1 January 2011TrademarksKenny Leung

Design registrability in Hong Kong

Section 2(1) of the Registered Designs Ordinance (RDO) provides that:

“(1) Subject to this Ordinance, a design which is new may, upon application by the person claiming to be the owner, be registered in respect of any article or set of articles specified in the application.”

An article is defined in the RDO as “any article of manufacture [including] any part of an article if that part is made and sold separately”.

Validity of a design registration may be challenged on the grounds that, at the time of its registration, the design was not new or was not registrable for any other reason.

In Bang & Olufsen v To Hok Chung trading as Mirage Electronics Industrial, the plaintiff appealed against the judgment of the court in respect of its claim for infringement of the registered design only. The design at issue is part of an article described as ‘a music system’, consisting of an oval-shaped control unit into which a DVD or VCD or CD disc may be placed. According to the plaintiff’s sales brochure, the control unit is sold with a separate socket panel.

The defendant argued that the design is not valid because it only covers part of the article and is not made or sold separately in accordance with the definition of Section 2(1). The appeal court judge Hon Cheung JA held that:

“In my view the proper time to look at the validity of the registration is at the time of the registration itself. Whether the article comes within the definition of Section 2(1) must be determined by reference to the specifications contained in the application for registration. Hence whether a design is in respect of an article or not cannot be determined by reference to how the article is being sold or packaged in the market after the registration.

Accordingly, the filing date of a design registration is the relevant time to determine whether an article is “made and sold separately”. How the article is sold or packaged in the market at a later stage is not the determining factor for the purpose of Section 2(1) of the RDO.

This is indeed the rationale behind Ford Motor Company Limited’s Design Applications (1995), the leading UK case on ‘articles’ within the words of Section 44(1) of the Registered Designs Act 1949. In that case, Ford Motor Co. sought to register the designs of various motor vehicle components, including main body panels, doors, bonnet tops and windscreens, under the UK Registered Designs Act 1949.

Section 44(1) of the act provides that “any article of manufacture including any part of an article if that part is made and sold separately can be registered”.

The articles to be registered formed part of and contributed to the overall shape and appearance of the vehicle, though they were sold as replacement parts.

“An article is not registrable if it forms part of a finished product or is intended both as part of some larger object and as replacement spares for that object. Articles of either category would be characterised as having no ‘independent life as an article of commerce’.”

Lord Mustill held that: “…But here the legislation is concerned not with finished articles but with the design sought to be registered, ex hypothesi before the articles are made; and the articles themselves are relevant only because they form the media through which the designs intended to be registered under the statute will be put into effect. One must therefore look, not to the history of articles which already exist, but to the characteristics which they will have when the design fulfils its intended purpose…” This is however only a first step, for the meaning of “separately” must still be ascertained.

Even on the assumption that it is right to read the test of Section 44(1) as embracing parts that are to be made and sold separately, the design will apply equally to some parts that comply and others that do not; yet there is only one design tendered for registration, and this cannot be both registrable and not registrable at the same time.

An answer will I believe be supplied in many cases by applying the criterion given by McCowan LJ that to qualify under Section 44(1), a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part.

Thus an article is not registrable if it forms part of a finished product or is intended both as part of some larger object and as replacement spares for that object. Articles of either category would be characterised as having no ‘independent life as an article of commerce’.

In the case of Samsonite Corp v Make Rich Limited, the registration of design in respect of a ‘big wheel feature’ did not fall within the scope of an ‘article’ as defined in Section 2(1) of the RDO and thus was invalid.

The learned judge in that case held that the description of it—‘wheel assembly for an upright luggage case’—was clearly a part of the luggage that was not covered by the design registration and there was no evidence that the ‘big wheel feature’ was made and sold separately. Apparently, ‘the big wheel feature’ does not have an independent life as an article of commerce. It is merely an adjunct of some larger article, namely luggage.

One interesting point in Samsonite Corp v Make Rich Limited is that apart from design registration, the plaintiff also claimed to be the owner of the copyright subsisting in the ‘artistic design’ of its Spark and Streamline series of luggage. Nevertheless, the plaintiff had not pleaded breach of its copyright in any artistic works at all. Therefore, a case of copyright infringement could not be sustained.

As a matter of strategy in litigation, the plaintiff usually claims both registered and unregistered design rights to enhance his chances of success in the proceedings. The question to be considered is whether copyright subsists in the article.

In C. & H. Engineering v F. Klucznik & Sons Ltd, a UK case concerning dispute over unregistered design rights, the learned judge Aldous J held that: “The word ‘original’ in section 213(1) of the Copyright, Designs and Patents Act 1988 is not defined, but I believe that it should be given the same meaning as the word ‘original’ in section 1(1) (a) of the Act, namely not copied but the independent work of the designer. It should be contrasted with novelty which is the requirement for registration of a registered design…”

Section 213(4) says that the design is not original if it is commonplace in the design field in question. The word ‘commonplace’ is not defined, but this subsection appears to introduce a consideration akin to novelty.

For the design to be original, it must be the work of the creator and that work must result in a design that is not commonplace in the relevant field. The designer is the creator and no design right will subsist until the design has been recorded in a document or in an article. Thus, the creator is not necessarily the person who records the design but usually will be.

It is important to note that a design is not regarded as original if it is commonplace in the design field in question. This is one of the reasons why the learned judge turned down the copyright case in Samsonite Corp v Make Rich Limited.

Kenny Leung is an in-house counsel at Wenping & Co. He can be contacted at: kenny@wenping.com.hk

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