

  • Aesthetic creations.

  • Schemes, rules or methods for performing mental acts, playing games or doing business.

  • Computer programs.

  • Presentation of information.

  • Methods for treatment of humans or animals..

  • Inventions contrary to public order or morality.

  • Plants or animal varieties.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

Patents Registry, Intellectual Property Department registers patents. Guidance is available on its website, www.ipd.gov.hk.

 
4. On what grounds and when can third parties oppose a patent application?

There is no mechanism for third parties to oppose a patent application.

However, the validity of patents can be challenged in infringement proceedings:

  • . As part of a defence to an infringement claim.

  • To show that threats of infringement are groundless where a declaration for non-infringement of a patent is sought.]

Validity can also be challenged in proceedings for:

  • Revocation.

  • Disputes over Government use of a patent.

 
5. When does patent protection start and how long does it last?

Protection for standard patents lasts for 20 years from the date of filing.

For short-term patents, protection runs for eight years from the date of filing.

Both patents take effect from the date on which the grant is published.

 
6. On what grounds can a patent infringement action be brought?

A patent infringement action for a product patent can be brought on the following grounds:

  • Making, putting on the market, using or importing the product.

  • Stocking the product.

For a process patent, an infringement action can be brought on the grounds of either of the following grounds:

  • Using the process.

  • Offering the process for use in Hong Kong when the third party knows, or it is obvious to a reasonable person that such use is prohibited.

An infringement action can be brought against a third party for a product obtained directly by means of a process patent for:

  • Putting on the market, using or importing or stocking the product.

  • Supplying or offering to supply means relating to an essential element of the invention when the third party knows or it is obvious that such means are suitable or intended for putting that invention into effect.

 
7. Which courts deal with patent infringement actions?

The High Court deals with infringement actions.

 
8. What are the defences to patent infringement actions?

The following defences can be used:

  • . Claimant has no good title to the patent.

  • Patent is invalid because it is not patentable.

  • There has been no infringement.

  • Acts done privately for non-commercial purposes.

  • Acts done for experimental purposes

 
9. What are the remedies in patent infringement actions?

Remedies include:

  • Injunction.

  • Delivery up or destruction of infringing articles.

  • Damages or account of profits.

  • Disclosure.

  • Declaration that the patent is valid and has been infringed by the defendant.

  • Costs.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no specific fast-track or small-claims procedure for patent infringement actions.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

To be registered as a trade mark, a sign must be:

A trade mark may consist of:

  • Capable of distinguishing the goods or services of one undertaking from those of others.

  • Capable of being represented graphically.

 
12. Is it necessary or advisable to register trade marks?

Registration is not required but is highly recommended as this gives to the owner a statutory right to use the trade mark exclusively in relation to the goods or services registered.

Unregistered trade marks are protected in Hong Kong under the common law of passing off, which is usually a more difficult action to bring than infringement.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The Trade Marks Registry, Intellectual Property Department registers trade marks. Guidance is available on its website, www.ipd.gov.hk/eng/trademarks.htm.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The Registrar can refuse to register a trade mark either on absolute grounds or relative grounds.

Absolute grounds include a mark that:

  • Fails to satisfy the statutory definition of a trade mark.

  • Is indistinctive.

  • Is descriptive of the applicant's goods or services.

  • Has become customary in the current language or in the honest and established practices of the applicant’s trade.

  • Consists exclusively of shape that results from the goods themselves, which is necessary to obtain a technical result or the shape that gives substantial value to the goods.

  • Is contrary to accepted principles of morality or likely to deceive the public.

  • Is filed in bad faith or its use is prohibited under any Hong Kong law.

  • Consists of Chinese national flag or emblem or the Hong Kong regional flag or emblem.

Relative grounds include a mark that is:

  • Identical to an earlier trade mark covering identical goods or services.

  • Identical to an earlier trade mark covering similar goods or services which is likely to cause confusion.

  • Similar to an earlier trade mark covering identical or similar services which is likely to cause confusion.

  • Identical or similar to an earlier registered well known trade mark protected under the Paris Convention and use of which without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier registered trade mark.

  • Contrary to law protecting an unregistered trade mark (in particular, the tort of passing off), or an earlier right subsisting in a copyright or registered design.

 
15. On what grounds and when can third parties oppose a trade mark application?

See Question 14 ( www.practicallaw.com/3-501-8022) for the grounds of opposition to an application.

Third parties can oppose an application within three months from the date of publication of the application.

The grounds for revocation of a registration include:

  • Non-use of the registered mark for a continuous period of at least three years without valid reason.

  • The registered mark has become generic.

  • The registered mark has become deceptive.

  • Contravention of or failure to observe any condition entered in the register in relation to the registration of the mark

Third parties can file a non-use revocation with supporting evidence at any time after three years of the actual date of registration of the mark. For other grounds, the revocation can be filed at any time after the mark has been registered.

 
16. When does trade mark protection start and how long does it last?

Registered trade marks are valid for ten years from the date of application, renewable for successive periods of ten years each.

 
17. On what grounds can a trade mark infringement action be brought?

Civil proceedings

A trade mark infringement action can be brought if, in the course of trade, a person uses without consent:

  • An identical sign for identical goods or services.

  • An identical sign for similar goods/services or a similar sign for identical or similar goods and that use is likely to cause confusion among the public.

  • A sign similar or identical to a well-known trade mark for dissimilar goods or services without due cause and the use of the sign takes unfair advantage of or is detrimental to the distinctive character or repute of the well-known trade mark.

  • .

Criminal proceedings

The Hong Kong Customs and Excise Department has power to prosecute persons who in the course of trade:

  • Forge any trade mark.

  • Falsely apply to any goods a trade mark or mark so nearly resembling a trade mark as to be calculated to deceive.

  • Makes or disposes of any means of forging a trade mark.

  • Causes any of the above to be done.

 
18. Which courts deal with trade mark infringement actions?

Civil trade mark actions are brought in the District Court or High Court, depending on the amount of damages claimed.

Criminal prosecutions are dealt with by Magistrates' Courts, the District Court and High Court.

 
19. What are the defences to trade mark infringement actions?

There is no infringement for the use in accordance with honest practices in industrial or commercial matters:

  • By a person of his own name or address or the name of his place of business.

  • By a person of the name of his predecessor in business or the name of his predecessor's place of business.

  • Of signs which serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of goods or services.

  • Of the trade mark where it is necessary to indicate the intended purpose of goods or services.

  • By the use of a mark whose use predates the date of first use of the registered trade mark and the date of registration of that trade mark.

  • In cases involving parallel imported goods, provided that the condition of the goods has not been changed or impaired after they have been put on the market, and the use is not detrimental to the distinctive character or repute of the trade mark.

  • In comparative advertising, in accordance with honest practices in industrial or commercial matters.

  • Where the civil proceedings conditions mentioned are not satisfied (see Question 17, Civil proceedings).

 
20. What are the remedies in trade mark infringement actions?

The remedies in trade mark infringement actions include:

  • Injunction.

  • Delivery up or disposal of infringing articles.

  • Damages or account of profits.

  • Disclosure.

  • Costs.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no fast-track or small-claims procedure for trade mark infringement actions.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

To be eligible for copyright protection, the work must be original and skill, judgment, labour and effort must have been expended in its creation

Hong Kong adopts an open system of copyright entitlement. A work qualifies for protection irrespective of the place of domicile or residence, country of incorporation of the author or place of first publication.

 
23. Can copyright be registered?

Copyright cannot be registered.

 
24. When does copyright protection start and how long does it last?

Copyright protection is as follows:

  • Literary, dramatic, musical and artistic works: expires at the end of 50 years from the end of the calendar year in which the author dies. If the work is computer-generated, copyright expires at the end of the 50 years from the end of the calendar year in which the work was made.

  • Sound recordings: expires at the end of 50 years from the end of the calendar year of release.

  • Films: expires at the end of 50 years from the end of the calendar year of the death of the last to die of the:

    • principal director;

    • author of screenplay;

    • author of dialogue; or

    • composer of music created for and used in the film

  • Where an article is made by an industrial process and marketed based on an artistic work:

    • if the article is registered as a design, copyright is shortened to 25 years from the end of the calendar year in which the article is first marketed;

    • if the article is not or cannot be registered as a design, copyright is shortened to 15 years

  • Broadcasts and cable programmes: expires at the end of 50 years from the end of the calendar year the broadcast was made or the programme included in a cable programme service.

  • Typographical arrangement of published editions: expires at the end of 25 years from the end of the calendar year in which the edition was first published.

 
25. On what grounds can a copyright infringement action be brought?

An action for copyright infringement can be brought on the following grounds:

  • Primary infringement includes

    • Copying the work.

    • Issuing copies of the work to the public.

    • Renting copies of the work to the public.

    • Making available copies of the work to the public.

    • Performing, showing or playing the work in public.

    • Broadcasting the work or including it in a cable programme service.

    • Making an adaptation of the work.

  • Secondary infringement includes the following acts (done with knowledge or with reason to believe that the copies and/or performances are infringing):

    • Importing or exporting any infringing copies.

    • Possessing, selling or letting for hire, exhibiting in public or distributing any infringing copies.

    • Providing means for making infringing copies.

    • Permitting use of premises or provision of apparatus for infringing performance.

 
26. Which courts deal with copyright infringement actions?

Civil actions: District Court or the High Court, depending on the amount of damages claimed.

Criminal prosecutions: Magistrates' Courts, District Court and High Court.

 
27. What are the defences to copyright infringement actions?

The main defences to copyright infringement actions include::

  • No reproduction or no substantial reproduction.

  • No knowledge in case of secondary infringement.

  • Fair dealing.

  • Research and private study.

  • Criticism, review or news reporting.

  • Incidental inclusion of copyright material.

 
28. What are the remedies in copyright infringement actions?

Defences include:

  • Injunction.

  • Delivery up or disposal of infringing articles.

  • Damages or account of profits.

  • Disclosure.

  • Costs.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no fast-track or small-claims procedure for copyright infringement actions.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

A design must be:

  • New.

  • Aesthetically appealing.

  • Not contrary to public order or morality.

 
31. Which authority registers designs?

The Designs Registry, Intellectual Property Department registers designs. Guidance is available on its website, www.ipd.gov.hk.

 
32. On what grounds and when can third parties oppose a registered design application?

There is no opposition procedure but a third party can always challenge the validity of the design registration based on the legal requirements set out in Question 30. ( www.practicallaw.com/3-501-8022)

 
33. When does registered design protection start and how long does it last?

Design protection lasts for five years starting from the filing date. The term can be extended for additional periods of five years each, up to 25 years.

 
34. On what grounds can a registered design infringement action be brought?

A registered design infringement action can be brought on the grounds of:

  • Making or importing any article for sale or hire or use for the purpose of trade or business, bearing a design not substantially different from the registered design.

  • Selling, hiring, or offering or exposing for sale or hire such an article.

 
35. Which courts deal with registered design infringement actions?

The High Court deals with design infringement actions.

 
36. What are the defences to registered design infringement actions?

Defences to registered design infringement actions include that the:

  • Design is invalid.

  • Article is substantially different from the registered design.

  • Feature reproduced is not a feature that would affect the registrability of a design.

  • Acts were done in good faith before the filing date of the design application.

 
37. What are the remedies in registered design infringement actions?

Remedies include:

  • Injunction.

  • Delivery up or disposal of infringing articles.

  • Damages or account of profits.

  • Disclosure.

  • Costs.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no fast-track or small-claims procedure for registered designs infringement actions.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered design is protected under the law of copyright (see Questions 22 to 28 ( www.practicallaw.com/3-501-8022) ).

 
40. When does unregistered design protection start and how long does it last?

The protection lasts for a period of 15 years from the end of the calendar year in which articles incorporating an unregistered design are first marketed.

 
41. On what grounds can an unregistered design infringement action be brought?

See Question 25.

 
42. What are the defences to unregistered design infringement actions?
 
43. What are the remedies in unregistered design infringement actions?
 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

For a right in confidential information to arise:

  • The information must have the necessary quality of confidence, that is, not public property or within public knowledge and not trivial.

  • That information must have been imparted in circumstances importing an obligation of confidence.

  • The unauthorised use of that information must be to the detriment of the party communicating it.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

An action can be brought:

  • Where there is actual or threatened misuse of confidential information, where a party is under an obligation of confidence by contract or by operation of equity

  • Where harm is done to the proprietary interest in confidential information.

 
46. Which courts deal with actions for unauthorised use of confidential information?

Actions for unauthorised use of confidential information are brought in the District Court and the High Court.

 
47. What are the defences to actions for unauthorised use of confidential information?

Defences include that:

 
48. What are the remedies in actions for unauthorised use of confidential information?

Remedies include:

  • Injunction.

  • Damages.

  • Order for delivery up or return of confidential documents, and so on.

  • Disclosure.

  • Costs.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no fast-track or small-claims procedure for actions for unauthorised use of confidential information.

 

Intellectual Property Department of Hong Kong SAR

W www.ipd.gov.hk

Main areas of responsibility. Patents; trade marks; registered designs.

Guidance on application procedure. Available online.


Contributor profiles

Mena Lo, Partner

Wilkinson & Grist

T +852 2524 6011

F +852 2527 9041

E iprop@wilgrist.com

W www.wilgrist.com

Professional qualifications. Hong Kong 1990

Areas of practice. Intellectual property.

Languages. English, Mandarin, Cantonese

Professional associations/memberships. Member of Marques Intellectual Asset Management Team and Country Guides Project Team, International Trademark Association.

Recent transactions.

Involved in developing a guidebook and provided workshops to train IP Managers under the IP Managers Scheme launched by the Intellectual Property Development of the HKSAR Government.

•Assisted a client in the music industry to formulate a new licensing structure, to counter-act against use of pirated copies of the client's work in Hong Kong and Macau.

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