Reply to APAA Design Committee Questionnaire 2008
"Relationship between Protection by Registered Design and Copyright"
prepared for Hong Kong
by Kenny Wong and Twiggy Liu
Q1Dual Design and Copyright Protection
1.1Is it possible for subject matter which is protected under design law to be simultaneously protected under copyright law (dual protection)?
Yes under certain conditions.
Q2Circumstances where dual protection is allowable
2.1If subject matter which is protected under design law (or capable of protection under design law) can only be simultaneously protected under the copyright law in certain circumstances, what are the circumstances in which copyright protection is available or unavailable?
For subject matter to receive dual protection, the design must have features of shape, configuration, pattern or ornament applied to an article with an eye appeal independent of its functional aspects and aesthetic considerations are normally taken into account to a material extent by persons acquiring or using such articles (Sections 2 & 6 of the Registered Designs Ordinance (Cap 522, the Laws of Hong Kong, "RDO" hereinafter)).
Q3Registration after publication of copyright work
3.1 Can a copyright work predate an application for a design registration without invalidating the registration?
It is possible for a copyright work to predate an application for a design registration without invalidating the registration by virtue of Section 10 of RDO, which provides that non-commercial prior use of artistic work registrable under RDO does not defeat novelty.
However, the duration of design rights protection might be reduced to less than the statutory maximum of 25 years from the end of the calendar year in which articles incorporating the registered design was first marketed if the copyright in that work expires earlier than the time at which the registered design right would otherwise expire (Section 29 RDO).
Q4Conflicts between a registered design and an earlier established copyright
4.1 How is a registered design right treated when there is a conflict between the registered design right and another person's copyright, in the event that the copyright arose prior to the date of filing of the application for the registered design.
First of all, we need to examine if there might be prior disclosure of use which could defeat the novelty requirement for a registered design. Any person can apply for revocation on the ground that the design was not new or registrable (Section 45 of RDO).
Assuming the design was still registrable, if the copyright owner can establish proprietary rights in the design, he may apply to court pursuant to Sections 41 or 46 of RDO for an order to be the owner or have an interest in the design or revoke the design registration on the ground that the registrant is not entitled to be registered as an owner.
Where an order of revocation is granted, without affecting transactions past and closed, the design registration is deemed never to have been made (Section 47 of RDO).
Q5Conflicts between a registered design and a later established copyright
5.1How is a copyright treated when there is a conflict between a registered design right and a copyright, in the event that the copyright arose after the date of filing of the registered design.
The copyright will be treated as an infringement of the registered design since a design registration is a monopoly right and can be infringed whether the other design was copied from or created independently of the registered design.
Q6Differences in infringement standards for a registered design and a copyright work
6.1Please explain the standard for determining design rights infringement.
The test for determining design rights infringement is whether the alleged infringement is not substantially different from the registered design (Hecla Foundry Co v Walker Hunter & Co (1889) 14 App Cas 550).
In assessing whether there is no substantial difference between the two, the court adopts the test of imperfect recollection (Valor Heating Co. v Main Gas Appliances Ltd [1973] RPC 871). The court will compare the alleged infringement and the design as registered (as shown in the representation and may use examples or photos of actual products as an aid to interpreting the representation) with the inexpert eyes of a customer (Tang Fung Kee Manufacturing Co. Ltd v Fortuna Plastic Manufactory (a firm) [1980] HKC 555).
It must be decided on a comparison of the features which appeal to, and are judged by, the eye. A factor which has to be taken into account in assessing the scope of a registered design is the background of the relevant prior art in existence. If only small differences separate the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.
6.2Please explain the standard for determining copyrights infringement.
Following the House of Lords decision in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR 113, the test for determining copyrights infringement is whether the alleged infringement is substantially similar to the copyrighted work.
Substantial similarity test has two aspects. Firstly, the plaintiff must show that the alleged infringement sufficiently resembles the copyrighted work. The plaintiff then has to prove that the allegedly copied part constitutes a substantial taking of the copyrighted work, i.e. there has to be a causal connection between the two. There is no infringement if the subsequent work was independently created without copying.
The court undertakes a visual comparison of the two works, noting the similarities and the differences. Similarities which are commonplace, unoriginal, or consist of general ideas may be disregarded. Once the judge has found that the defendant's design incorporates features taken from the copyright work, the question is whether there has been substantial taking. This is a matter of impression determined by its quality rather than its quantity. It depends upon its importance to the copyright work.
6.3Please explain the differences in these standards for determining infringement of registered design rights and copyrights.
The standard for determining design rights infringement is easier to satisfy as it only requires the design rights holder to show insufficient difference between the registered design and the alleged infringement. On the other hand, the copyright owner has to satisfy the court that (1) there is sufficient similarities between the copyright work and the alleged infringement; and (2) there was substantial taking of the copyright work.
Q7Protection of copyrights after registered design rights have expired
7.1Is it possible to protect a copyright work after expiration of registered design if the appearance of the copyright work and the design are the same?
Yes, under Section 87 of CO, the copyright of a registered design continues to subsist for a period of 25 years from the end of the calendar year in which articles incorporating the registered design are first marketed.
It should be noted that the same section provides that where a registrable design is not registered, the period of copyright protection is reduced to 15 years from the end of the calendar year in which articles incorporating the unregistered design are first marketed.
7.2If not please explain the reason thereof and the statute which creates the prohibition.
N/A.
Q8Problems between Design Law (or Patent Law) and Copyright Law
8.1Please explain any other problems that exist when Design Law (or Patent Law) and Copyright Law are used simultaneously to protect the same subject matter.
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