Reforming the registered designs regime
With “design-intensive” industries contributing over 21% to Hong Kong’s GDP between 2019-2021, the Hong Kong Government has commenced a comprehensive review of Hong Kong’s registered designs regime. The consultation represents the first attempt to modernise the Registered Designs Ordinance in nearly 3 decades. The deadline for submissions is 16 March 2026.
Why does this matter?
Design protection around the world seems to be one of the most underrated types of intellectual property protection. Designs have often been neglected in favour of trade marks and patents. Hong Kong is no exception; statistics show that the design registration system is under-utilised in spite of being affordable and effective. However, from Dyson’s vacuum cleaner, to the iPhone, and Lego’s minifigures, many iconic products are actually protected by registered designs. Now, with the digital revolution expanding design beyond physical products and traditional design formats, the proposal to update the Hong Kong design law is a good chance to understand the true value and opportunities afforded by design rights.
Key proposals
Key considerations set out in the consultation paper include:
- Whether the current definitions of “design” and “article” remain fit for purpose. A design is currently narrowly defined as “features of shape, configuration, pattern or ornament applied to an article by any industrial process”. It is proposed to shift protection from “feature applied to an article” to the “appearance of a product” and to expand the exhaustive list of protectable features to include e.g., colour, lines and contours, or even moving elements.
- Whether the requirement for industrial application should be removed. Modern technology has enabled businesses to make products on a smaller scale rather than traditional mass manufacturing. Removing this requirement would help artisanal businesses by protecting the craftsmanship in producing handmade and uniquely designed products, as well as recognising manufacturing using emerging technologies such as 3D printing.
- The scope of design protection for virtual designs. The paper discusses whether protection should apply to virtual designs in the digital environment, including graphical user interfaces (GUIs), icons for mobile applications, projected images, or 3D designs used in augmented and virtual reality. The law currently protects virtual designs only if they are applied to a physical article, such as a screen.
- Protection for designs of components, spare parts, and partial designs. The current law protects “parts of articles” only if the part is “made and sold separately” e.g., a car steering wheel. However, parts which are dependent upon the appearance of another article, e.g., doors and windscreens of cars which form part of and contribute to the overall shape and appearance of the vehicle, are excluded from registration as there is no design freedom (the “must match” exclusion). This prevents design protection from being extended to spare parts which might confer an unduly broad monopoly upon the manufacturer for replacement parts. There are discussions in the paper of whether to replace this with a “must-fit” exclusion, and whether to introduce a “right to repair” defence, similar to the UK and EU.
- The paper also considers whether to allow protection of “partial designs” which are widely accepted in other jurisdictions including China, the EU, and the UK. Partial designs which form part of a greater article, and are not made and sold separately, are currently not registrable in Hong Kong.
- Raising the novelty requirement. The paper considers introducing an additional registrability requirement, guided by the overall impression produced by a design by reference to its individual character or distinctiveness, as well as the possibility of introducing substantive examination of novelty at the application stage.
- Examining the scope of the exclusive rights conferred on registered design owners.
- In particular, the paper proposes expanding the scope of exclusive rights to cover any business/commercial use of a registered design, rather than the current limited list of exclusive rights. The paper also considers whether protection should be extended to any article in which the design is used, rather than limited to the articles in respect of which the design is registered.
- It is also proposed to amend the law governing the ownership of commissioned designs to align with the international position. In Hong Kong, the person commissioning a design is presumed to be the owner of the design, unless there is an agreement to the contrary. This is different from major jurisdictions including China, the EU, Japan, and the UK, where ownership of a commissioned design is vested in the designer subject to any contrary agreement.
- Introducing a broader grace period for filing design applications. Designs which have been disclosed to the public before the application date are generally not registrable. The current law allows a 6-month grace period if the design was first disclosed at an “official international exhibition”. However, such exhibitions are rarely held and many local exhibitions do not qualify. The Government is considering whether the law should be relaxed to allow a 12 -month grade period that would cover disclosures for any purpose.
- Allowing applicants to defer publication of their designs. Unlike many other jurisdictions, Hong Kong does not have a formal mechanism for a design owner to defer publication of a registered design, even if there is a strategic or commercial reason to keep the design undisclosed for a period. The paper considers whether to introduce the option of deferment and what the maximum period of deferment should be.
- Analysing the overlap between registered designs and copyright. The paper asks for views on whether the current overlapping protection provided by design and copyright law is sufficiently clear and effective and also the implications of introducing an unregistered designs regime in Hong Kong. These are well-recognised areas of complexity which will require careful consideration.
Hong Kong’s Registered Designs Ordinance has not been amended since 1997. Advances in technology have fundamentally changed the landscape of consumer products since the law was first passed. The consultation represents a much-needed attempt to modernise Hong Kong’s registered designs regime for the digital age.
For further information, please contact:
Jeffrey McLean (Jeff), Partner, Deacons
jeffrey.mclean@deacons.com
