Main IPRs: Hong Kong
A guide to intellectual property law in Hong Kong. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
The invention must be susceptible of industrial application, new and involve an inventive step.
There are two types of patents, standard patents and short-term patents. Standard patents are granted through a two-stage procedure by filing:
A request to record the designated patent application (that is, Chinese, European Patent (EP) (UK) or UK-published patent application).
A request for registration and grant after the designated patent has been granted.
Short-term patents are granted based on a search report from an international searching authority or the Chinese, European or UK Patent Office.
The excluded categories are:
A discovery, scientific theory or mathematical method.
An aesthetic creation.
A scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program.
The presentation of information.
A method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body.
An invention the publication or working of which would be contrary to public order.
A plant or animal variety or an essentially biological process for the production of plants or animals (except a microbiological process or the products of such a process).
There is no mechanism for opposition of patents at the application stage. However, the validity of patents can be challenged through any one of the following:
Defence in infringement proceedings.
Proceedings for groundless threats of infringement.
Declaration of non-infringement of a patent.
Revocation of the patent.
References of disputes as to government use.
Both standard patents and short-term patents take effect from the date on which the fact of its grant is advertised in the Official Journal.
A standard patent has a term of 20 years from the deemed date of filing (that is, the date of filing the designated patent), subject to payment of renewal fees.
A short-term patent has a term of eight years from the date of filing, subject to payment of renewal fees.
For a product patent: making, putting on the market, using or importing the product or stocking the product.
For a process patent: using or offering the process for use when the third party knows, or it is obvious to a reasonable person in the circumstances, that using without consent is prohibited.
In relation to any product obtained directly by means of a process patent: putting on the market, using or importing the product or stocking the product.
Indirect use of the patent.
A trade mark (which can consist of words, indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging and any combination of such signs) must be both:
Capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Capable of being represented graphically.
It is not necessary but it is highly recommended to register trade marks in Hong Kong. Registering a trade mark gives to the owner an exclusive right to use the trade mark in relation to its goods or services.
Unregistered trade marks are protected in Hong Kong under the common law of cause of action of passing off, which is usually a more difficult action to bring than an action for infringement of a registered trade mark.
The Trade Marks Registry of the Intellectual Property Department registers trade marks. Guidance is available on its website (www.ipd.gov.hk/eng/trademarks.htm).
The principal grounds are that the trade mark:
Is descriptive of the applicants' 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 a shape that results from the goods themselves, the shape of goods that is necessary to obtain a technical result or a shape that gives substantial value to the goods.
Is filed in bad faith or its use is prohibited under any Hong Kong law.
Consists of the Chinese national flag or emblem or the Hong Kong regional flag or emblem.
Is identical or similar to another registered mark, or one that is being applied for covering identical or similar goods.
Is contrary to accepted principles of morality or likely to deceive the public.
Is likely to cause confusion on the part of the public.
The grounds for refusing to register (see Question 13).
Identical or similar to a well-known trade mark protected under the Paris Convention, covering dissimilar goods/services, and the use of the applied for trade mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the well-known trade mark.
Use of the mark in Hong Kong is liable to be prevented by the law protecting unregistered trade marks or signs or earlier rights.
A person infringes a registered trade mark if:
He uses an identical sign for identical goods or services in the course of trade.
He uses an identical sign for similar goods or services or a similar sign for identical or similar goods in the course of trade and the use of such sign is likely to cause confusion on the part of the public.
He uses a sign similar or identical to a well-known trade mark in relation to dissimilar goods or services in the course of trade, and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the well-known trade mark.
A registered trade mark is not infringed by 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.
A person of the name of his predecessor in business or the name of his predecessor's place of business.
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.
The trade mark if it is necessary to indicate the intended purpose of goods or services.
A registered trade mark is also not infringed:
By the use of a mark when the use predates the date of the 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 goods has not been changed or impaired after the goods are put on the market, and the use is not detrimental to the distinctive character or repute of the trade mark.
Use in comparative advertising in accordance with honest practices in industrial or commercial matters.
There must be a "work" as identified in the Copyright Ordinance, that is:
Original literary, dramatic, musical and artistic works.
Broadcasts or cable programmes.
Typographical arrangement of published editions.
Hong Kong adopts an open system of copyright entitlement. A work qualifies for protection irrespective of the place of domicile or residence or country of incorporation of the author, or place of first publication.
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.
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 in which death occurs 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.
Broadcasts and cable programmes: expires at the end of 50 years from the end of the calendar year the broadcast was made or 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.
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.
Importing into Hong Kong or exporting from Hong Kong any infringing copies with knowledge.
Possessing, selling or letting for hire, exhibiting in public or distributing any infringing copies with knowledge.
Providing means for making infringing copies with knowledge.
Permitting use of premises or provision of apparatus for infringing performance with knowledge.
The design must be new, that is, it has not been previously registered for the same or any other article or it has not been published or disclosed in Hong Kong or elsewhere.
A design is not registrable if the appearance of the article is not material, or if the publication or use of the design would be contrary to public order or morality.
The Designs Registry of the Intellectual Property Department registers designs. Guidance is available on its website (www.ipd.gov.hk).
Unregistered designs are protected under the law of copyright. Protection is for a period of 15 years from the end of the calendar year in which articles incorporating an unregistered design are first marketed (see Questions 20 to 26).
The regulatory authority
Intellectual Property Department
Main areas of responsibility. To provide patent, trade mark and designs registration services and to promote IPRs in Hong Kong.
Guidance on application procedure. This is provided on its website.
Wilkinson & Grist
Qualified. Hong Kong, 1990
Areas of practice. IP.
- Representing a number of record companies in pursuing copyright infringement actions.
- Assisting a Hong Kong based multi-national conglomerate in domain name dispute proceedings.