What is a registered design?
Designs registered under the Registered Designs Ordinance (Cap. 522) protect the visible features of shape, configuration, pattern or ornament applied to an article, by any industrial process, which appeal to the eye.
Designs do not protect the functionality or operation of products. Protection for the way in which a product works may be available under patent law.
Registering a design is particularly important where you have a product that has a physical appearance or shape that makes it appealing or otherwise contributes to a buyer’s desire or preference for the product.
Registering a design can also be important when a product’s shape or appearance contributes to its branding.
Registering your design ensures that a competitor cannot “free-ride” on your design by having a competing product that has the same or not substantially different shape or appearance.
If a competitor did so, the competitor would be infringing your registered design. As a registered design owner, you can bring civil proceedings for infringement.
Designs can be registered for a wide range of products, including computers, telephones, CD-players, textiles, jewelry and watches.
Registered designs protect only the appearance of products, for example the look of a computer monitor. Registration of the design does not protect the way in which the product relating to the design works. Protection for the way in which a product works may be available under patent law. Computer software is protected under copyright law.
Registered design owners have the right to prevent others from manufacturing, importing, using, selling or hiring the design product.
Registered design protection is renewable for periods of five years up to a maximum of 25 years.
Enforcement actions by owners of registered designs
The owner of a registered design, or an exclusive licensee in his own name, can bring civil proceedings against infringements committed after the registration of a design. Owners of registered designs should consult their legal advisers on this aspect before taking steps to defend their rights.
Examples of designs
Designs may consist of three dimensional features, such as the shape or configuration of a product, as well as two dimensional features, such as the pattern or ornament of an article.
Some examples of registrable designs include_once but are not limited to:
1. Three dimensional
the shape or configuration of a mobile telephone
the shape or configuration of a piece of jewellery
the shape or configuration of electrical appliances such as kettles, toasters etc
the shape or configuration of toys
2. Two dimensional
the pattern or ornament on fabric
the pattern or ornament on wallpaper.
However, designs do not protect features of shape or configuration of an article which are dictated solely by its function. Designs which are purely dictated by their functional needs will not be registrable, for instance, the designs of wallets with slots and sizes configured to carry driving licence were seen as merely performing a technical function and hence not registrable.
Requirements for designs
For a design to be registrable, it must:
1. be new, that is, not be the same as, nor only differs in immaterial features from, a design registered or published or disclosed in respect of the same or any other article, in the Hong Kong SAR or elsewhere in the world;
2. appeal to and be judged by the eye;
3. be applied to a product by any industrial process.
You need to keep your design confidential at all times until you file an application to register it because disclosure of a design before filing an application may destroy its novelty.
Documents required for copyright registration:
1. Applicant's name and address: if it is an individual application, it needs to provide an ID card or passport; if it is a company application, it needs to provide a company registration certificate
2. Type of Product to be registered
3. Registration Instructions
About 4-6 months.