Obtaining registration for your design is the first step towards protecting all your hard work and creativity. However, this step itself does not completely guarantee against infringement of your design. Thus, it is important to be vigilant of how your design can be infringed and what remedies you are entitled to if such an infringement occurs.
For more information on how to register your design, please see FAQ on “How can I register a design in Hong Kong?”
How can a design be infringed?
Under the Registered Designs Ordinance (Cap. 522), a registered design right is infringed by a person who does, without the consent of the registered design owner, any of the following:
- does anything which is the exclusive right of the registered owner (for more information, please see FAQ on “What are the benefits of design registration?”)
- makes anything for enabling any article to be made in Hong Kong or elsewhere to which the design has been applied;
- makes anything for enabling or does anything in relation to a kit (a set of components that can be assembled into an article) to be made or assembled in Hong Kong or elsewhere such that the assembled article constitutes an article to which the design has been applied.
Penalties for design infringement
Upon registered design infringement, the owner of a registered design can bring civil proceedings against an act(s) of infringement committed after the date of registration of the concerned design. The registered design owner is entitled to seek the following remedies:
- damages (i.e. compensation);
- injunction (i.e. court order forbidding the infringer to continue selling the goods under the registered design);
- surrender the infringing goods; and
- surrender the profits derived by the infringer in respect of the infringing goods.
Key takeaways
- It is important to be aware of the occurrence of design infringement: the ways in which it can occur and, subsequently, what you can do about it if your design is being infringed.
- A design can be infringed in various ways, such as by a person who, without the consent of the owner, exercises an exclusive right of the registered design.
- If design infringement occurs, the rightful owner of the registered design may bring civil proceedings against the infringer and seek various remedies.
Bibliography:
- Intellectual Property Department of the Government of the Hong Kong Special Administrative Region, ‘Designs’: https://www.ipd.gov.hk/eng/designs.htm