LW4641 Chap.11 Registered Designs and Registrability
Registered Designs and Registrability
Hong Kong's registry and its roots
Registered designs began in the United Kingdom in 1839, when a registered monopoly of up to three years was offered to improve the look of manufactured goods. The UK Act of 1988 later confined registration to aesthetic designs and redrew the boundary with copyright, and that structure shaped Hong Kong's law.
Until 27 June 1997 Hong Kong simply enforced United Kingdom registrations; from that day Cap 522, the Registered Designs Ordinance, created a local Designs Registry.
Mainland China and the United States protect designs as design patents instead.
Four requirements, one developed in depth
To be registered there must be a design, it must be new under s5, the applicant must be entitled to it, and it must not conflict with earlier rights such as prior applications, trade marks, copyright and certain emblems. An application must list the articles concerned and their classes.
The lectures develop the first requirement in detail, and a problem answer should do the same.
The definition as an ordered test
A design is made up of shape, configuration, pattern or ornament, put onto an article through an industrial process, that attracts the eye and is assessed by it in the finished product.
Shape and configuration are three-dimensional, pattern and ornament largely two-dimensional; in Apple Computer's Design Applications screen icons were pattern or ornament applied to the computer. An article includes a part made and sold separately, so a meter face never sold alone was not an article, while in Ford the test was whether a spare part traded in its own right as a product.
Eye appeal is judged through the prospective customer's eye, looking at the design as a whole, following Interlego v Tyco.
The two exclusions
Features dictated solely by function are excluded, but Interlego treats a whole shape as registrable unless all of it is functional.
Two approaches compete: the multiplicity of forms test, which excludes a design only if the designer had no choice at all, and Amp v Utilux, which excludes a design made with no regard to appearance. Features that must match another article, such as car body panels in Ford, are excluded because the designer had no freedom.
What this chapter covers
- 01
From the 1839 register to Cap 522
- 02
The four requirements for registration
- 03
Shape, configuration, pattern and ornament
- 04
What counts as an article, and spare parts
- 05
Eye appeal through the customer's eye
- 06
Features dictated solely by function
- 07
The must-match exclusion
- 08
Co-ownership and dealings
Worked example · free
Run the definition of a design on a product range
- 3Apply the definition to the patterned kettle.
- 3Apply the article test and must-match exclusion to the lid.
- 3Apply the function exclusion to the plug.
Key terms
- Registered Design
- A design entered on the Hong Kong register under Cap 522, protecting the appearance of an article and treated as personal property.
- Article
- Anything manufactured, including a component where it is both made and sold on its own.
- Must Match
- The exclusion for shape features that follow from the look of a larger product the article is designed to complete.
- Multiplicity Of Forms
- The approach under which a design is dictated by function only if the designer had no control over the final shape.
- Co-owner
- A joint holder of a registered design, entitled to an equal undivided share and able to exploit the design, but not to license it without the others' consent.
- Novelty
- The requirement under s5 of Cap 522 that a design be new before it can be registered.
Registered Designs and Registrability FAQ
What can be registered as a design in Hong Kong?
Shape, configuration, pattern or ornament put onto an article industrially, which in the finished product attracts the eye and is assessed by it. Methods of construction, features dictated solely by function and features that must match another article are excluded, and the design must also be new, owned by the applicant and free of conflict with earlier rights.
Can a spare part be registered as a design?
It depends on whether it is an article. Following the Ford case, a part designed for general use that trades in its own right as a product, such as a steering wheel or wing mirror, can be; a body panel or door whose shape is dictated by the vehicle's appearance is excluded under must match.
Who decides whether a design has eye appeal?
It is the prospective customer's eye that counts, and the appeal comes from a distinctiveness of shape, pattern or ornament calculated to influence the customer's choice, judged by looking at the design as a whole. A design without eye appeal fails at once, so the exclusions never need to be considered.
Exam move
Draw the definition as a ladder of five questions and attach one case to each rung: Apple for pattern, Sifam and Ford for article, Re Clarke for industrial process, Interlego for eye appeal, and Ford again for must match. Then practise running three everyday objects down the ladder in under two minutes each.
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