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

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.

To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Rebecca Lo and Clement Lam, Rebecca Lo & Co
Contents

Patents

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

There are two types of patents in Hong Kong:

  • Standard patents that are 20-year term patents obtained by a simple process of recording an earlier patent application filed in a Designated Patent Office (PRC Patent Office, European Patent Office (designating UK) or European Patent Office) for the same invention (designated patent application) in two stages:

    • at the stage of publication of the designated patent application;

    • on grant of a patent (designated patent) resulting from the same designated patent application.

  • Short-term patents that can be obtained by indigenous filing in Hong Kong, but only with an eight-year term of protection.

To be patentable, an invention must:

  • Be novel.

  • Involve an inventive step.

  • Be capable of industrial application

 
2. What categories are excluded from patent protection?

The following are excluded from patent protection:

  • Discoveries, scientific theories, mathematical method and aesthetic creations.

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

  • Computer programs and presentation of information.

  • Methods for treatment of the human or animal body.

  • Inventions contrary to public order or morality.

  • Animal or plant varieties.

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

The Hong Kong Patents Registry registers both standard patents and short-term patents. Detailed guidance on application and forms are available online (www.ipd.gov.hk).

The Hong Kong Patents Registry can refuse applications for short-term patents or standard patents if the formality requirements for these applications are not met. However, patentability of short-term patents is not subject to substantive examination before grant. With standard patents, patentability is subject to substantive examination by the relevant designated patent office before grant. In other words, for both kinds of patents, there is no substantive examination procedure carried out in Hong Kong.

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

There is no procedure for third parties to oppose the grant of a patent in Hong Kong.

However, if a designated patent (which served as the basis for the Hong Kong standard patent) is amended or revoked as a result of opposition before the Designated Patent Office, the amendment and revocation must be notified to the Registrar of Patents in Hong Kong.

The High Court of Hong Kong can on the application of any person revoke a standard patent or short-term patent on various grounds including:

  • The invention not being a patentable invention.

  • The patent was granted to a person that was not entitled to be granted that patent.

  • The specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in that art.

  • The matter disclosed in the specification of the patent extends beyond that disclosed in the application.

  • With a standard patent, the corresponding designated patent has been revoked following prescribed opposition or revocation proceedings in the designated patent office.

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

For standard patents, protection starts from the date on which the grant of the patent is published. It runs for a period of 20 years from the date of filing of the application, subject to payment of renewal fee every year from the third year after its grant.

For short-term patents, protection starts from the date on which the grant of the patent is published. It runs for eight years from the date of filing of the application, subject to payment of renewal fees every year from the fifth year onwards.

Extension of a patent term is not available under the current patent regime.

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

For a product patent, a patent infringement action can be brought on the following grounds:

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

  • Stocking the product.

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

  • Using the process.

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

A patent can also be infringed indirectly by a third party supplying or offering to supply means, relating to an essential element of that invention, for putting it into effect. The third party must know, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect in Hong Kong.

 
7. Which courts deal with patent infringement actions?

The High Court of Justice of Hong Kong deals with infringement actions.

 
8. What are the defences to patent infringement actions?

Typically, a defendant may seek to challenge the validity of the patent, on grounds such as:

  • The invention not being novel.

  • The invention not involving an invention step.

  • The patent does not disclose the invention sufficiently.

The defendant may also argue that the product or process under complaint does not fall within the scope of the protection of the patent.

Other defences that may be available include:

  • Acts done privately for non-commercial purposes.

  • Acts done for experimental purposes.

 
9. What are the remedies in patent infringement actions?

The remedies for patent infringement actions include:

  • Damages or account of profit.

  • Preliminary and final injunctions.

  • Discovery.

  • Delivery up or destruction of the infringing goods.

  • Costs.

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

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

 

Trade marks

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

To be registered as a trade mark, a sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings and being capable of being represented graphically.

A trade mark may consist of:

  • Words.

  • Indications.

  • Designs.

  • Letters.

  • Characters.

  • Numerals.

  • Figurative elements.

  • Colours.

  • Sounds.

  • Smells.

  • The shape of goods or their packaging.

  • Any combination of such signs.

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

There is no legal obligation to register a trade mark. However, trade marks that are not registered do not enjoy the statutory rights conferred on registered trade marks.

Trade marks that are not registered but that have acquired goodwill can nevertheless enjoy common law rights protected under the tort of passing off.

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

The Hong Kong Trade Marks Registry registers trade marks. Detailed guidance on application and forms are available online (www.ipd.gov.hk).

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

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

Absolute grounds for refusal include:

  • The sign does not satisfy the definition of a trade mark in the statute.

  • It is devoid of any distinctive character.

  • It consists exclusively of signs that may serve to designate the:

    • kind;

    • quality;

    • quantity;

    • intended purpose;

    • value;

    • geographical origin;

    • time of production of goods or rendering of services;

    • other characteristics of goods or services.

  • It consists exclusively of signs that have become customary in the current language or in the honest and established practices of the trade.

However, it is possible to overcome a refusal based on the last three grounds if the mark has in fact acquired a distinctive character as a result of use of the mark.

For shape marks, a sign will be refused on absolute grounds if it is exclusively a shape:

  • That results from the nature of the goods themselves.

  • Of goods that is necessary to obtain a technical result.

  • That gives substantial value to the goods.

A mark will also be refused registration on absolute grounds if:

  • It is contrary to accepted principles of morality.

  • It is likely to deceive the public.

  • Its use is prohibited under, or by virtue, of any law.

  • The application for registration of the mark is made in bad faith.

Marks that contain designs of the flag or the emblem of China or the flag or emblem of the Hong Kong Special Administrative Region cannot be registered. Marks that contain designs of national flags or emblems of Paris Convention countries or World Trade Organisation (WTO) members, or emblems of certain international intergovernmental organisations will not be allowed without the authorisation of competent authorities.

Relative grounds of refusal refer to existence of an earlier right. This may be a registration for:

  • An identical or similar trade mark.

  • A well-known trade mark entitled to protection under the Paris Convention.

  • Earlier rights that may be enforced by virtue of the law of passing off, copyright or registered design.

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

Third parties can oppose a trade mark application on the following grounds:

  • An absolute ground for refusal of registration exists.

  • A relative ground for refusal of registration exists.

  • Bad faith exists in the application for registration of the trade mark.

The period for filing opposition is three months beginning on the date of publication of an application. This period can only be extended once for a period of two months.

The Notice of Opposition must include both:

  • A statement of the grounds of opposition.

  • A representation of that earlier trade mark (where the opposition is based on an earlier trade mark of the opponent), the goods or services in respect of which it is used or registered and the registration or application number of the earlier trade mark.

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

A registered trade mark is initially protected for ten years from the filing date and can be renewed indefinitely every ten years subject to payment of the prescribed renewal fee.

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

Civil proceedings

A registered trade mark is infringed if a person uses, in the course of trade or business, a sign that is:

  • Identical to the registered mark in relation to goods or services that are identical to those for which the trade mark is registered.

  • Identical to the registered mark in relation to goods or services that are similar to those for which it is registered, and the use of the sign in relation to those goods or services is likely to cause confusion to the public.

  • Similar to the registered mark in relation to goods or services that are identical or similar to those for which it is registered, and the use of the sign in relation to those goods or services is likely to cause confusion to the public.

  • Identical or similar to the registered mark in relation to goods or services that are not identical or similar to those for which the trade mark is registered. The registered mark must be a well-known trade mark entitled to protection under the Paris convention, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to the distinctive character or repute of the trade mark.

Criminal sanction

Under the Trade Description Ordinance, the Hong Kong Customs and Excise Department can prosecute people that in the course of trade either:

  • Forge a registered trade mark.

  • Falsely apply to any goods any trade mark or mark so nearly resembling a registered trade mark as to be calculated to deceive, or makes or dispose of the means of forging a trade mark.

 
18. Which courts deal with trade mark infringement actions?

Civil trade mark infringement actions can be brought in the District Court or High Court of Hong Kong, depending on the size of the claim for damages.

The Magistrate's Courts, District Court and High Court of Hong Kong deal with criminal trade mark infringement actions.

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

The more common defences that a defendant in a trade mark infringement case may raise are that:

  • The sign used by the defendant is not identical or confusingly similar to the registered trade mark.

  • The defendant's goods and services are not identical or similar to the registered goods.

  • Confusion of the public is unlikely.

  • The use of the defendant's sign is consented to, or acquiesced by, the owner of the registered trade mark.

  • The claimant's trade mark registration is invalid or should be revoked.

  • The defendant has an independent right to use the sign under dispute arising from his own trade mark registration.

  • The defendant has an independent right to use the sign under dispute arising from the use of the sign by the defendant or a predecessor in title earlier than the registration or use of the claimant's trade mark in Hong Kong.

  • The defendant's sign is the name or address of the defendant or his predecessor in business, provided the defendant's use is in accordance with honest practices in industrial and commercial matters.

  • Provided the defendant's use is in accordance with honest practices in industrial and commercial matters, the defendant's sign is used to designate the:

    • kind;

    • quality;

    • quantity;

    • intended purpose;

    • value;

    • geographical origin;

    • time of production of goods or rendering of services;

    • other characteristics of goods or services.

  • The use of the defendant's sign is necessary to indicate the intended purpose of goods or services (for example, as accessories or spare parts), provided the defendant's use is in accordance with honest practices in industrial and commercial matters.

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

The remedies in trade mark infringement actions include:

  • Damages or account of profit.

  • Preliminary and final injunction.

  • Delivery up or destruction of infringing goods and materials.

  • Discovery.

  • Costs.

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

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

 

Copyright

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

Copyright may subsist in the following works:

  • Literary works and dramatic works.

  • Artistic works, musical works, sound recordings, films or broadcast.

  • Cable programs.

  • Computer software.

To qualify for protection under copyright law:

  • The work must be original.

  • Sufficient skill, judgment or labour must have been expended by the author in creating the work.

 
23. Can copyright be registered?

Copyright is a right that automatically arises on creation of a work and no registration is required. There is no official registry in Hong Kong for registration of copyright works.

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

Copyright arises when the work is created.

For literary, dramatic, musical or artistic work, copyright generally lasts for 50 years from the end of the calendar year of the death of the author. If the work is computer-generated, copyright expires after 50 years from the end of the calendar year in which the work was made.

For sound recordings, copyright expires:

  • After 50 years from the end of the calendar year in which the recording is made.

  • If during that period it is released, 50 years from the end of the calendar year in which it is released.

For films, copyright expires after 50 years from the end of the calendar year in which the last of the following dies:

  • The principal director.

  • The author of the screenplay.

  • The author of the dialogue.

  • The composer of music especially created for and used in the film.

For broadcast or cable programmes, copyright expires after 50 years from the end of the calendar year in which the broadcast was made or the programme was included in a cable programme service.

For typographical arrangements of published editions, copyright expires after 25 years from the end of the calendar year in which the edition was first published.

For an artistic work, copyright expires either:

  • After 25 years from the end of the calendar year in which articles incorporating a registered corresponding design are first marketed.

  • After 15 years from the end of the calendar year in which articles incorporating an unregistered corresponding design are first marketed.

This only applies where the artistic work is exploited by:

  • Making articles by an industrial process that are treated as copies of the work.

  • Marketing such articles in Hong Kong or elsewhere.

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

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

  • Primary infringement includes copying, issuing copies to the public, rental of the copyright work to the public, making available copies of the copyright work to the public, performing, showing or playing the copyright work in public, broadcasting or inclusion of a copyright work in a cable programme, and adapting a copyright work, when done without the licence of the copyright owner.

  • Secondary infringement includes importing or exporting infringing copies, possessing or dealing with infringing copies, providing means for making infringing copies, permitting use of premises for infringing performance, and provision of apparatus for infringing performance, when done with knowledge or reason to believe that the copies of the performance are infringing.

 
26. Which courts deal with copyright infringement actions?

Civil copyright infringement actions can be brought in the District Court or High Court of Hong Kong, depending on the size of the claim for damages.

The Magistrate's Courts, District Court and High Court of Hong Kong deal with criminal copyright infringement actions.

 
27. What are the defences to copyright infringement actions?

The more common defences that a defendant in a copyright infringement case may raise include:

  • Work not qualifying for copyright protection.

  • Independent creation.

  • Insubstantial reproduction.

  • Research and private study.

  • Criticism, review and reporting.

  • Incidental inclusion of copyright material.

  • Things done for educational purposes.

  • Making back-up copies of a computer program.

 
28. What are the remedies in copyright infringement actions?

The remedies in copyright infringement actions include:

  • Damages or account of profit.

  • Preliminary and final injunction.

  • Delivery up or destruction of infringing goods and materials.

  • Discovery.

  • Costs.

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

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

 

Registered designs

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

A design means features such as shape, configuration, pattern, ornament, or their combination, applied to an industrial product.

To be validly registered, a design must:

  • Appeal aesthetically to the users and not include features dictated by its functions.

  • Be new at its application date (subject to a few exceptions, it is essential that the design has not been published when the application is filed, or otherwise the required novelty will have been destroyed).

  • Not be contrary to public order or morality.

 
31. Which authority registers designs?

The Hong Kong Design Registry registers designs. Detailed guidance on application and forms are available online (www.ipd.gov.hk).

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

There is no procedure for a third party to oppose a design application. A third party can only bring revocation proceedings after a design is registered.

Grounds for revocation include that the design was:

  • Not new at the time of its registration.

  • Not able to be registered.

  • Contrary to morality or public order.

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

A registered design is valid for a maximum of 25 years from application date, subject to payment of renewal fee every five years.

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

Design infringement actions can be brought where, without consent of the registered owner, a third party does one of the following to any article in respect of which the design is registered and to which that design, or a design not substantially different from it, has been applied:

  • Makes.

  • Imports for sale or hire or for use for the purpose of trade or business.

  • Sells, hires, offer or exposes for sale or hire.

 
35. Which courts deal with registered design infringement actions?

The High Court of Justice of Hong Kong deals with design infringement actions.

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

Defences may include:

  • The registered design was not novel.

  • The registered design could not be registered.

  • The design under complaint is substantially different from the registered design.

  • Acts done privately for non-commercial purposes.

  • Acts done for the purpose of evaluation, analysis, research or teaching.

  • Acts committed in good faith before filing date of the application for the registered design.

Unlike copyright, independent creation is not a defence to a claim for registered design infringement.

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

The remedies in registered design infringement actions include:

  • Damages or account of profit.

  • Preliminary and final injunction.

  • Delivery up or destruction of infringing goods and materials.

  • Discovery.

  • Costs.

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

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

 

Unregistered designs

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

There is no unregistered design right. A design that is not registered must seek protection under copyright law, subject to limitations on the period of protection.

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

Under the copyright law, where an artistic work that falls within the meaning of a design under the Registered Design Ordinance is not registered, protection expires after 15 years from the end of the calendar year in which articles incorporating the unregistered design are first marketed.

 
41. On what grounds can an unregistered design infringement action be brought?
 
42. What are the defences to unregistered design infringement actions?
 
43. What are the remedies in unregistered design infringement actions?
 

Confidential information

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

The legal conditions are that:

  • The information must be confidential.

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

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

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

An action for unauthorised use of confidential information can be brought on actual or threatened misuse, such as unauthorised disclosure or use.

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

The District Court and High Court of Hong Kong deal with actions for unauthorised use of confidential information.

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

Defences may include:

  • The information is in the public domain.

  • The information is useless or trivial.

  • The information is not provided to the discloser in circumstances that imports an obligation of confidentiality.

  • There is no detriment to the claimant.

  • Disclosure is in the public interest.

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

The remedies in actions for unauthorised use of confidential information include:

  • Damages or account of profit.

  • Preliminary and final injunction.

  • Delivery up, or destruction of, infringing goods and materials.

  • Discovery.

  • Costs.

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

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

 

Intellectual Property Department of Hong Kong SAR

W www.ipd.gov.hk

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

Guidance on application procedure. Available online.



Contributor profiles

Rebecca Lo, Partner

Rebecca Lo & Co

T +852 31048787
F +852 31041112
E lawyers@rlolaw.com

Professional qualifications. Solicitor, Hong Kong; Notary Public, Hong Kong; China-Appointed Attesting Officer, Hong Kong; Accredited Mediator, Hong Kong; Solicitor, England & Wales; Barrister and Solicitor, Australia; Advocate and Solicitor, Singapore; Attorney-at-Law, USA (California Bar)

Areas of practice. Intellectual property; cyber law; media law.

Languages. English, Chinese

Professional associations/memberships. The Law Society of Hong Kong; Hong Kong Society of Notaries; Association of China-Appointed Attesting Officers; Hong Kong Association of Mediation Accreditation Association Ltd.; The UK Law Society (non-practising member); The State Bar of California, USA; Asian Patent Attorneys Association; Hong Kong Institution of Trade Mark Agents; Chartered Institute of Patent Attorneys (UK) (overseas member); Institute of Trade Mark Attorneys (UK) (overseas member); AIPPI; Licensing Executives Society China and LES China Hong Kong Sub-Chapter.

Clement Lam, Partner

Rebecca Lo & Co

T +852 31048787
F +852 31041112
E lawyers@rlolaw.com

Professional qualifications. Solicitor, Hong Kong; Solicitor, England and Wales

Areas of practice. Intellectual property; cyber law; media law.

Languages. Chinese, English

Professional associations/memberships. The Law Society of Hong Kong, The UK Law Society (non-practising member), Asian Patent Attorneys Association.


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