Introduction
- In order to obtain a valid registration, the design must also be novel, possess individual character and must be industrially applied to manufacture articles. The validity of a design can be easily challenged if its novel features are not startling, or it is largely a commonplace design, or a mere variation in craft of its trade.
- New design must be kept confidential and should only be disclosed to others (eg. prototype manufacturer) under a contract containing a confidentiality clause. A new design will lose its novelty in Hong Kong if it has been published or exposed to the public anywhere in the world prior to the filing of its application or Convention priority date.
- Timing of application should be planned. The application should neither be made too early that some details of the design are subsequently revised or improved upon, nor too late as to be after the marketing of the designed articles.
- Upon filing, the design can start to be marketed. However, after such exposure to the public or after the publication of any of the design applications, most further filing in additional foreign countries must be made within 6 months of the first application's filing date with a claim for Paris Convention or WTO priority, and requiring additional fees in both Hong Kong and the foreign countries. The alternative is to organize the applications to be filed on the same date.
- The protection given by registered design is a monopoly right that is stronger than copyright. The protection extends against both deliberate copying and independent development of a closely similar design. However, this stronger right come at a price of the higher requirement of novelty, which is challengeable even after registration and the issuance of the certificate.
Benefits of Reg Design
- Registered design certificate is the best document for showing that you have claimed the design.
- Registered design certificate is the most acceptable title document for making complaint to the Legal Adviser of TDC Fairs about infringement by another exhibitor.
- Showing registered design certificate can be a sale technique for making potential customers trust your designed products.
- Registration enables lawful use of the notation "Reg", "Design Registered", or "Registered Design No. …" on the product and its packaging.
- There is no need to prove knowledge when using registered design against distributors or retailers.
- Registered design gives you additional rights over and above the copyright of your design.
- Registration enhances the proof of copyright over your design.
- Registered design is a corporate asset which is essential when valuing your company in M&A or IPO situations.
- Registration in an important city and trading centre like Hong Kong is helpful for export or global marketing plans.
Fees
The fee is HK$3,200 for a design of a stand-alone article. This fee is inclusive of the filing fee, the publication fee, and our professional fee. There is no charge for registration and issuance of the design certificate.
In the case of a series of new designs for the same stand-alone article (eg. a new series of watches), the additional designs can be included in the same application at the reduced price of HK$2,400 per design. Please refer to our Fee Schedule for details.
Almost all cases proceed straight-forwardly without objection from the examiner. In case the registered design certificate cannot be obtained for any reason other than caused by the client, the fee received by us will be refunded.
Timeframe
The average time for application to registration is 2 months :-
Filing receipt and filing number Formality examination Publication, registration and issuance of design certificate The examiner will only perform a "formality" examination, and he or she usually will not make any search for prior registered designs in Hong Kong. Hence, the registration and issuance of design certificate is not in anyway a confirmation on the question of novelty.
Upon registration, a Hong Kong registered design is initially valid for 5 years and is renewable for 4 periods of 5 years each up to the maximum protection of 25 years.
Design Search
Anyone from anywhere can use the free online search website http://ipsearch.ipd.gov.hk of the Intellectual Property Department of Hong Kong Government to find out whether any similar registered design exists in the register.
Since the definition of novelty is broad and the examination practice does not involve comparison with prior registered designs, pre-application search is not necessary.
Search of prior registered designs in the Hong Kong are usually for other purposes, such as ascertaining whether competitors or opposite party of the client has registered a similar design in Hong Kong.
Convention Priority
Within six months of the first filing of the design in a WTO member country or Paris Convention country, a priority can be claimed in the Hong Kong application. This will synchronize the Hong Kong filing date with that of the first filing for the purpose of determining the novelty of the design.
The practical result is that any disclosure of the design or marketing of the designed product after the first filing but within six months of that first filing does not jeopardize the Hong Kong design application.
Representation of Design
The most important disclosure of the design applied for rests with its representation, which consists of either drawings and/or photographs.
Drawings and/or photographs should be : (a) 7 Views - front, rear, left, right, top, bottom, and 3-dimensional
front perspective.(b) There is no limitation on the number of photographs or drawings
for inclusion in the application. The pertinent consideration is how
to use the photographs or drawings to fully display and disclose
the novel parts and features of the design. When registered, the
submitted photographs or drawings will be attached to the back
of the design certificate.(c) Any aesthetic "interior" of the designed article visible during
normal use of the article, should also be photographed or drawn
for inclusion in the application. Sectional view which clearly
brings out the design is permissible, but sectional view showing
functional features or interior structure not being part of the
aesthetic design is usually not allowed.(d) For drawings, surface shading or texturing can be used to bring out the contour and the shape of the design. Details Required
1. Full name and address of the applicant. 2. If the applicant is not the designer, a statement as to the
applicant's ownership of the design. For examples : "Employer of
designer"; "By Assignment"; or "By Commissioning the design".3. Name of the designed article in English and Chinese. 4. Representation of the design in the form of drawings or
photographs (in jpg file format sent by e-mail to us).5. Certified copy of the first design application within the last 6
months (if any filed in a Paris Convention country or WTO
member country).
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