October Newsletter

Hong Kong Trademark November 2005 Newsletter
Protection of designs Designers often ask what steps they can take to protect their work. Designs are generally protected under two schemes in Hong Kong. Hong Kong has a registration system for new designs. Registered designs protect the owners against copying for the same products by unauthorized third parties. To benefit from such protection, application must be made before the designs are shown publicly. If a design is disclosed before application, registration is invalid. With proper planning, design registration can protect designs against copying. The other main protection scheme is copyright. As mentioned in our last newsletter “Copyright registration” at www.ProactiveAdvisoryGroup.com/news.htm, copyright protection begins when an original work is created. Protection is not limited to literary, musical or video works. It is an automatic right that protects computer software, artistic works, drawings, designs and other original works as well. Hong Kong does not have a copyright registration system which provides evidence of the original work, its creator and the date of creation. While not official, the Federation of Hong Kong Industries has a copyright depository service and charges HK$500 per year to keep copies of original work, provided that it can fit in an A4 size envelope. A copyright owner can achieve the same result by putting the original work into an envelope and sending it by registered mail to himself or a trusted person. So long as the envelope remains properly sealed and not tampered with, in the hands of an experienced solicitor, the registered mail can evidence the existence of the copyright, without incurring a HK$500 per year charge. A copyright owner can also register the work with other jurisdictions with registration system, such as China or the United States. What is the advantage of registration if the copyright can be evidenced by a registered letter? Hong Kong’s Customs and Excise Department (C&ED) is the only department authorized to take criminal action against copyright and trademark infringement in Hong Kong. Upon showing required documentation of ownership, the C&ED will investigate and prosecute infringers within Hong Kong and seize the infringing goods. The C&ED will accept copyright certification from another jurisdiction as evidence of ownership of the copyright. Likewise, if a copyrighted work is registered with the United States Copyright Office, the US government will also seize infringing goods entering its jurisdiction. This makes the US a good jurisdiction for registering copyrights and there is only a one time registration fee for this service with no additional annual filing fee. This gives a designer tremendous advantage over using the Federation of Hong Kong Industries depository service or the registered letter method. The C&ED will also take action against trademark infringement, but only if the trademark is registered in Hong Kong. At the practical level, the C&ED becomes the designer’s enforcement department against trademark infringement. That should be reason enough to register your brand in Hong Kong. The schemes are not mutually exclusive so a designer should consider combining them for better protection. No method offers absolute protection against infringement, but these inexpensive ways to provide protection. In the unfortunate event of infringement, they are good evidence of ownership for the designer seeking to enforce rights against infringers. If you have any specific questions or if you need more information, please drop us an email. We are happy to help.
© 2005 -- Prime IPR Global Advisors This article is copyrighted but you are welcome to quote from the article and share it with others provided that you attribute the content of the article as copyrighted to Prime IPR Global Advisors. The information in this article should not be relied upon by anyone as legal or business advice concerning specific intellectual property matters. Neither Prime IPR Global Advisors nor anyone related, associated or affiliated with it shall be responsible for any damage, loss, claims or any other liabilities arising from reliance, directly or indirectly, in whole or in part, on the contents of this article. Readers are encouraged to consult with a qualified lawyer or intellectual property advisor for specific advice.

Protection of designs

Designers often ask what steps they can take to protect their work. Designs are generally protected under two schemes in Hong Kong.

Hong Kong has a registration system for new designs. Registered designs protect the owners against copying for the same products by unauthorized third parties. To benefit from such protection, application must be made before the designs are shown publicly. If a design is disclosed before application, registration is invalid. With proper planning, design registration can protect designs against copying.

The other main protection scheme is copyright. As mentioned in our last newsletter “Copyright registration” at www.ProactiveAdvisoryGroup.com/news.htm, copyright protection begins when an original work is created. Protection is not limited to literary, musical or video works. It is an automatic right that protects computer software, artistic works, drawings, designs and other original works as well. Hong Kong does not have a copyright registration system which provides evidence of the original work, its creator and the date of creation.

While not official, the Federation of Hong Kong Industries has a copyright depository service and charges HK$500 per year to keep copies of original work, provided that it can fit in an A4 size envelope. A copyright owner can achieve the same result by putting the original work into an envelope and sending it by registered mail to himself or a trusted person. So long as the envelope remains properly sealed and not tampered with, in the hands of an experienced solicitor, the registered mail can evidence the existence of the copyright, without incurring a HK$500 per year charge. A copyright owner can also register the work with other jurisdictions with registration system, such as China or the

United States

What is the advantage of registration if the copyright can be evidenced by a registered letter? Hong Kong’s Customs and Excise Department (C&ED) is the only department authorized to take criminal action against copyright and trademark infringement in Hong Kong. Upon showing required documentation of ownership, the C&ED will investigate and prosecute infringers within Hong Kong and seize the infringing goods. The C&ED will accept copyright certification from another jurisdiction as evidence of ownership of the copyright.

Likewise, if a copyrighted work is registered with the United States Copyright Office, the US government will also seize infringing goods entering its jurisdiction. This makes the US a good jurisdiction for registering copyrights and there is only a one time registration fee for this service with no additional annual filing fee. This gives a designer tremendous advantage over using the Federation of Hong Kong Industries depository service or the registered letter method.

The C&ED will also take action against trademark infringement, but only if the trademark is registered in Hong Kong. At the practical level, the C&ED becomes the designer’s enforcement department against trademark infringement. That should be reason enough to register your brand in Hong Kong.

The schemes are not mutually exclusive so a designer should consider combining them for better protection. No method offers absolute protection against infringement, but these inexpensive ways to provide protection. In the unfortunate event of infringement, they are good evidence of ownership for the designer seeking to enforce rights against infringers.

If you have any specific questions or if you need more information, please drop us an email. We are happy to help.