design-hong-kong

Designs

Designs Laws and Related Rules

Guangdong Province

For the laws, you can find more information from the Patent Law of the People’s Republic of China (amended on 27 December 2008), Implementing Regulations of the Patent Law of the People’s Republic of China, Regulation on National Defense Patent, Guangdong Provincial Regulations on the Protection of Patents, Provisions on the Methods for Marking the Patent Marks and Patent Numbers, Measures for the Compulsory Licensing for Patent Implementation, Certain Questions Concerning Implementation of Customs Protection of Patents Provisions, and Regulations on Patent Commissioning.

Reference Website (English)

The Hong Kong Special Administrative Region

For the laws, you can find more information from the Registered Designs Ordinance (Cap. 522), Registered Designs Rules (Cap. 522A) on the website.

Reference Website (English)

The maximum time limit for an effective registration of a design is 25 years. The registration should be renewed every 5 years. Exclusive right to design related to the registered design can be enjoyed by the owner.

The one who can register a design is only the design’s owner. Ownership may be obtained by anyone through commission of the design’s creation, an employment contract which the employed person creates the related design, or design’s assignment.

The design registrable is only a new design. The confidential of a design should be kept by the owners of the design till an application for registration is filed. If the design is used for manufacturing, publishing, disclosing before filing an application, the registration will not be effective even for the registered design since the design cannot be perceived as new on the application date.

For disclosing a design, novelty will not be destroyed only under specific situations. Under Section 9 of the Registered Designs Ordinance of Hong Kong, it offers specific scenarios and requirements for confidential disclosure. If there is a need for a design owner to make known of the designs’ details before filing an application, advice should be asked from a lawyer or intellectual property agent to make sure the act of disclosing will not damage its novelty.

The Macao Special Administrative Region

For the laws, you can find more information from the Industrial Property Code of Macao (General provisions: Article 1-53, Industrial Property Registration: Article 54-59, Industrial Designs and Models: Article 150-196, Legal recourse: Article 275-283, Monitoring and penalties: Article 284-314) on the website. The Industrial Property Code of Macao that was backed up by the Decree-Law no. 97/99/M was issued on 13 December 1999 and was effective on 6 June 2000.

Product Classification

Guangdong Province

“Design” is related to any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern, of the goods, which generates an artistic feeling and is fit for industrial uses. The design patent lasts for 10 years, starting from the date of filing of the application. The third adjustment was made to the Chinese Patent Law on 27 December 2008 and came into effect on 1 October 2009. The Chinese Patent Law adjusted on 25 August 2000 was still effective before 1 October 2009.

Referring to Article 27 of the Patent Law of 2000, when the applicant files an application of design patent, he or she should specify the product integrating the design and the belonging class. The SIPO adopts the International Patent Classification (4th Edition) for classifying the Invention and the Utility Model, and publishes the Classification for Design, under the Announcement of the Chinese Patent Office (No. 7).

Classes and sub classes are included in the Classification for Design. More about the announcement of the Chinese Patent Office (No. 7) can be referred to the website.

The Hong Kong Special Administrative Region

If an application for registration of a design is filed, the article’s class to be registered should be classified by the applicant according to the International Classification for Designs (the Locarno Classification). More can be referred to the website.

The Macao Special Administrative Region

Design is named as industrial design or model in Macau SAR. For classification, the International Classification for Designs (the Locarno Classification) is used. More can be referred to the website.

Application Methods, Fees, Procedures and Processing Time for Design Registration

Guangdong Province

Application Methods

Design is one of the patents stated in the Mainland. Under the State Council, applicants or the patent agency which is authorized by the applicants should file a patent application with the patent administration department

Procedures

To file a design patent application, the applicant is required to file a request together with the drawings or photographs of the design, and the product incorporating the design and the class to which the product belongs should be indicated.

It is believed that the filing date will be the time that the patent administration department under the State Council gets the patent application. If the applicant is sent via mail, the application‘s filing date will be the postmark’s date.

If an applicant files a design patent application in China within 6 months period after filing the same design patent application in a foreign country, priority can be enjoyed under the agreement between the related foreign country and China, or according to any international treaty to which both countries are members or of the principle of mutual recognition of the right of priority.

The limitation for a design patent application will be only for one design. A product which contains two or more similar designs or products with same class will be filed as one application. More can be referred to Articles 27 – 33 of the Chinese Patent Law amended on 27 December 2008.

Fees

The fee for applying a design patent application is RMB 500 (subject to adjustment). An 85% reduction can be applied for by an applicant (as non-duty), so that the payment is RMB 75 (subject to adjustment). A 70% reduction can be applied for by an applicant (as duty related), so that the payment is RMB 150 (subject to adjustment).

Processing Time

According to the Chinese Patent Law, the examination procedures of a design patent application comprise of acceptance, preliminary examination and grant. Yet, since designs do not require any publication or substantive examination, less processing time is needed compared to an invention patent application.

The Hong Kong Special Administrative Region

An address for service in Hong Kong should be provided by all applicants. For the ones would like to hand in their design applications through e-filing system, he or she should register with IPD as e-filers in advance. E-Cert issued by a recognized certification authority should be possessed by the E-filers in Hong Kong. More about e-filing services can be referred to the website of IPD.

For the application for registering a design, Designs Form D1 shall be filled in and submitted by the applicant. For registration of a single design, a filing fee (HK$785) (subject to adjustment) and an advertisement fee (HK$155) (subject to adjustment) need to be handed in as application fee. More about the application forms and fees can be referred to the website of IPD.

If all requirements for registration are met, the minimum time for processing the application will be within 2 months, which starts from the date of receipt of the application till the date of registering the design by the Designs Registry.

Free online search services are provided by IPD on the website. These services can be made use of to examine the application records of registering designs.

The Macao Special Administrative Region

For filing an application for registration of an industrial design or model, “Application for Registration of Industrial Design or Model” form, abstract and the drawings should be submitted. If necessary, the following documents are required, such as Power of attorney, documents proving the priority right claim, translated copies (in Chinese or Portuguese) of certificates or other documents that are not written in any official languages of the Macao SAR, and other supporting documents.

For “Application for Registration of Industrial Design or Model” form, applicants should fill in the form in either Chinese or Portuguese. The applicants who do not have valid Macao SAR Resident’s Identity Cards, or are not bodies corporate registered in Macao SAR, they could hire a lawyer registered with the Macao Lawyers Association, individual who is residing in the Macao SAR or a body corporate registered in the Macao SAR as their agent. If so, the form should be signed by the agent. One application form is used for one design patent registration only, and should be within the same class of the International Classification of goods and services. Applicants who file their applications by individuals or by agents should possess a Macao SAR Resident’s Identity Card for certification and identification. The Economic Services will examine the authenticity of signature. The applications who file their applications by bodies corporate or by agents as bodies corporate need to ask their legal representatives, who possess the authority, to sign the form, and should obtain official certification of authenticity through a Notary Office of the Macao SAR.

The applicants should submit“Application for Registration of Industrial Design or Model” Forms together with the supporting documents to the Industrial Property Application Counter of Reception Center of the Economic Services. Then, applicants should submit and pay the application fee of MOP 1,000 along with the payment slip within 8 working days after an application number had been assigned and the receipt of the payment slip. Applicants may know more from the Economic Services’ website from “Intellectual Property – Download Application Forms”, about the “Application for Registration of Industrial Design or Model” form and fee.

If the applicants prepare the application and its supporting documents well, the Official Gazette of the Macao SAR will issue a notice of the application “Intellectual Property – Official Gazette”, after 12 months from the date of filing the application or the claimed date (if a priority right was claimed). Opposition to a particular application for industrial design or model registration can be made from the publication of the application notice to the date the registration is granted.

In addition, during 30 months from the date of filing of the application, a request of examination should be filed to the Economic Services. “Application of Other Actions” form should be finished for letting his or her application be accepted.

Applicant may seek basic information about the filed trademarks from the Economic Services. No fee is required. The website of the Economic Services is www.economia.gov.mo.

The standard charge varies with the government’s policies. Applicants may visit the official websites for the details of the latest standard charge.

Design Examination

Guangdong Province

When there is no reason to reject the design patent application after preliminary examination, the patent administration department under the State Council should make decisions to grant the patent right for the design, issue the patent certificate, register and publish it. For design, patent right will come into effect from the date of the publication. The examination process of the design patent’s application resembles to the one for the utility model patent.

Flowchart of Examination of Application for Design Patent - Guangdong

Flowchart of Examination of Application for Design Patent – Guangdong

The Hong Kong Special Administrative Region

Upon receipt of an application, the Designs Registry will process it in accordance with the procedures shown in the following flowchart and paragraphs.

Flowchart of Examination of Application for Design - Guangdong

Flowchart of Examination of Application for Design – Guangdong

The first stage is to accord a filing date.

If the registry receives the application, applicants will be informed by the Patents Registry during the 10 working days period after the filing date, which is when the Registry receives the said documents and fee. The documents and fees are a request for registration of the design, a representation of the design (must fit for reproduction), the name and address of the applicant, and the prescribed fees.

After the registration of the design, the registration’s validity will start from the application’s filing date which is the time for calculating the design’s novelty, except the priority is claimed.

The second stage is to examine on the formal requirements.

Following the notification of the filing date to the applicant, whether the formal requirements are met will be examined by the Designs Registry. Assessment of the information and documents are needed in the application form. No substantive exam for the application (such as whether the design is new) needs to be conducted and no records of registered patents need to be searched.

If the application is not in sequence, the notification of asking the applicant for correction will be done by the Designs Registry within 3 months. If the applicants fail to make correction before the deadline, the application will be perceived as abandonment.

The third stage is publication and registration.

Meeting all formal requirements of the application, publishing the registration, registering the design will be done by the Designs Registry on the website of the Hong Kong Intellectual Property Journal.

The Macao Special Administrative Region

There are five stages for the process examining an application for industrial design or model registration. The five stages are formal examination, publication of notice of application (merely for extension of patent application submitted in SIPO), examination and preparation of examination report, registration and publication of notice of registration, and lastly, issuance of certificate of registration upon expiry of the appeal period.

Flowchart of Application Process for Registration of Industrial Design or Model Macao SAR - Macau

Flowchart of Application Process for Registration of Industrial Design or Model Macao SAR – Macau

The First Stage: Formal Examination

After application for industrial design or model registration is obtained by the Economic Services, formal examination will be the stage to be proceeded within one month, to see if the application form and supporting documents meet the legal requirements and to categorize the products or services.

If the applications unmeet any of the requirements, or they are not in sequence, the Economic Services will inform the applicant, and will give 2 months to the applicants to correct the mistakes in the application. If no notification is made to the applicants, a maximum of 3 months period is given to the applicants to file the application and make it in sequence.

The Second Stage: Publication of Notice of Application, Any Person May Oppose the Application

The official Gazette of the Macao SAR will state out the notice of application on the website when the application is in sequence, after 12 months from the date of filing the application or the claimed date (if priority right was claimed).

If anyone wants to oppose a specific application for design registration, it is a must for them to make an objection to their application, from the time of publication of the application notice till the time the patent is granted, by completing the “Application of Other Actions” form. The Economic Services will send another copy of opposition to the applicant. A response should be made by the applicant, and the “Application of Other Actions” form should be filled in during the 2-month notification period. More about the application form can be referred to the website of the Economic Services.

More about the opposition of industrial design or model application can be referred to Article 166 of the Industrial Property Code.

The Third Stage: Examination, Preparation of Examination Report

During 30months period from the filing date of the application, a request of examination should be filed to the Economic Services through finishing the “Application of Other Actions” form, if not, the application for industrial design or model registration will be rejected. More about the application form can be referred to the website of the Economic Services.

The Fourth Stage: Registration and Publication of Notice of Registration

By satisfying the requirements of registration under the Industrial Property Code, an application will come to the registration stage if there is no successful opposition within the particular time limit. Notice of registration will be stated out by the Economic Services in the Official Gazette of the Macao SAR on the website. For the application not meeting the registration requirements under the Industrial Property Code, notice of refusal of registration will be stated out by the Economic Services in the Official Gazette of the Macao SAR.

The Fifth Stage: Upon Expiry of the Appeal Period, Issue of Certificate of Registration

An appeal to the Court of First Instance against the decision can be made by the applicant within 1 month from the date of publishing notice of registration in the Official Gazette of the Macao SAR. For getting the certificate of registration, the original receipt of the application fees should be submitted by the applicants at the Industrial Property Application Counter of Reception Center of the Economic Services upon the end of the appeal period, or 5 working days after the date of the court decision in the event of an appeal.

Means of Relief for Infringement of Designs

Guangdong Province

Design is one of the patents stated in the Mainland. The ways of getting relief for designs infringement are identical to the ways of patent infringement. More can be referred to “2.5 Means of Relief for Infringement of Patents”.

The Hong Kong Special Administrative Region

For design infringement, civil proceedings against the infringement can be brought by the registered design owner or the exclusive licensee. Under the Registered Designs Ordinance, forms of relief need to grant the plaintiff through setting up legal proceedings against the infringement. For example, damages, an injunction, orders for delivery up (the court requests the defendant to surrender the infringing goods, materials or articles), an account of the profits obtained from the infringement or other forms of relief.

The Macao Special Administrative Region

Through administration and jurisdiction, industrial design or model infringement’s remedy can be acquired in the Macao SAR.

There is a relative protection, which is the administrative protection in the field of intellectual property, for Macau. Preventing, striking, forbidding infringing activities in intellectual property are what the administrating and enforcing department does. For the situation of an infringement of the exclusive right of a registered industrial design or model, an action for protecting the own right can be done by the right owner with the Macao Customs and other empowered entities.

What judicial measures of protection Macau SAR adopts in intellectual property area is a kind of relative protections. For the situation of an infringement of the exclusive right of a registered industrial design or model, legal process at judicial authorities can be used by the right owner to solve the conflict. Thus, sanction is imposed on the infringer against the infringement, so as to prevent violating the right of owner. Hence, the interest of design’s right owner can be guarded.