Update January 2011 Intellectual property protection Hong Kong and Scotland Scottish Development International commissioned Pinsent Masons to write this overview Doing business in Hong Kong "Asia's World City" Perhaps above all else, Hong Kong is a place of commerce. Since its establishment as a strategic British colony in 1842, it has evolved into a world class financial, trading and business centre, with claims to be the world's freest economy. Its mature legal system on the UK model, its official languages of English and Chinese, and its established economy with access to Mainland China, combine to make Hong Kong an attractive hub for doing business locally, in Greater China and in Asia truly, "Asia's World City". The Protection of Intellectual Property Rights (IPR) in Hong Kong protective IP framework of the UK will find a very familiar regime in place in Hong Kong. As with any jurisdiction, protection of intellectual property assets is vital to a successful business strategy. IPR Protection A Comparison The following tables set out the primary IP rights, and a summary of the protection available in each country. All these rights are granted for a limited time and, in the case of registered rights, such as patents, are territorial protection granted for registered rights in one country will not give the owner protection in another country, and separate registrations are required. The IP legislation of Hong Kong predominantly mirrors that of the UK. This means that businesses who are used to the Registered Trade Marks Trade marks are signs which distinguish the goods and services of one trader from another. They give the owner the exclusive right to use a mark in relation to its registered goods and services. Although trade marks do not need to be registered, a registered mark will provide much stronger protection against infringers. Words, letters, figurative elements (devices or logos), characters, slogans, numerals, smells, colours, shapes, or any combination of these. Each trade mark is registered in respect of specific goods and services, its "specification". Goods and services are classified according to the standardised international Nice Classification System.
Conduct search, consider advice on registrability, and submit application to the UK Intellectual Property Office (UK IPO) within approximately 1 month. UK IPO examines the application for deficiencies and notifies of any objections. Within the time period specified by the UK IPO (normally approximately 2 months), overcome any objections. Once accepted, UK IPO publishes the application for opposition. After 2 months' publication (which can be extended to 3 months), trade mark granted if there are no oppositions. UK IPO records the mark on the register and issues the certificate. Conduct search, consider advice on registrability, and submit application to the Trade Marks Registry (TMR) within approximately 1 month. TMR examines the application for deficiencies and notifies of any objections. Within 2 months, overcome any deficiencies. Within 6 months, overcome any objections. Once accepted, TMR publishes the application for opposition. After 3 months' publication, trade mark granted if there are no oppositions. TMR records the mark on the register and issues the certificate. Language? English English or Chinese Official application fee 200 for one class, 50 per additional class Usually 6-9 months. 10 years, renewable every 10 years if renewal fees are paid. Trade mark must be used within 5 years of registration. Official search fee HK$200. Official application fee HK$1300 plus HK$650 per additional class. Usually 6 months. 10 years, renewable every 10 years if fees are paid. Trade mark must be used within 3 years of registration. Patents Patents are concerned with the function, operation, manufacture, or material of an item. A patent right makes it illegal for anyone other than the owner to make, use, import, or sell the invention which is patented in the country where it is registered. Patents generally cover products or processes (and their parts) provided that they are new, inventive, and capable of industrial application. Each patent specification contains a written description, claim statements which set out its distinctive features, and an abstract which summarises the invention's technical aspects.
Submit application forms to the UK Intellectual Property Office (UK IPO). UK IPO issues filing receipt with the filing date. Within 12 months, submit forms and fees for the official search. Within 6 months, UK IPO issues report and publishes the application. Within 6 months, submit forms for examination. UK IPO examines patent. If successful, patent is granted, recorded, and the certificate is issued. 1. Standard Patent A standard patent is based on the registration of a patent already granted by one of the "designated patent offices" of China, Europe, and the UK. Stage One. Submit application to the Patents Registry (PR) to record the patent, with copy of the published patent application, and substantiating documents, translated as required. PR notifies of any deficiencies. Within 2 months, correct deficiencies. PR publishes request to record. Stage Two. Within 6 months, file a request for registration and grant, together with all substantiating documents and translations as required. Language? English Official processing fee 280, including search fee and examination. Usually 3 4 years. PR notifies of any deficiencies. Within 2 months, correct deficiencies. If successful, PR publishes details of granted patent, advertises, and issues certificate. 2. Short Term Patent We include short term patents here for completeness. These are not subject to technical adjudication and are thereby of limited use. File request for grant together with substantiating documents, translations as required, and search report from one of the recognised authorities. Same procedure as Stage Two set out above. English or Chinese is nominated as main language of application, but certain sections must be completed in both languages. Official fees for standard patent HK$896 or HK$823 for short term patent, including filing and advertisement fees. Varies greatly, depending on recognised authority.
20 years, if annual renewal fees are paid. 20 years for standard patent, if renewal fees are paid. 4 years for short term patent, renewable to maximum term of 8 years if renewal fees are paid. Registered designs In the UK there are two forms of design protection. Registered designs must be applied for, but give stronger protection. Unregistered design rights arise automatically. Registered design applies to the appearance of a product (or part of a product) if it is novel and has individual character. It cannot be a design that is purely functional. Submit application to the UK Intellectual Property Office (UK IPO) with representations of the design. Within 1 month, UK IPO will notify of any objections. Within 12 months, overcome objections. If successful, the design is granted, recorded, published, and the certificate is issued. Submit application to the Designs Registry (DR) with representations of the design. DR will notify of any objections on formalities of application. Within 3 months, overcome objections. If successful, the design is granted, recorded, published and the certificate is issued. Language? English English or Chinese Official search fee 25. fee 60 for single design plus 40 for each additional design (publication may be deferred for up to 12 months, in which case application fee is 40 for a single design plus 40 on publication, and 20 for each additional design plus 40 on publication). Official application fee for one design HK$785, advertisement fee HK$155. Plus professional fees 2-3 months, unless publication deferred. 2 months 5 years, renewable to a maximum 25 years, if renewal fees are paid. Copyright Copyright protects original artistic, literary, dramatic and musical works, sound recordings, films, broadcasts, cable programmes, and computer programs. Unlike the USA, there is no system of centralised copyright registration in Hong Kong. It arises automatically as soon as there is a record of the copyright material.
A note on Mainland China The IP regimes of Hong Kong and Mainland China are entirely independent. As a result of China's open-door policy and the Handover of 1997, Hong Kong's economic links with the Mainland have increased. Its semi-autonomy operating as "one country, two systems" allows Hong Kong to provide an effective gateway to China for the international community and is the preferred hub for foreigners doing business and investing in China. Prevention is the best cure when it comes to the protection of IP in Mainland China. Yes there are challenges to doing business in China, but it is possible to lay foundations for your business' IP in order to protect as well as exploit it in China. Although the enforcement of IP rights in China is becoming more effective, a business' best strategy for protection of its assets lies in securing rights through registration rather than defensive enforcement. The registration process for trade marks, patents, and designs generally takes longer in China than equivalent registration processes elsewhere, so it is advisable to plan ahead by least two years for product launches, packaging, etc. To learn more about Pinsent Masons services and how we might be able to help you, please contact: In Scotland: Chris Martin T: +44 131 225 0040 E: chris.martin@pinsentmasons.com David Woods T: +44 141 249 5405 E: david.woods@pinsentmasons.com In Hong Kong: Peter Bullock T: +852 2521 5621 E: peter.bullock@pinsentmasons.com Tu Dinh T: +852 2294 3314 E: tu.dinh@pinsentmasons.com Scottish Development International: Fiona Donnelly T: +852 9037 8744 E: fiona.donnelly@scotent.co.uk Pinsent Masons LLP 2011 This note does not constitute legal advice. Specific legal advice should be taken before acting on any of the topics covered. LONDON DUBAI BEIJING SHANGHAI HONG KONG SINGAPORE OTHER UK LOCATIONS: BIRMINGHAM BRISTOL EDINBURGH GLASGOW LEEDS MANCHESTER Pinsent Masons LLP is a limited liability partnership registered in England & Wales (registered number: OC333653) and regulated by the Solicitors Regulation Authority. The word 'partner', used in relation to the LLP, refers to a member of the LLP or an employee or consultant of the LLP or any affiliated firm who is a lawyer with equivalent standing and qualifications. A list of members of the LLP, and of those nonmembers who are designated as partners, is displayed at the LLP's registered office: CityPoint, One Ropemaker Street, London, EC2Y 9AH, United Kingdom. We use Pinsent Masons to refer to Pinsent Masons LLP and affiliated entities that practise under the name Pinsent Masons or a name that incorporates those words. Reference to Pinsent Masons is to Pinsent Masons LLP and/or one or more of those affiliated entities as the context requires. For important regulatory information please visit: www.pinsentmasons.com www.pinsentmasons.com