Orden sobre dibujos y modelos registrados (Capítulo 522), Hong Kong (China)

Long title

An Ordinance to make new provision in respect of registered design right and related matters in substitution for the United Kingdom Designs (Protection) Ordinance.

[27 June 1997] L.N. 368 of 1997

Short title

(1)

This Ordinance may be cited as the Registered Designs Ordinance.

(2)

(Omitted as spent)

Section 2
�Interpretation
�

Remarks:

Amendments retroactively made - see 25 of 1998 s. 2; 22 of 1999 s. 3

(1) In this Ordinance, unless the context otherwise requires—

“application for registration” means an application for registration of a design made under section 12 ;

“article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

“artistic work” has the same meaning as in Part II of the Copyright Ordinance (Cap 528); (Amended 92 of 1997 s. 280 & Schs. 2 & 3)

“assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;

“corresponding design”, in relation to an artistic work, means a design which if applied to an article would produce something which would be treated for the purposes of Part II of the Copyright Ordinance (Cap 528) as a copy of that work; (Amended 22 of 1999 s. 3)

“court” means the Court of First Instance; (Amended 25 of 1998 s. 2)

“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, but does not include-

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(a) �

a method or principle of construction; or

(b) �

features of shape or configuration of an article which

(i) �

are dictated solely by the function which the article has to perform; or

(ii) �

are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part;

“designer”, in relation to a design, means the person who creates it or, if there are 2 or more such persons, each of those persons;

“employee” means a person who works or (where the employment has ceased) worked under a contract of employment (whether with the Government or with any other person);

“employer”, in relation to an employee, means the person by whom the employee is or was employed;

“exclusive licence” means a licence from the registered owner of a registered design conferring on the licensee, or on him and persons authorized by him, to the exclusion of all other persons (including the registered owner), any right in respect of the design that would otherwise be exercisable exclusively by the registered owner, and “exclusive licensee” shall be construed accordingly;

“filing date”, in relation to an application for registration, means the date determined under section 14 as the filing date of the application;

“owner” has the meaning assigned by section 3 ;

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883, as revised or amended from time to time;

“Paris Convention country” means—

(a) �

any country for the time being specified in the Schedule as being a country which has acceded to the Paris Convention;

(b) �

any territory or area subject to the authority or under the suzerainty of any country referred to in paragraph (a) , or any territory or area administered by any such country, on behalf of which such country has acceded to the Paris Convention;

“prescribed” means prescribed or provided for by the rules;

“priority date”, in relation to an application for registration, means the date regarded as being the filing date of the application pursuant to section 17 ;

“protected layout-design (topography)” has the meaning assigned to that term by section 2(1)

of the Layout-design (Topography) of Integrated Circuits Ordinance (Cap 445);

“Register” means the Register of Designs kept under this Ordinance;

“registered design” means a design registered under section 25 ;

“registered owner”, in relation to a registered design, means the person whose name is for the

time being entered in the Register as the owner of the design or, if there are 2 or more such persons, each of those persons; “Registrar” means the Registrar of Designs; “Registrar of Designs” means the person holding that office by virtue of the Director of Intellectual Property (Establishment) Ordinance (Cap 412);

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“Registry” means the Designs Registry administered by the Registrar;

“rules” means rules made by the Registrar under section 79 , 80 , 81 or 82 , as the case may be;

“set of articles” means 2 or more articles of the same general character that are ordinarily on sale together or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied;

“World Trade Organization Agreement” means the Agreement Establishing the World Trade Organization done at Marrakesh in 1994, as revised or amended from time to time;

“WTO member” means any country, territory or area for the time being specified in the Schedule as being a country, territory or area which has acceded to the World Trade Organization Agreement.

(2)

Unless the context otherwise requires, any reference in this Ordinance

(a) �

to the filing of a document shall be construed as a reference to the filing of the document with the Registrar;

(b) �

to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set; or

(c) �

to the infringement of a design or registered design shall be construed as a reference to the infringement of any right in the design conferred by this Ordinance.

(3) The expressions listed in the left-hand column below are defined in, or fall to be construed in accordance with, the provisions of this Ordinance listed in the right-hand column in relation to those expressions.

Expressions Relevant provision
�Divisional application Section 22(1)
� Formal requirements section 24(4)
� Government use Section 37(2)
� Kit section 31(5)
� Official international exhibition section 9(3)
� Regular national filing section 15(4)
�

Section 3 Ownership of designs

(1)

Subject to subsections (2) to (5) , the designer of a design shall be treated for the purposes of this Ordinance as the original owner of the design.

(2)

Where a design is created in pursuance of a commission for money or money’s worth, the person commissioning the design shall, subject to any contrary agreement between the parties, be treated as the original owner of the design.

(3)

Where, in a case not falling within subsection (2) , a design is created by an employee in the course of his employment, his employer shall, subject to any contrary agreement between the parties, be treated as the original owner of the design.

(4)

Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the original owner, either alone or jointly with the original owner, that other person or, as the case may be, the original owner and that other person, shall be treated for the purposes of this Ordinance as the owner of the design or as the owner of the design in relation to that article.

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(5) In the case of a design generated by computer in circumstances such that there is no human designer, the person by whom the arrangements necessary for the creation of the design are made shall be deemed to be the designer.

Section 4
�Ordinance binds Government
�

Subject to Part IV , this Ordinance binds the Government.

Section 5
�New designs are registrable
�

Section 6
�Designs are not registrable if appearance of article is not material
�

A design is not registrable in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.

Section 7 Designs contrary to public order (“ordre public”) or morality are not registrable

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(1)

Subject to subsection (2) , a design the publication or use of which would be contrary to public order (“ordre public”) or morality is not registrable.

(2)

The publication or use of a design shall not be considered to be contrary to public order (“ordre public”) merely because it is prohibited by any law in force in Hong Kong.

Section 8
�Computer programs, protected layout-designs (topographies) and designs for
�articles of a primarily literary or artistic character
�

(1) Computer programs and protected layout-designs (topographies) are not registrable.

(2) Provision may be made by rules for excluding from registration under this Ordinance designs for such articles of a primarily literary or artistic character as the rules may specify.

Section 9
�Provisions as to confidential disclosure, etc.
�

(1)

An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of

(a) �

the disclosure of the design by the owner to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;

(b) �

the disclosure of the design in breach of good faith by any person other than the owner of the design;

(c) �

in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design; or

(d) �

the communication of the design by the owner to a government department or to any person authorized by a government department to consider the merits of the design, or of anything done in consequence of such a communication.

(2)

An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only

(a) �

that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the owner of the design, at an official international exhibition;

(b) �

that after any such display as is mentioned in paragraph (a), and during the period of the exhibition, a representation of the design, or any article to which the design has been applied, has been displayed by any person without the consent of the owner; or

(c) �

that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a) ,

if the application for registration of the design is made not later than 6 months after the opening of the exhibition.

(3) In this section, “official international exhibition” means an official, or officially recognized, international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22 November 1928, and any protocols to that Convention, as revised or amended from time to time.

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Section 10
�Provisions as to artistic works
�

(1)

Subject to subsection (2) , where an application is made by or with the consent of the owner of copyright in an artistic work for the registration of a corresponding design, the design shall not be treated for the purposes of this Ordinance as being other than new by reason only of any use previously made of the artistic work.

(2)

Subsection (1) does not apply if the previous use consisted of or included the sale, letting for hire, or offer or exposure for sale or hire of articles to which had been applied industrially

(a) �

the design in question; or

(b) �

a design differing from it only in immaterial details or in features which are variants commonly used in the trade,

and that previous use was made by or with the consent of the copyright owner.

(3) Provision may be made by rules as to the circumstances in which a design is to be regarded for the purposes of this section as “applied industrially” to articles or any description of articles.

Section 11
�Provisions as to registration of same design in respect of other articles, etc.
�

(1) Where the registered owner of a design registered in respect of any article makes an application

(a) �

for registration in respect of 1 or more other articles, of the registered design; or

(b) �

for registration in respect of the same or 1 or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially affect the identity thereof,

the application shall not be refused, and the registration made on the application shall not be invalidated, by reason only of the previous registration or publication of the registered design.

(2) Where any person makes an application for the registration of a design in respect of any article and either

(a) �

the design has been previously registered by another person in respect of some other article; or

(b) �

the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially affect the identity thereof,

then, if at any time while the application is pending the applicant becomes the registered owner of the design previously registered, subsection (1) shall apply as if at the time of making the application the applicant had been the registered owner of that design.

Section 12
�Applications for registration
�

Applications for registration

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(1)

An application for registration of a design shall be filed with the Registrar in the prescribed manner.

(2)

The application shall include

(a) �

a request for registration of the design;

(b) �

a representation of the design suitable for reproduction;

(c) �

the name and address of the applicant;

(d) �

where the applicant is not the designer, a statement explaining the applicant’s rights in relation to the design;

(e) �

an address in Hong Kong for service of documents; and

(f) �

such other information, documents or matter as may be required by the rules.

(3)

The application may include such other information, documents or matter as may be authorized by the rules.

(4)

The application shall be filed in one of the official languages and shall also comply with the requirements of this Ordinance and the rules as to the provision of information in, or the translation of documents into, one or both of the official languages.

(5)

The application shall be accompanied by the prescribed filing fee and the prescribed advertisement fee.

Section 13
�Multiple applications
�

Two or more designs may be the subject of the same application for registration if the designs

(a) �

relate to the same prescribed class of articles or to the same set of articles; and

(b) �

comply with any prescribed conditions.

Section 14

Filing date

The filing date of an application for registration of a design is the earliest date on which

(a) documents containing everything required by section 12(2)(a) to (c) are filed; and b) the fees required by section 12(5) are paid.

Section 15
�Priority right
�

(1)

A person or his successor in title who has duly filed an application for registration of a design in, or in respect of, a Paris Convention country or WTO member shall enjoy, for the purpose of registering the same design under this Ordinance in respect of any or all of the same articles, a right of priority for the period of 6 months after the filing date of the first application, subject to compliance with any prescribed conditions.

(2)

Any filing of an application for registration of a design in, or in respect of, a Paris Convention country or WTO member which is equivalent to a regular national filing under the law

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of that Paris Convention country or WTO member, or under any bilateral or multilateral agreement to which it is a party, shall be recognized as giving rise to a right of priority.

(3)

A subsequent application for the registration of a design that was the subject of a previous application, and that is filed in or in respect of the same Paris Convention country or WTO member, shall be considered as the first application for the purpose of determining priority if, and only if, on the filing date of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority.

(4)

In this section, “regular national filing” means any filing of an application for registration of a design in, or in respect of, a Paris Convention country or WTO member that establishes the date on which the application was filed, whatever the outcome of the application may be.

Section 16
�Claiming priority
�

(1)

An applicant who desires to take advantage of the priority of a previous application shall file with the Registrar in the prescribed manner a statement of priority and a copy of the previous application.

(2)

Where a statement of priority is filed in accordance with this section, the applicant shall for the purposes of proceedings before the Registrar be deemed to be entitled to enjoy the right of priority shown in the statement.

Section 17
�Effect of priority right
�

(1)

The right of priority shall have the effect that the filing date of the previous application claimed under section 16 shall be regarded as being the filing date of the application for registration under this Ordinance for the purpose of determining whether the design in question is new.

(2)

Subsection (1) shall not be construed as excluding the power to give directions under section 5(3) in relation to the application for registration under this Ordinance.

(3)

Where an application for registration of a design is filed under this Ordinance and the priority of a previous application is claimed under section 16 , then, notwithstanding anything contained in this Ordinance, the application shall not be refused and the registration of the design under this Ordinance shall not be invalidated by reason only of the fact that the previous application has been published at any time after the filing date of the previous application.

Section 18
�Withdrawal of applications
�

(1) An applicant may withdraw his application for registration of a design by filing a notice of withdrawal with the Registrar before the date on which preparations for publication under section 25 have been completed, as determined by the Registrar.

(2)

A notice under this section shall be—

(a)

made in writing; and

(b)

filed in the prescribed manner.

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(3) Where a notice is filed in accordance with this section, the application shall be deemed withdrawn.

(4) A notice filed in accordance with this section is irrevocable.

Section 19
�Effect of withdrawal
�

Where an application for registration of a design is deemed by any provision of this Ordinance to have been withdrawn, the following provisions shall apply—

(a) �

the applicant shall continue to enjoy the right of priority under section 17 which he enjoyed immediately before the withdrawal; and

(b) �

no other right may be claimed under this Ordinance in relation to the application.

Section 20
�Reinstatement of applications deemed withdrawn
�

(1)

Where an application for registration of a design is deemed to have been withdrawn following the applicant’s failure to comply with a time limit under this Ordinance (including any time limit set by the Registrar) and the applicant has by notice filed with the Registrar requested reinstatement of the application, then—

(a) �

any deemed withdrawal of the application that occurred as a direct consequence of the failure to comply shall be deemed to be of no effect and the application shall be treated for the purposes of proceedings under this Ordinance as if there had been no such failure; and

(b) �

any right or means of redress lost by the applicant as a direct consequence of the failure to comply shall be restored to the applicant.

(2)

A notice under this section shall be—

(a) �

made in writing; and

(b) �

filed in the prescribed manner within 1 month after such deemed withdrawal.

(3)

A notice under this section shall be deemed not to have been filed until the omission which constituted the failure to comply with the time limit has been made good.

Section 21
�Amendment of applications
�

(1)

The Registrar may amend an application for registration of a design on request made to him by the applicant in the prescribed manner.

(2)

An application for registration of a design shall not be amended under subsection (1) if, as a result of the amendment, the scope of the application would be increased by the inclusion of any matter that was not in substance disclosed in the application initially filed.

Section 22
�Division of applications after amendment
�

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(1)

Where a request for amendment of an application for registration of a design has been granted under section 21 , and the amendment has the effect of excluding one or more designs from the application initially filed, the applicant may at any time while the initial application is pending make a further application, referred to in this section as a “divisional application”, for registration of the design or designs so excluded.

(2)

A divisional application shall be entitled to the filing date and the priority date, if any, of the initial application.

Section 23
�Rights in applications
�

Expanded Cross Reference: 32 , 33 , 34

(1)

The provisions of sections 32 to 34 (which relate to rights in registered designs) apply, with necessary modification, in relation to an application for registration of a design as they apply in relation to a registered design. < ^* Note- Exp. x-Ref: Sections 32 , 33 , 34 ^*>

(2)

In section 33 , as it applies in relation to an application for registration of a design, the reference in subsection (1) to the registration of a design shall be construed as a reference to the making of the application.

(3)

In section 34 , as it applies in relation to a transaction, instrument or event affecting an application for registration of a design, the references to the registration of particulars, and to the making of an application for the registration of particulars, shall be construed as a reference to the giving of written notice to the Registrar of those particulars.

Section 24
�Examination of applications
�

Examination and registration

(1)

If an application for registration of a design has been accorded a filing date under section 14 and has not been withdrawn, the Registrar shall examine the application to determine whether it satisfies the formal requirements.

(2)

Where the Registrar determines that there are deficiencies as regards the formal requirements, he shall notify the applicant and give him an opportunity to correct the deficiencies within the prescribed period.

(3)

If any deficiencies as regards the formal requirements are not corrected within the prescribed period, the application shall be deemed to be withdrawn.

(4)

In this Ordinance, “formal requirements” means such requirements of section 12 and of any rules made for the purposes of that section as are specified in the rules as being the formal requirements.

Section 25
�Registration and publication
�

If on an examination by the Registrar under section 24 an application for registration of a design is found to have satisfied the formal requirements, then as soon as practicable after such examination, but subject to section 26, the Registrar shall—

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Refusal of applications

(1)

The Registrar may refuse an application for registration of a design if, after an examination by him under section 24 and after giving the applicant the opportunity to correct any deficiencies as provided for in that section, he determines—

(a) �

that the application does not satisfy the formal requirements; or

(b) �

that, on the face of the application, the design is not new or is not registrable for any other reason.

(2)

The Registrar shall give notice of any such refusal to the applicant.

(3)

Where the Registrar refuses an application for registration of a design under this section, the following provisions shall apply—

(a) �

the applicant shall continue to enjoy the right of priority under section 16 which he enjoyed immediately before such refusal; and

(b) �

no other right may be claimed under this Ordinance in relation to the application.

Section 27 Formality examination

Except as expressly provided to the contrary, nothing in this Ordinance shall be construed as imposing any obligation upon the Registrar to consider or have regard to, for the purpose of determining whether to accept an application for registration of a design, any question as to—

(a) �

the registrability of the design;

(b) �

whether the applicant is entitled to any priority claimed in the application; or

(c) �

whether the design is properly represented in the application.

Section 28 Period of registration

Section 37
�Government use of registered designs
�

Expanded Cross Reference: 38 , 39 , 40

Remarks:

Amendments retroactively made — see 22 of 1999 s. 3

(1)

During a period of declared extreme urgency a public officer authorized in writing by the Chief Executive or any person authorized in writing by such public officer may in relation to a registered design, without the consent of the registered owner, do any act in Hong Kong in relation to the design as appears to the public officer or person to be necessary or expedient in connection with the urgency giving rise to the declaration under section 36 . (Amended 22 of 1999 s. 3)

(2)

Any act done in relation to a registered design by virtue of this section is in this Ordinance referred to as use, or Government use, of the design; and “use” in sections 38 to 40 shall be construed accordingly. < ^* Note — Exp. x-Ref: Sections 38 , 39 , 40 ^*>

(3)

Government use may include any act which, apart from this section, would constitute an infringement of the registered design concerned.

(4)

Any Government use of a registered design shall be made on such terms as may be agreed by the Government and the registered owner or as may in default of agreement be determined by the court on a reference under section 40 .

(5)

The authority of a public officer in respect of a registered design may be given to any person under subsection (1) either before or after the design is registered and may be given to any

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person whether or not that person is authorized directly or indirectly by the registered owner to do anything in relation to the design.

(6)

Where any Government use of a registered design is made by or with the authority of a public officer under this section, the public officer shall notify the registered owner as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.

(7)

A person acquiring anything disposed of in the exercise of powers conferred by this section, and any person claiming through him, may deal with it in the same manner as if the rights in the registered design were held on behalf of the Government.

(8) Subsection (1) is without prejudice to any rule of law relating to the confidentiality of

Section 38
�Rights of third parties
�

(1) The provisions of any licence, assignment or agreement specified in subsection (3) are of no effect in relation to

(a) �

any Government use of a registered design by a public officer, or a person authorized by a public officer, by virtue of section 37; or

(b) �

anything done for Government use in respect of a registered design by the registered owner to the order of a public officer,

so far as those provisions—

(i) �

restrict or regulate the use of the design or any model, document or information relating to it; or

(ii) �

provide for the making of payments in respect of, or calculated by reference to, such use.

(2)

The reproduction or publication of any model or document in connection with a use referred to in subsection (1) shall be deemed not to constitute an infringement of any copyright or protected layout-design (topography) subsisting in the document.

(3)

The licence, assignment or agreement referred to in subsection (1) is any licence, assignment or agreement which is made, whether before or after the date of commencement of this Ordinance, between—

(a) �

the registered owner of the registered design or anyone who derives title from him or from whom he derives title; and

(b) �

any person other than the Government.

(4)

Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the use of a registered design is in force, then—

(a) �

section 37(4) applies in relation to anything done in respect of the design which, but for this section and section 37(1) , would constitute an infringement of the rights of the licensee, with the substitution in those provisions of reference to the registered owner with reference to the licensee; and

(b) �

section 37(4) does not apply in relation to anything done in respect of the design by the licensee by virtue of an authority given under that section 37(1) .

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(5)

Subject to subsection (4) , where a registered design has been assigned to the registered owner in consideration of royalties or other benefits determined by reference to the use of the design, then—

(a) �

section 37(4) applies in relation to any Government use of the design as if reference to the registered owner included a reference to the assignor, and any sum payable for Government use under that section shall be divided between those persons in such proportion as may be agreed by them or as may in default of agreement be determined by the court on a reference under section 40; and

(b) �

section 37(4) applies in relation to any act done for Government use in respect of the design by the registered owner to the order of a public officer, as if that act were use made by virtue of an authority given under that section.

(6)

Where section 37(4) applies to any use of a registered design and a person holds an exclusive licence under the design concerned (other than such a licence as is mentioned in subsection (4) ) authorizing him to use the design, then subsections (8) and (9) shall apply.

(7)

In subsections (8) and (9) , “the section 37(4) payment” means such payment (if any) as the registered owner and the Government agree under section 37(4) , or the court determines under section 40 , should be made by the public officer concerned to the registered owner in respect of the use of the design.

(8)

The licensee shall be entitled to recover from the registered owner such part (if any) of the section 37(4) payment as may be agreed on by them or as may in default of agreement be determined by the court under section 40 to be just having regard to any expenditure incurred by the licensee—

(a) �

in developing the design; or

(b) �

in making payments to the registered owner of the design in consideration of the licence, other than royalties or other payments determined by reference to the use of the design.

(9)

Any agreement between the registered owner and the Government under section 37(4) as to the amount of the section 37(4) payment shall be of no effect unless the licensee consents to the agreement; and any determination by the court under section 40 as to the amount of that payment shall be of no effect unless the licensee has been informed of the reference to the court and is given an opportunity to be heard.

(10)

In this section, “the public officer concerned”, in relation to any Government use of a registered design, means the public officer by whom or on whose authority the use was made.

Section 39
�Compensation for loss of profit
�

(1)

Where Government use is made of a registered design, the Government shall pay—

(a) �

to the registered owner; or

(b) �

if there is an exclusive licence in force in respect of the design, to the exclusive licensee, compensation for any loss resulting from his not being awarded a contract to supply articles to which the design is applied.

(2) Compensation is payable only to the extent that a contract could have been fulfilled from the registered owner’s or exclusive licensee’s existing manufacturing or other capacity but is

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payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.

(3)

In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing or other capacity was underused.

(4)

No compensation is payable in respect of any failure to secure contracts to supply articles which are not intended for Government use.

(5)

The amount payable shall, if not agreed between the registered owner or exclusive licensee and the Government, be determined by the court on a reference under section 40 , and is in addition to any amount payable under section 37or 38 .

Section 40
�References of disputes to court
�

(1)

Any dispute as to—

(a) �

the exercise by a public officer, or a person authorized by a public officer, of the powers conferred by section 37 ;

(b) �

terms for Government use of a registered design under section 37 ;

(c) �

the payment, if any, which should be made to the registered owner under section 37(4) ;

(d) �

the right of any person to receive any part of a payment made under section 37(4) ;

(e) �

the right of any person to receive compensation under section 39 ; or

(f) �

the amount of compensation payable to any person under section 39 ,

may be referred to the court by either party to the dispute.

(2)

In determining under this section any dispute between the Government and any person as to the terms for the Government use of a registered design, the court shall have regard—

(a) �

to any benefit or compensation which that person or any person from whom he derives title may have received or may be entitled to receive directly or indirectly from any public officer in respect of the design in question; and

(b) �

to whether that person or any person from whom he derives title has, in the court’s opinion, without reasonable cause, failed to comply with a request of the public officer concerned for Government use of the design on reasonable terms.

(3)

On a reference under this section the court may refuse to grant relief by way of compensation in respect of Government use of a registered design at any time during the period referred to in section 28(5) but before the fees referred to in that section are paid.

(4)

Where a person becomes the registered owner or one of the registered owners or an exclusive licensee of a registered design (the new owner or licensee) by virtue of a transaction, instrument or event to which section 34 applies, then unless—

(a) �

an application to register the prescribed particulars of the transaction, instrument or event is made before the end of the period of 6 months from the date of the transaction, instrument or event; or

(b) �

the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter,

Legislative Texts

the new owner or licensee shall not be entitled to any compensation under section 37 (as it stands or as modified by section 38(4) ) or to any compensation under section 39 in respect of any use of the design by a public officer or a person authorized by a public officer under section 37 after the date of the transaction, instrument or event and before the prescribed particulars of the transaction, instrument or event are registered.

(5) One of 2 or more registered owners of a registered design may without the concurrence of the others refer a dispute to the court under this section, but shall not do so unless the others are made parties to the proceedings; but any of the others made a defendant shall not be liable for any costs or expenses unless he takes part in the proceedings.

Proceedings for determination of rights in registered designs

(1) After a design is registered, any person having or claiming a proprietary interest in or under the design may refer to the court the question

(a) �

who is or are the true owner or owners of the design;

(b) �

whether the design should have been registered in the name of the person or persons in whose name or names it was registered; or

(c) �

whether any right in or under the design should be transferred or granted to any other person or persons,

and the court shall determine the question and make such order as it thinks fit to give effect to the determination.

(2)

Without prejudice to the generality of subsection (1) , an order under that subsection may contain provision

(a) �

directing that the name of the person by whom the reference is made shall be entered in the Register as the owner or one of the owners of the design (whether or not to the exclusion of any other person);

(b) �

directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the design;

(c) �

granting any licence or other right in or under the design; or

(d) �

directing any person registered as the owner of the design or any person having any right in or under the design to do anything specified in the order as necessary to carry out the other provisions of the order.

(3)

If any person to whom directions have been given under subsection (2)(d) fails to do anything necessary for carrying out any such directions within 14 days after the date of the order containing the directions, the court may, on application made to it by any person in whose favour or on whose reference the order was made, authorize him to do that thing on behalf of the person to whom the directions were given.

Legislative Texts

(4)

If a reference under this section is made after the end of the period of 2 years beginning with the date of registration of the design to which the reference relates, no order shall be made under subsection (1) transferring any right in or under the design from the person registered as the owner of the design to any other person on the ground that the person so registered was not entitled to be registered as the owner unless it is shown that he knew at the time of the registration or, as the case may be, of the transfer of the design to him, that he was not entitled to be registered as the owner.

(5)

Where a question is referred to the court under this section, no order shall be made by virtue of subsection (2) or under subsection (4) unless notice of the reference is given to all persons registered as owner of the design or as having a right in or under the registered design except those who are parties to the reference.

Section 42
�Effect of transfer of registered design under Section 41
�

(1)

Where an order is made under section 41t hat a registered design shall be transferred from any person or persons (the old owner or owners) to one or more persons (whether or not including an old owner), then, except in a case falling within subsection (2) , any licences or other rights granted or created by the old owner or owners shall, subject to section 32 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the design is ordered to be transferred (the new owner or owners).

(2)

Where an order is so made that a registered design shall be transferred from the old owner or owners to one or more persons none of whom was an old owner (on the ground that the design was registered in the name of a person not entitled to be registered as a owner), any licences or other rights in or under the design shall, subject to the provisions of the order and subsection (3) , lapse on the registration of that person or those persons as the new owner or owners of the design.

(3)

Where an order is so made that a registered design shall be transferred as mentioned in subsection (2) and, before particulars of the reference resulting in the making of the order are entered in the Register, the old owner or owners or a licensee

(a) �

does in good faith an act which would have constituted an infringement of the design if particulars of the reference had been registered at the time the act is done; or

(b) �

makes in good faith effective and serious preparations to do such an act,

the old owner or owners or the licensee shall on making a request to the new owner or owners within the prescribed period be entitled to be granted a licence (but not an exclusive licence) to continue to do the act or, as the case may be, to do the act.

(4) Any such licence shall be granted for a reasonable period and on reasonable terms.

(5) The new owner or owners of the registered design or any person claiming that he is entitled to be granted any such licence may refer to the court the question whether that person is so entitled and whether any such period is, or any such terms are, reasonable, and the court shall determine the question and may, if it considers it appropriate, order the grant of such a licence.

Section 43
�Licences granted by order of court
�

Legislative Texts

Any order made under section 41(2) or 42(5) for the grant of alicence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the owner of the registered design and all other necessary parties, granting a licence in accordance with the order.

Section 44
�Revocation on ground of public order (“ordre public”) or morality
�

Proceedings for revocation of registration

(1)

Any person may at any time after a design has been registered under this Ordinance refer to the Registrar the question of whether, having regard to section 7 , the design is a registrable design.

(2)

Subject to subsection (3) , where a question is so referred to the Registrar, he shall determine the question.

(3)

The Registrar may, if he thinks fit, refer the question to the court for determination and, without prejudice to the court’s jurisdiction apart from this subsection to determine any such question, the court shall have jurisdiction to do so.

(4)

If the Registrar or the court determines that the design is not a registrable design under section 7 , he or it shall order the registration of the design to be revoked.

(5) Any person may oppose a reference made under subsection (1) .

Section 45
�Revocation on ground that design was not registrable
�

The court may, on application by any person, order the registration of a design to be revoked on the ground that, at the time of its registration, the design was not new or was not registrable for any other reason.

Section 46
�Revocation on ground that person is not entitled to be registered as owner
�

(1)

Subject to subsections (2) and (3) , the court may, on application by any person, order the registration of a design to be revoked on the ground that the person whose name is entered in the Register as the owner of the design is not entitled to be registered as the owner.

(2)

An application under subsection (1) may be made only by a person found by the court on a reference under section 41 to be entitled to be registered as the owner of the design.

(3)

Where the reference under section 41 was commenced after the end of the period of 2 years beginning with the date of registration of the design, the court may not order the revocation of the registration of the design under this section unless the applicant shows that the person whose name is entered in the Register as the owner of the design knew at the time of its registration or of the registration of the transfer of the design to him that he was not entitled to be registered as the owner.

Section 47
�Effect of revocation
�

Legislative Texts

Without affecting transactions past and closed, where an order is made under section 44 , 45 or 46 that the registration of a design be revoked, the Registrar shall rectify the Register accordingly and the registration of the design shall be deemed never to have been made.

Section 48
�Proceedings for infringement by registered owner
�

Infringement proceedings

(1)

An infringement of the right in a registered design is actionable by the registered owner and in any action in respect of such an infringement all such relief, by way of damages, injunction, account of profits or otherwise shall be available to the plaintiff as is available in proceedings in respect of the infringement of other proprietary rights.

(2)

The court shall not, in respect of the same infringement, both award damages and order an account of profits.

(3)

No proceedings shall be taken in respect of an infringement of a registered design committed before the date on which the certificate of registration of the design is issued under section 25.

Section 49
�Proceedings for infringement by co-owner
�

(1)

Subject to this section and to any agreement to the contrary, where there is more than one registered owner of a registered design, each of them shall be entitled to bring proceedings in respect of any infringement of the design.

(2)

In the application of section 31 to a registered design of which there is more than one registered owner, the reference to the registered owner shall be construed

(a) �

in relation to any act, as a reference to that registered owner or those registered owners who, by virtue of section 33 or any agreement referred to in that section, is or are entitled to do that act without its constituting an infringement; and

(b) �

in relation to any consent, as a reference to that registered owner or those registered owners who, by virtue of section 33 or any such agreement, is or are the proper person or persons to give the requisite consent.

(3)

In any proceedings taken by a registered owner by virtue of this section the other registered owner or owners shall be made a party or parties to the proceedings, but if any other registered owner is made a defendant he shall not be liable for any costs or expenses unless he takes part in the proceedings.

Section 50
�Proceedings for infringement by exclusive licensee
�

(1) Subject to this section, the holder of an exclusive licence under a registered design shall have the same right as the registered owner to bring proceedings in respect of any infringement of the design committed after the date of the licence and references to the registered owner in the provisions of this Ordinance relating to infringement shall be construed accordingly.

Legislative Texts

(2)

In awarding damages in any proceedings taken by an exclusive licensee by virtue of this section the court may take into consideration only the losses suffered or likely to be suffered by the exclusive licensee as a result of the infringement.

(3)

In ordering an account of profits in any proceedings taken by an exclusive licensee by virtue of this section the court may take into consideration only the profits derived from the infringement which are attributable to the infringement of the exclusive licensee’s rights.

(4)

In any proceedings taken by an exclusive licensee by virtue of this section the registered owner shall be made a party to the proceedings, but if the registered owner is made a defendant he shall not be liable for any costs or expenses unless he takes part in the proceedings.

Section 51
�General restriction on recovery of damages or profits
�

(1)

In proceedings for the infringement of a registered design 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.

(2)

For the purposes of subsection (1) a person shall not be taken to have been so aware or to have had reasonable grounds for so believing by reason only of the application to an article, or to any printed matter accompanying an article, of the word “registered”, or any word or words or abbreviation expressing or implying that a design has been registered, unless the registration number of the design accompanied the word or words or abbreviation in question.

(3)

In proceedings for infringement of a registered design the court may, if it thinks fit, refuse to award any damages or make any such order in respect of an infringement committed at any time during the period referred to in section 28(5) but before the fees referred to in that section are paid.

Section 52
�Restriction on recovery of damages or profits for infringements occurring
�before transactions are registered
�

Where a person becomes the registered owner or one of the registered owners or an exclusive licensee of a registered design by virtue of a transaction, instrument or event to which section 34 applies, then unless—

(a) �

an application to register the prescribed particulars of the transaction, instrument or event is made before the end of the period of 6 months beginning with its date; or

(b) �

the court is satisfied that it was not practicable to make such an application before the end of that period and that an application was made as soon as practicable after the end of that period,

he is not entitled to damages or an account of profits in respect of any infringement occurring after the date of the transaction, instrument or event and before the prescribed particulars of the transaction, instrument or event are registered.

Section 53
�Order for delivery up
�

(1) Where a person has in his possession, custody or control in the course of a business—

Legislative Texts

(a) �

infringing articles; or

(b) �

anything specifically designed or adapted for the making of infringing articles, knowing or having reason to believe that the thing has been or is to be used to make infringing articles,

the registered owner of the design in question may apply to the court for an order that the articles or thing be delivered to him or to such other person as the court may direct.

(2)

Where the court makes an order under subsection (1) , it shall also make an order under section 54 unless it determines that there are grounds for not making such an order.

(3)

No application may be made under subsection (1) after the end of the period of 6 years from the date the articles or thing concerned were made unless during the whole of that period the registered owner was under a disability or was prevented by fraud or concealment from discovering the facts entitling him to make the application, in which case the registered owner may make an application at any time before the end of the period of 6 years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(4)

A person to whom any article or thing is delivered up under an order made under subsection (1) shall, if an order is not made under section 54 at the time of the making of the order under subsection (1) , retain the article or thing pending the making of an order under section 54 or the decision of the court not to make such an order.

Section 54
�Order for disposal
�

(1)

An application may be made to the court for an order that the articles or thing delivered up under section 53 shall be—

(a) �

forfeited to the registered owner;

(b) �

destroyed; or

(c) �

disposed of in such manner as the court specifies.

(2)

In deciding what order or decision to make under subsection (1) , if any, the court shall consider whether any other remedies available in proceedings for infringement would be adequate to compensate the registered owner and any licensee and protect their interests.

(3)

Where there is more than one person interested in the articles or thing in question, the court may make such order under subsection (1) as it thinks just and it may, in particular, direct that the articles or thing delivered up under section 53 be disposed of and the proceeds be divided among them as the court directs.

(4)

If the court decides that no order should be made under subsection (1) , the person who had possession, custody or control of the articles or thing before they were delivered up under section 53 is entitled to their return.

Section 55
�Declaration as to non-infringement
�

Without prejudice to the court’s jurisdiction to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a registered design may be made by the court in any proceedings between the person doing or

Legislative Texts

proposing to do the act and the registered owner, notwithstanding that no assertion to the contrary has been made by the registered owner, if it is shown that—

(a) �

that person has applied in writing to the registered owner for a written acknowledgement to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and

(b) �

the registered owner has refused or failed to give any such acknowledgement.

Section 56
�Certificate of contested validity of registration
�

Remarks:

Amendments retroactively made — see 25 of 1998 s. 2

(1)

If in any proceedings before the court the validity of the registration of a design is contested and that registration is found by the court to be valid, the court may certify the finding and the fact that the validity of the registration was so contested.

(2)

Where a certificate is granted under this section, then if, in any subsequent proceedings before the court for infringement of the registered design concerned or for revocation of the registration, a final order or judgment is made or given in favour of the party relying on the validity of the registration that party shall, unless the court otherwise directs, be entitled to his costs on the indemnity basis within the meaning of that term as appearing in Order 62, rule 28 of the Rules of the High Court (Cap 4 sub. leg.) (other than the costs of any appeal in the subsequent proceedings). (Amended 25 of 1998 s. 2)

Section 57
�Remedy for groundless threats of infringement proceedings
�

(1)

Where a person (whether or not the registered owner of, or entitled to any right in, a registered design) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a registered design, any person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) , bring proceedings in the court against the person making the threats for any such relief as is mentioned in subsection (3) .

(2)

In any such proceedings the plaintiff shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless—

(a) �

the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute an infringement of a registered design; and

(b) �

the plaintiff fails to show that the registration of the design concerned is invalid.

(3)

The relief is—

(a) �

a declaration to the effect that the threats are unjustifiable;

(b) �

an injunction against the continuance of the threats; and

(c) �

such damages, if any, as have been sustained by the plaintiff by reason of the threats.

Legislative Texts

(4)

Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of the making of an article for sale or hire or the importing of anything.

(5)

For the purposes of this section a notification of the existence of a registered design does not of itself constitute a threat to institute proceedings.

Section 58
�Appeal from decisions or orders of Registrar
�

Miscellaneous

(1)

Except as otherwise provided by the regulations, an appeal lies to the court from any decision or order of the Registrar under this Ordinance.

(2)

Any appeal under this Ordinance which concerns an application for registration of a design shall be heard in private unless the court otherwise directs.

(3)

In any appeal under this Ordinance—

(a) �

the Registrar shall be entitled to appear and be represented and be heard in support of his decision or order;

(b) �

the Registrar shall appear if so directed by the court.

(4)

In any appeal under this Ordinance the court may exercise any power which could have been exercised by the Registrar in proceedings from which the appeal is brought.

(5)

In this section, “decision” includes any act of the Registrar made in the exercise of a discretion vested in him by or under this Ordinance.

Section 59
�Registrar’s appearance in proceedings involving Register
�

(1)

In any proceedings before the court which concerns an application for the alteration or rectification of the Register

(a) �

the Registrar shall be entitled to appear and be represented and be heard; and

(b) �

the Registrar shall appear if so directed by the court.

(2)

Unless otherwise directed by the court, the Registrar may instead of appearing submit to the court a statement in writing signed by him, giving particulars of—

(a) �

any proceedings before him in relation to the matter in issue;

(b) �

the grounds of any decision given by him;

(c) �

the practice of the Registrar or the Registry in like cases, if any; and

(d) �

such matters relevant to the issues and within his knowledge as Registrar as he thinks fit, and the statement shall be deemed to form part of the evidence in the proceedings.

Section 60
�General powers of court
�

Legislative Texts

The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Ordinance, make any order or exercise any other power which the Registrar could have made or exercised for the purpose of determining that question.

Section 61
�Procedure in case of option to apply to court or Registrar
�

(1)

Where under this Ordinance a person has an option to make an application either to the court or to the Registrar on a question concerning a registered design or an application for registration of a design, then—

(a) �

if any proceeding concerning the design or application for registration in question is pending before the court, the application must be made to the court; and

(b) �

if in any other case the application is made to the Registrar, he may, at any stage of the proceedings, refer the application to the court, or he may, after hearing the parties, determine the question, subject to appeal to the court.

(2)

Subsection (1) is without prejudice to the court’s powers, apart from this section, to determine any question referred to in that subsection.

Section 62
�Costs and expenses in proceedings before court
�

(1)

In all proceedings before the court under this Ordinance the court may award to any party such costs as it may consider reasonable and the costs of the Registrar shall be in the discretion of the court, but the Registrar shall not be ordered to pay the costs of any other of the parties.

(2)

If in any such proceedings the court directs that any costs of one party shall be paid by another party, the court may settle the amount of the costs by fixing a lump sum or may direct that the costs shall be taxed on a scale specified by the court, being a scale of costs prescribed by rules of court.

Section 63
�Costs and expenses in proceedings before Registrar
�

(1)

The Registrar may, in proceedings before him under this Ordinance, by order award to any party such costs as he may consider reasonable and direct how and by what parties they are to be paid.

(2)

Any costs awarded under this section shall, if the court so orders, be recoverable by execution issued from the court as if they were payable under an order of that court.

Register of designs

Legislative Texts

(1)

The Registrar shall keep at the Registry a register to be known as the Register of Designs.

(2)

There shall be entered in the Register in accordance with this Ordinance and the rules—

(3) Notwithstanding subsection (2) , no notice of any trust, whether express, implied or constructive, shall be entered in the Register, and the Registrar shall not be affected by any such notice.

(4) The Register need not be kept in documentary form.

Section 65 Register is prima facie evidence

(1)

Subject to subsection (4) , the Register shall be prima facie evidence of anything required or authorized by this Ordinance or the rules to be registered.

(2)

A certificate purporting to be signed by the Registrar and certifying that any entry in the Register which he is authorized by this Ordinance or the rules to make has or has not been made, or that any other thing which he is so authorized to do has or has not been done, shall be prima facie evidence of the matters so certified.

(3)

Each of the following, that is to say—

(a) �

a copy of an entry in the Register or an extract from the Register which is supplied under section 69(1) ;

(b) �

a copy of—

(i) �

any document kept in the Registry;

(ii) �

an extract from any such document;

(iii) �any model or specification of a registered design; or

(iv) �any application for registration of a design,

which purports to be a certified copy or a certified extract shall, subject to subsection (4) , be admitted in evidence without further proof and without production of any original.

(4)

This section is without prejudice to section 22A or 22B or Part IV of the Evidence Ordinance (Cap 8) or any provision made by virtue of that section or Part. (Replaced 2 of 1999 s. 6)

(5)

In this section, “certified copy” and “certified extract” mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar.

Section 66 Rectification of Register

(1) The court may, on the application of any person aggrieved, order the Register to be rectified by the making, or the variation or deletion, of any entry in it.

Legislative Texts

(2) In proceedings under this section the court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the Register.

Section 67
�Correction of errors in Register
�

(1) Subject to the rules, the Registrar may correct any error in the Register.

(2)

A correction may be made under subsection (1) either upon a request in writing made by any person interested or on the Registrar’s own initiative.

(3)

Where the Registrar is requested to correct such an error by a person interested, any person may in accordance with the rules give the Registrar notice of opposition to the request and the Registrar shall determine the matter.

Section 68
�Right to inspect Register
�

(1)

Subject to any rules, the public shall have a right to inspect the Register during the normal business hours of the Registry.

(2)

In relation to any portion of the Register kept otherwise than in documentary form the right of inspection conferred by subsection (1) is a right to inspect the material on the Register.

Section 69
�Right to copies of entries
�

(1)

Any person who applies for a certified copy of an entry in the Register or a certified extract from the Register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts.

(2)

Any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

(3) Applications under this section shall be made in such manner as may be prescribed.

(4)

In relation to any portion of the Register kept otherwise than in documentary form, the right to a copy or extract conferred by subsection (1) or (2) is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.

Section 70
�Right to information
�

(1)

After the registration of a design and upon the filing of a written request by any person in the prescribed manner, the Registrar shall give the person making the request such information, and permit him to inspect such documents, relating to the application for registration or the design concerned (including any representation, sample or specimen of the design) as may be specified in the request, subject, however, to any prescribed conditions.

(2)

Subject to this section, until notice of registration of a design is published under section 25 , information or documents constituting or relating to the application shall not, without the consent of the owner or the applicant (as the case may be), be published or communicated to any person by the Registrar.

Legislative Texts

(3)

Subsection (2) shall not prevent the Registrar from publishing or communicating to others any prescribed information relating to an application for registration of a design.

(4)

Where a person is notified that an application for registration of a design has been made and that the applicant will, if the design is registered, bring proceedings against that person in the event of his doing an act specified in the notification, that person may make a request under subsection (1) , notwithstanding that the design has not been registered, and that subsection shall apply accordingly.

Section 71
�Business hours of Registry
�

(1)

The Registrar may by notice published in the Gazette give directions specifying the hours of business of the Registry for the purpose of the transaction of business under this Ordinance.

(2)

Business done on any day after the specified hours of business, or on a day which is not a business day, shall be deemed to have been done on the next following business day; and where the time for doing anything under this Ordinance expires on a day which is not a business day, that time shall be extended to the next following business day.

(3)

Directions made under this section may make different provision for different classes of business.

Section 72
�Language of proceedings before Registrar
�

Miscellaneous

Except as otherwise provided in the rules, and notwithstanding section 5 of the Official Languages Ordinance (Cap 5), the official language in which an application for registration of a design is filed shall be used as the language of proceedings in all proceedings before the Registrar under this Ordinance.

Section 73
�Exercise of Registrar’s discretionary powers
�

Without prejudice to any rule of law, the Registrar shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretion vested in the Registrar by this Ordinance or the rules.

Section 74
�Immunity of Registrar as regards official acts
�

Neither the Registrar nor any public officer

(a) �

shall be taken to warrant the validity of the registration of any design registered under this Ordinance; or

(b) �

shall incur any liability by reason of, or in connection with, any examination required or authorized by this Ordinance, or any report or other proceedings consequent on any such examination or investigation.

Legislative Texts

Section 75
�Recognition of agents
�

(1)

Subject to this section, where under this Ordinance any act has to be done by or to any person in connection with a registered design or any procedure relating to a registered design or the registration of a design, the act may be done by or to an agent of such person duly authorized by that person orally or in writing.

(2)

A person duly authorized by another person under subsection (1) to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person) on giving notice to the Registrar and the other person, cease to act as agent for the other person.

(3)

The Registrar may refuse to recognize as agent in respect of any business under this Ordinance any person specified for the purpose in the rules.

(4)

The Registrar shall refuse to recognize as an agent a person who neither resides nor has a place of business in Hong Kong.

Section 76
�Correction of errors in filed documents
�

(1)

Subject to the rules, the Registrar may upon request by any person interested correct any error of translation or transcription, any clerical error or any mistake made in

(a) �

any application for registration of a design or document filed in connection with such an application;

(b) �

any representation of a design; or

(c) �

any document filed in connection with a registered design.

(2)

Any person may in accordance with the rules give the Registrar notice of opposition to the request and the Registrar shall determine the matter.

Section 77
�Designs relevant for defence purposes
�

(1) Where, either before or after the commencement of this Ordinance, an application for registration of a design has been made and it appears to the Registrar that the design is one of a class notified to him by the Secretary of State as relevant for defence purposes, the Registrar may give directions for prohibiting or restricting the publication of information with respect to the design, or the communication of such information to any person or class of persons specified in the directions.

(2)

Rules may be made for securing that where such directions are given

(a) �

the representation of the design; and

(b) �

any evidence filed in support of the applicant’s application for registration that the design is registrable,

shall not be open to public inspection in the Registry during the continuance in force of the directions.

(3) Where the Registrar gives such directions, he shall give notice of the application of the directions to the Secretary of State, and thereupon the following provisions shall have effect-

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(a) �

the Secretary of State shall consider whether the publication of the design would be prejudicial to the defence of the United Kingdom or Hong Kong;

(b) �

the Secretary of State may at any time after the design has been registered or, with the consent of the applicant, at any time before the design has been registered, inspect the representation of the design, or any such evidence as to its registrability;

(c) �

if upon the consideration of the design at any time it appears to the Secretary of State that the publication of the design would not, or would no longer, be prejudicial to the defence of the United Kingdom or Hong Kong, notice may be given to the Registrar to that effect; and

(d) �

on the receipt of any such notice the Registrar shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing anything required or authorized to be done by or under this Ordinance in connection with the application for registration, whether or not that time has previously expired.

(4) In this section, “Secretary of State” means the Secretary of State for Trade and Industry of the United Kingdom.

Section 78
�Forfeited articles
�

Nothing in this Ordinance affects the right of the Government or any person deriving title directly or indirectly from the Government to dispose of or use articles forfeited under the law relating to customs or excise.

Transitional provisions

(1)

In this section and sections 91 to 93 , the “Registered Designs Act 1949” means the Registered Designs Act 1949 (1949 c. 88 U.K.), as amended and as applied to Hong Kong by the United Kingdom Designs (Protection) Ordinance (Cap 44). <^* Note-Exp. x-Ref: Sections 91 , 92 , 93 ^*>

(2)

Unless the context otherwise requires, any word or expression used in sections 91 to 93 and defined in the Registered Designs Act 1949 has the same meaning as in that Act. < ^* Note-Exp. x-Ref: Sections 91 , 92 , 93 ^*>

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Section 91
�Designs deemed registered under this Ordinance
�

(1)

Any design registered under the Registered Designs Act 1949 before the date of commencement of this Ordinance the right in which is subsisting or is treated as subsisting on that date shall be deemed to be registered under this Ordinance in respect of the articles for which it is registered under that Act.

(2)

Any design registered under the Registered Designs Act 1949 on or after the date of commencement of this Ordinance the application for which was pending on the date immediately preceding the date of commencement of this Ordinance shall be deemed to be registered under this Ordinance in respect of the articles for which it is registered under that Act.

(3)

Notwithstanding any other provision of this Ordinance, the initial period of registration of a design deemed by subsection (1) to be registered under this Ordinance shall consist of the period

(a) �

beginning on the date of commencement of this Ordinance; and

(b) �

ending on the earlier of—

(i) �

the date on which the right in the design expires under the Registered Designs Act 1949; and

(ii) �

the date on which the right in the design would expire under that Act if the period for which the right is subsisting on the date of commencement of this Ordinance could not be extended in accordance with section 8(2) of that Act.

(4)

Notwithstanding any other provision of this Ordinance, the initial period of registration of a design deemed by subsection (2) to be registered under this Ordinance shall consist of the period—

(a) �

beginning on the date of registration of the design under the Registered Designs Act 1949; and

(b) �

ending on the earlier of—

(i) �

the date on which the right in the design expires under the Registered Designs Act 1949; and

(ii) �

the date on which the right in the design would expire under that Act if the period for which the right subsists under section 8(1) of that Act could not be extended in accordance with section 8(2) of that Act.

Section 92
�Renewal of registration
�

(1)

The period of registration of a design deemed by section 91 to be registered under this Ordinance may be extended for additional periods of 5 years each but the total period of registration under this Ordinance and the Registered Designs Act 1949 may not exceed 25 years and 6 months in the aggregate.

(2)

If the registered proprietor of the design desires to renew the period of registration for a further period of 5 years after the initial period of registration referred to in section 91(3) or (4) expires, he shall submit an application to the Registrar in accordance with subsection (3) .

(3) The application referred to in subsection (2) shall—

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(a) �

be submitted before the later of—

(i) �

the date that is 6 months prior to the expiration of the initial period of registration under this Ordinance; and

(ii) �

the date that is 6 months after the commencement of this Ordinance;

(b) �

include—

(i) �

a representation of the design as registered under the Registered Designs Act 1949;

(ii) �

a certificate confirming registration of the design issued by the Registrar of the United Kingdom Designs Registry;

(iii) �a certified copy of an entry in, or a certified extract from, the United Kingdom Designs Registry, stating the full name of the proprietor of the design immediately preceding the application; and (iv) �such other information, documents or matter as may be required by the rules; and

(c) �

be accompanied by the prescribed renewal fee.

(4) Section 28(3) , (4) and (5) applies to any further renewal of the period of registration of a design deemed by section 91 to be registered under this Ordinance.

Section 93
�Restrictions on remedies
�

(1)

The registered proprietor of a design deemed by section 91 to be registered under this Ordinance shall not be entitled to recover any damages in respect of any infringement of the design from any defendant who proves that at the date of the infringement he was not aware, nor had any reasonable means of making himself aware, of the existence of the registration of the design under the Registered Designs Act 1949.

(2) Nothing in subsection (1) shall affect any proceedings for an injunction.

(3)

The court shall have the power, upon the application of any person who alleges that his interests have been prejudicially affected by this section, to declare that exclusive privileges and rights in a design have not been acquired in Hong Kong under section 91 upon any of the grounds upon which the United Kingdom registration might have been cancelled under the Registered Designs Act 1949; such grounds shall be deemed to include the publication of the design in Hong Kong prior to the date of registration of the design under that Act.

(4)

In any proceedings for infringement of a design deemed by section 91 to be registered under this Ordinance, the court shall apply—

(a) �

the law of the United Kingdom in relation to infringements occurring before the date of commencement of this Ordinance; and

(b) �

the law of Hong Kong in relation to infringements occurring on or after the date of commencement of this Ordinance.

Section 94 (Omitted as spent)

(Omitted as spent)

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Section 95 (Omitted as spent)

(Omitted as spent)

Section 96
�Repeal and savings
�

(1)

(Omitted as spent)

(2)

Any thing done under—

(a) �

the United Kingdom Designs (Protection) Ordinance (Cap 44); or

(b) �

the Registered Designs Act 1949 (1949 c. 88 U.K.), as amended and as applied to Hong Kong by the United Kingdom Designs (Protection) Ordinance (Cap 44),

shall, if in force on the commencement of this Ordinance, and so far as it could have been done under this Ordinance, continue in force and have effect as if done under the corresponding provisions of this Ordinance.

(3) A reference in any document to the United Kingdom Designs (Protection) Ordinance (Cap 44) shall, unless the context otherwise requires, be construed as a reference to this Ordinance.

Schedule 1
�PARIS CONVENTION COUNTRIES AND WTO MEMBERS
�

[sections 2 & 83]

Countries which have acceded to the Paris Convention

Albania

Algeria

Argentina

Armenia

Australia

Austria

Azerbaijan

Bahamas

Bahrain (Added L.N. 340 of 1998)

Bangladesh

Barbados

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Belarus Belgium Benin Bolivia Bosnia and Herzegovina Botswana (Added L.N. 340 of 1998) Brazil Bulgaria Burkina Faso Burundi Cambodia (Added L.N. 340 of 1998) Cameroon Canada Central African Republic Chad Chile China Colombia Congo Costa Rica Cote d’Ivoire Croatia Cuba Cyprus Czech Republic Democratic People’s Republic of Korea Democratic Republic of Sao Tome and Principe (Added L.N. 340 of 1998)

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Democratic Republic of the Congo (Added L.N. 340 of 1998) Denmark Dominican Republic Egypt El Salvador Equatorial Guinea Estonia Finland France Gabon Gambia Georgia Germany Ghana Greece Grenada (Added L.N. 340 of 1998) Guatemala (Added L.N. 340 of 1998) Guinea Guinea-Bissau Guyana Haiti Holy See Honduras Hungary Iceland Indonesia Iran (Islamic Republic of)

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Iraq Ireland Israel Italy Japan Jordan Kazakhstan (Added L.N. 340 of 1998) Kenya Kyrgyzstan Latvia Lebanon Lesotho Liberia Libya Liechtenstein Lithuania Luxembourg Madagascar Malawi Malaysia Mali Malta Mauritania Mauritius Mexico Monaco Mongolia

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Morocco Netherlands New Zealand Nicaragua Niger Nigeria Norway Panama Paraguay Peru Philippines Poland Portugal Republic of Korea Republic of Moldova Republic of Mozambique (Added L.N. 340 of 1998) Romania Russian Federation Rwanda Saint Kitts and Nevis Saint Lucia Saint Vincent and the Grenadines San Marino Senegal Sierra Leone Singapore Slovak Republic (Added L.N. 340 of 1998)

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Slovenia South Africa Spain Sri Lanka Sudan Suriname Swaziland Sweden Switzerland Syria Tajikistan The former Yugoslav Republic of Macedonia Togo Trinidad and Tobago Tunisia Turkey Turkmenistan Uganda Ukraine United Arab Emirates United Kingdom United Republic of Tanzania United States of America Uruguay Uzbekistan Venezuela Viet Nam

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Yugoslavia Zambia Zimbabwe

Countries territories and areas which have acceded to the World Trade Organization Agreement (not including countries which have acceded to the Paris Convention) Angola Antigua and Barbuda Belize Brunei Darussalam Djibouti Dominica Ecuador European Community Fiji India Jamaica Kuwait Macau Maldives Myanmar Namibia Pakistan Papua New Guinea Qatar Soloman Islands Thailand (Amended L.N. 340 of 1998)