Hong Kong

Copyright

Copyright is a legal term describing rights given to creators of a broad range of literary and artistic works. It is a bundle of rights given to the author of works to make sure that only he can use and reproduce what he has created for his own purposes. It would enable him to control the commercial exploitation of his works.

The works covered by copyright includes:

literary works- such as novels, poems, computer programs, newspaper
dramatic works- such as plays or choreography
musical works- such as music
artistic works- such as sculpture, architecture, maps, technical drawings, paintings, photographs, wedding dais and so on.

Related Rights is a term that is associated with copyrighted works and provide similar rights. Works covered under related rights are:

sound recordings
films
broadcasting
cable programs
published editions.

Copyright and related rights protection is obtained automatically without any need for registration or other formalities. Unlike other types of intellectual property such as trademark, patent or industrial designs where these types of intellectual property must be registered for protection, copyright and related rights are unique where, the moment you create a work, it is automatically protected. Therefore, everything that you write (or draw or paint or whatever) regardless of whether it is an email, a recording, an image, a thesis, a web page, or anything else, it is automatically copyright protected. Not only that, works created in Brunei Darussalam will have protection in other countries who are a member of the World Trade Organization (WTO) or the Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne Convention. This would mean that your copyright or related rights is already protected in most countries without having to ‘register’ or go to those countries).

Brunei Darussalam is a party to both the WTO, Berne Convention, WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT).

Importance of © Symbol

The use of the © indicates an assertion of copyright. The symbol © is usually followed by the name of the copyright owner plus the year when copies of the work were first made available. Example: © Brunei Intellectual Property Office 2020. Not using the © symbol does not imply a waiver or loss of copyright. It may, however, be a relevant fact in infringement proceedings.

Duration of Protection

The copyright protection has a time limit of 50 years. So copyright protection will start the minute that you created the work plus 50 years after your death i.e. life plus 50 years.
Copyright protection also includes moral rights which involve the right to claim authorship of a work, and the right to oppose changes to it that could harm the creator’s reputation.

Ask permission directly with the copyright owner for a licence to use or copy copyright material or through agencies or administrative bodies that licence certain uses on behalf of their members (copyright owners).

Copyright materials can be used without permission but only in specific instances or fair dealing. Fair dealing is when a fair and reasonable portion of the work is copied for research/ private study, criticism/review and, report current affairs.

Designs

A registered design covers features of shape, configuration, pattern or ornament applied to an article by an industrial process. Two-dimensional designs such as those appearing on textiles or wallpaper may also be registered provided that they appeal to and can be judged by the eye in the finished product.

Registrable Designs

be new, which means that, at the date of application for registration, the design must not be the same as a design registered or published in Hong Kong or anywhere in the world or differ from such a design in immaterial details or features which are variants commonly used in the trade, and

have an appearance that appeals to and can be judged by the eye.

Not registrable Designs:

A method or principle of construction
Features of shape or configuration of an article which are dictated solely by the function 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
Articles where the appearance is not material i.e. aesthetic considerations are not taken into account to a material extent by persons acquiring or using the articles and would not be taken into account if the design were to be applied to the article
Designs where the publication or use of which would be contrary to public order or morality
Computer programs and protected layout-designs (topographies)
Designs for works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process), wall plaques, medals and medallions, and printed matter of a primarily literary or artistic character.
It is possible to claim the filing date of an earlier application filed in a country that is a member of the Paris Convention or WTO for protection of the same design, provided that the Hong Kong application is filed within six months of the earlier application.

Process and Procedure

To file an application, we are required to first submit to the Designs Registry a set of clear images of the design and payment of the filing fee and advertisement fee.

Although there is no substantive examination of a design application, the Registry has the power to refuse an application after examination if the application does not satisfy the formal requirements, or if the design appears not to be new or is not registrable for any other reason. The applicant will be given the chance to correct deficiencies. Once the Registry is satisfied that the application is in order, it will register the design, publish the registration in the Hong Kong Intellectual Property Journal and issue a certificate of registration.

It is possible to claim the filing date of an earlier application filed in a country that is a member of the Paris Convention or WTO for protection of the same design, provided that the Hong Kong application is filed within six months of the earlier application.

Average time to register designs in Hong Kong is less than three months assuming all formalities are correct upon filing.

Term of Protection

The registration of a design lasts for five years beginning from the filing date. It may be extended for additional periods of five years, up to a maximum of 25 years from the filing date.

Patent

Patents are an exclusive right granted by a government to an inventor to manufacture, use, or sell an invention for a certain number of years . A patent gives the inventor an exclusive right to use his invention. An invention which is new and involves an inventive step can be patented in Hong Kong by registration as long as it can be ‘industrially applied ‘ and does not belong to the excluded classes of inventions. A patent protects the patent owner by giving the patent owner a legal right to prevent others from manufacturing, using, selling or importing the patented invention.

There are two types of patent in the Hong Kong Special Administrative Region (SAR)

standard
short-term

Applying for a standard patent

The grant of a standard patent (R) in the Hong Kong SAR is based on the registration of a patent granted by one of three patent offices, called ‘designated patent offices’

the National Intellectual Property Administration (formerly “State Intellectual Property Office”), People’s Republic of China
the European Patent Office, in respect of a patent designating the United Kingdom
the United Kingdom Patent Office.

A standard patent (R) application in the Hong Kong SAR is made in two stages by filing

a request to record ‘ the designated patent application within six months after the date of publication of the corresponding patent application (stage 1)
a request for registration and grant within six months after the date of grant of the corresponding patent by the designated patent office or publication of the request to record in Hong Kong (stage 2)

Applying for a Short-term Patent

The grant of a short-term patent in Hong Kong is based on filing a search report from an international searching authority or one of the three designated patent offices. A short-term patent application is made by filing a request for grant supported by documents and information with the Registry.

In general, there is no time limit for filing a short-term patent application in the Hong Kong SAR. But if you wish to claim priority from a first application in a Paris Convention country or World Trade Organization member territory you should file your short-term patent application in the Hong Kong SAR within 12 months of filing the first application.

If your invention has been disclosed and you claim that the disclosure does not prejudice your invention’s novelty (section 109, Patents Ordinance) you should file your short-term patent application within 6 months of the disclosure.

Term of Protection

Protection under standard patents is renewable annually after the end of the third year, for a maximum of 20 years. Protection under short-term patents is renewable after four years from filing, for a maximum term of eight years.

Trademark

A trademark is a sign that distinguishes the goods and services of one trader from those of others. Typically, a trademark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of these. A sign must be capable of being represented graphically in order for it to be registered as a trademark.

Registrable Trademarks

In order to be eligible of being registered as a trademark, the mark must be:

A sign such as words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging or a combination of such signs
Capable of being represented graphically
Capable of distinguishing the goods and/or services of the applicant from those of other undertakings.
Inherently or factually distinctive of the goods or services.

Non-registrable Trademarks

A trademark is not registrable if:

It is descriptive i.e. consisting exclusively of signs that designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of the goods or services. ‘Apple’ for example may be used for electrical products but not for fruits
It is a term that is generic of the goods or services
It is contrary to accepted principles of morality or likely to deceive the public
Its use is prohibited in Hong Kong under or by virtue of any law
Its application was made in bad faith
It contains the national/regional flag or emblem or design or the flag of any country that is a party to the Paris Convention
It is identical to an earlier filed trademark for identical goods/ services
It is identical or similar to an earlier filed trademark for similar goods/services or identical goods/services respectively and is likely to cause confusion to the public
It is identical or similar to a well-known trademark

Registration Process and Procedure

There are four stages in the process of examining an application for registration;

deficiency checking
substantive examination against the requirements under the Trademarks Ordinance

acceptance of application and publication for opposition, and

registration and issue of certificate of registration.

If there is no problem in the application and all requirements for registration are met, the application will be accepted for registration. The particulars of the trademark will be published in Hong Kong’s Intellectual Property Journal for opposition for a period of 3 months, and a certificate of registration will be issued to the applicant thereafter. The average time to register a trademark in Hong Kong is between six and nine months: Six months if no issues or objections are raised, nine months if there are minor deficiencies or office actions.

Term of Protection

Trademarks are registered for a period of 10 years from the date of filing and may be renewed for further periods of 10 years upon payment of renewal fee.

Protection begins from the date of registration which upon grant is backdated to the filing date. However, no infringement proceedings may be commenced until the date the registration is entered into the register – i.e. the date of grant.