The intellectual property laws of Hong Kong are mostly derived from the United Kingdom. However, the Hong Kong Government intends, before 1997, to enact new legislation which will continue to be largely based on the same legal principles but will, nevertheless, be independent of the United Kingdom. Intellectual property rights arise in a variety of ways but are comprehensive in terms of the protection afforded and the kinds of action which can be taken against infringers under the civil and criminal laws. The Customs and Excise Department of the Hong Kong Government plays an active role in investigating and prosecuting persons engaged in counterfeiting activities - prison sentences of up to 12 months are regularly imposed by the Courts.
Patent rights arise in Hong Kong through the registration of a United Kingdom effective patent, being either a United Kingdom national patent or a European patent obtained through the European Patent Convention if the United Kingdom is designated as a territory to which the patent is to extend.
Applications for registration must be filed within five years from when the patent was granted and, once issued, the Certificate of Registration will last for as long as the United Kingdom patent remains in force. The procedure is straightforward and relatively inexpensive, there being no renewal fees to pay.
Until fairly recently, it was not known to what extent patent rights in Hong Kong could be enforced against infringers but it is now clear that the Hong Kong Courts consider themselves as being in no different position as the Courts in the United Kingdom and are prepared to make rulings on key issues such as infringement and validity.
Contrary to the position on patents, trademark rights are largely already independent of the United Kingdom, although the law itself is very similar.
As a general rule, the right to register a trademark accrues to the first user in Hong Kong but, in the absence of any use, the first applicant is normally entitled to registration. This may not apply, however, if the mark is registered elsewhere by another party, particularly if it is an internationally famous mark.
The Trademarks Register is divided into two parts. Part A is reserved for marks which are considered to be inherently distinctive either on a prima facie basis or as a result of having acquired distinctiveness through use. Part B is reserved for marks which are considered only to be capable of distinguishing the goods or services of the owner but are, nevertheless, still worthy of statutory protection.
Before March 1992, trademarks used in connection with the provision of services (Service Marks) could not be registered in Hong Kong which meant that the only protection then available was under the Common Law to prevent acts of passing off. Since the relevant Hong Kong legislation was amended in March, 1992, Service Marks have proved to be popular and overall trademark filings during 1992 rose by approximately 100% as compared to the previous year. An important feature of the new law is that it permits the valid filing of Service Mark applications covering retail and similar services which do not qualify for registration in some other Commonwealth jurisdictions, notably the United Kingdom.
The copyright law in Hong Kong stems from the 1956 United Kingdom Copyright Act (as amended by the 1968 Design Copyright Act) despite the fact that the law in the United Kingdom has now changed significantly with the introduction of the 1988 Copyright, Designs and Patents Act, which has not been extended to Hong Kong. The result is that owners of copyright in Hong Kong are still able to obtain high monetary awards (conversion damages) based on the converted monetary value of the goods dealt in by the infringer. In addition, a recent amendment to the law has simplified the evidentiary procedures for owners of copyrights to establish legal title to copyright works - the Courts will now accept a simple affidavit as prima facie proof of ownership of copyright. As a result, copyright owners in Hong Kong enjoy a high degree of protection from counterfeiting and similar activities. Again, the Customs and Excise Department plays an active role in tracking down and prosecuting infringers.
5. Design rights
Design rights in Hong Kong, other than those arising through the copyright law, are obtained by registration in the United Kingdom of the design of the shape and configuration, pattern or ornament of an article or set of articles. The United Kingdom registered design then automatically extends to Hong Kong but it is necessary to apply to the Hong Kong Courts to enforce rights in the registered design locally.
NOTE: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
If you would like further advice please contact: David Ellis, Johnson Stokes & Master, 16th Floor, Princes Building, 10 Chater Road, Hong Kong; Tel 2843 4226; Fax no. : 2845 9121. Alternatively do a text search "Johnson Stokes and Master" and "Business Monitor"