If a designer has designed a teapot with a new shape and configuration and intends to manufacture his teapot according to his drawings in the future, how can he prevent others from infringing his design for profits? There are two possible ways in Hong Kong: registered design and copyright protection.
What are the similarities and differences between the protections? If the designer pursues copyright protection only, will it be sufficient?
What is registered design?
According to the Registered Designs Ordinance of Hong Kong (Cap. 522), "design" means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include :-
1. a method or principle of construction; or
2. features of shape or configuration of an article which :-
- are dictated solely by the function which the article has to perform; or
- are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
Once the designer has registered his design, he will have the right to prevent others from manufacturing, importing, using, selling or hiring his design.
Registered design protection is renewable for periods of 5 years up to a maximum of 25 years.
What is copyright?
Copyright is a set of exclusive right given to the owner of an original work (such as literary, dramatic, music or artistic work) to regulate the use of a particular expression of an idea or information. Copyright is automatic. It arises when a work is created. Unlike other intellectual property rights, for example, patents, trademarks and industrial designs, copyright does not require registration under the laws of Hong Kong.
The drawings of the teapot will be the artistic work for copyright purposes and the duration of the copyright in the artistic work will be the life of the author (i.e. designer) plus 50 years.
Overlap of the protection under copyright and registered design
Registered design will protect the shape and configuration of the teapot only.
According to the Copyright Ordinance of Hong Kong (Cap. 528), artistic work includes the making in 3 dimensions of a 2-dimensional work and the making in 2 dimensions of a 3-dimensional work. Therefore, if someone manufactures the teapot according to the designer’s drawings without his consent, that person will infringe the copyright of the designer as copyright protects both 2 and 3 dimensional works.
Both registered design and copyright can protect the design of the teapot.
Differences in protection between copyright and registered design
Since copyright is an automatic right which does not require registration and the term of protection is the life of the author plus 50 years, is it still necessary to pursue design registration which is only for a maximum 25 years? Below are some reasons to consider :-
1. Different scope of protection :-
- copyright protects the design against copying whereas a registered design not only protects the design from being copied, but also against an independent creation which is not substantially different from the registered design;
- copyright protects artistic work whereas a registered design protects shape, configuration, configuration, pattern or ornament applied to an article by any industrial process, being features in the finished article appeal to and are judged by the eye.
2. Different test used in infringement proceedings :-
- a plaintiff in a copyright proceeding has to establish the elements of copying whereas the plaintiff in a registered design proceeding does not;
- the plaintiff in the copyright proceeding has to show that there is reproduction of the work in material form whereas it is sufficient for the plaintiff in the registered design proceeding to establish that the alleged infringement is the same or "not substantially different from the registered design.
Important issues relating to registered design
If a design owner wishes to register his design, he must show the crucial element of "novelty".
If the design has been revealed other than in one of the following situations prior to the filing of the design application with the Designs Registry, the element of "novelty" will be lost : -
1. confidential disclosure :-
- the disclosure by the owner to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;
- the disclosure in breach of good faith by any person other than the owner of the design;
- in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design; or
- the communication of the design by the owner to a government department or to any person authorized by a government department to consider the merits of the design, or of anything done in consequence of such a communication.
2. non-prejudicial disclosure :-
- that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the owner of the design, at an official international exhibition;
- that after any such display as is mentioned in paragraph (a), and during the period of the exhibition, a representation of the design, or any article to which the design has been applied, has been displayed by any person without the consent of the owner; or
- that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a),
and in 2(a) to (c) above, if the application for registration of the design is made not later than 6 months after the opening of the exhibition.
If novelty has been defeated, the designer can only rely on copyright protection for his design.
Although overlap exits between registered design and copyright, there are differences in the protection given each of them. If a designer has a new design, he should consider whether to pursue design registration prior to disclosure of his design to the public.
Experienced lawyers in our Intellectual Property regularly advise clients on intellectual property registration or enforcement in Hong Kong, PRC and elsewhere. If you have any question on the above article, please do not hesitate to contact us.
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.