WORLD TRADE
ORGANIZATIONIP/N/1/HKG/2/Add.1
29 February 2000
(00-0740)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English
NOTIFICATION OF LAWS AND REGULATIONS
UNDER ARTICLE 63.2 OF THE AGREEMENT
HONG KONG, CHINA
Addendum
Explanatory memorandum notified by Hong Kong, China under Article 63.2 of the
Agreement with reference to the review of its TRIPS implementing legislation (see document
IP/N/1/HKG/2).IP/N/1/HKG/2/Add.1
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INDEX
Articles Page Nos.
INTRODUCTORY REMARKS 4-6
PART I GENERAL PROVISIONS AND BASIC
PRINCIPLES1 - 8 7-12
PART II STANDARDS CONCERNING THE
AVAILABILITY, SCOPE AND USE OF
INTELLECTUAL PROPERTY RIGHTSPART II
1. Copyright and Related Rights 9 - 14 Section 1 13-18
Berne Convention 1-21 19-41
2. Trademarks 15 - 21 Section 2 42-46
Paris Convention and Trade Marks 1-7, 9-12,
1947-62
3. Geographical Indications 22 - 24 Section 3 63-68
The Paris Convention and GIs 10 69-70
4. Industrial Designs 25 - 26 Section 4 71-73
Paris Convention and Designs 1-5, 11-12,
1974-81
5. Patents 27 - 34 Section 5 82-91
Paris Convention and Patents 1-5, 11-12,
1992-105
6. Layout-Designs (Topographies) of
Integrated Circuits35 - 38 Section 6 106-108
Treaty on Intellectual Property in Respect
of Integrated Circuits (1989)2-7, 12, 16 109-114
7. Protection of Undisclosed Information 39 Section 7 115-116
8. Control of Anti-Competitive Practices in
Contractual Licences40 Section 8 117-118
PART III ENFORCEMENT OF INTELLECTUAL
PROPERTY RIGHTSPART III
1. General Obligations 41 Section 1 119-121IP/N/1/HKG/2/Add.1
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Articles Page Nos.
2. Civil and Administrative Procedures and
Remedies42 - 49 Section 2 122-125
3. Provisional Measures 50 Section 3 126-127
4. Special Requirements Related to Border
Measures51 - 60 Section 4 128-132
5. Criminal Procedures 61 Section 5 133
PART IV ACQUISITION AND MAINTENANCE
OF INTELLECTUAL PROPERTYRIGHTS AND RELATED INTER PARTES
PROCEDURES62 PART IV 134-135
PART V DISPUTE PREVENTION AND
SETTLEMENT63 - 64 PART V 136-138
PART VI TRANSITIONAL ARRANGEMENTS 65 - 67 PART VI 139-140
PART VII INSTITUTIONAL ARRANGEMENTS;
FINAL PROVISIONS68 - 73 PART VII 141-145
Trade Marks Bill 1999:
The Shape of Things to ComeAnnex 146-149IP/N/1/HKG/2/Add.1
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 INTRODUCTORY REMARKS
1. This Explanatory Memorandum seeks to examine the means by which Hong Kong, China has
complied with the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”).
2. The People’s Republic of China established the Hong Kong Special Administrative Region of
the People’s Republic of China (known as ‘the Hong Kong SAR’) on 1 July 1997. The Hong Kong
SAR, which is a part of the territory of China, has been authorised to exercise a high degree of
autonomy and enjoy executive, legislative and inde pendent judicial power, including that of final
adjudication. These rights are enshrined in the Basic Law of The Hong Kong Special Administrative
Region of the People’s Republic of China, enacted under the Constitution of the People’s Republic of
China. Article 8 of the Basic Law provides, in part, that the laws formerly in force in Hong Kong, thatis, the common law, rules of equity, ordinances, subordinate legislation and customary law shall be
maintained. Article 18 makes it clear that “in force” includes laws (to be) enacted by the legislature.
3. Pursuant to the aforesaid articles, the Govern ment of the Hong Kong SAR formulates its own
policies, laws and administrative arrangements to protect IPRs. These arrangements, together with the
body of customary law and rules of equity, form the basis of the intellectual property laws of theHong Kong SAR.
4. The Hong Kong SAR operates independent Trade Marks, Designs and Patent Registries, and
matters relating to the grant, administration or litigation of trade marks, patents and designs are
decided within the Hong Kong SAR. The Hong Kong SAR intellectual property system is thus
separate from the system operating in other parts of China. Patent and Design Rights granted by theState Intellectual Property Office of China, or Trade Marks registered in the Chinese Trade Marks
Office, are not, conversely, automatical ly protected in the Hong Kong SAR.
5. All applications and enquiries in respect of registrable intellectual property rights (except
plant varieties protection) are received by the Intellectual Property Department of the Hong Kong
SAR. In respect of plant varieties, the application is made to the Director of Agriculture, Fisheries andConservation.
6. This Explanatory Memorandum is divided into Parts I to VII, following the layout of the
TRIPS Agreement. The relevant article of the TRIPS Agreement and related Conventions in bold
typeface is immediately followed by a descripti on of how Hong Kong, China has complied with that
article.IP/N/1/HKG/2/Add.1
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COPYRIGHT AND RELATED RIGHTS
The Copyright Ordinance (Cap. 528) (“CO”) is  the principal statutory embodiment of Hong
Kong, China’s copyright law. The Prevention of Copyright Piracy Ordinance (Cap. 544) makesfurther provision for the prevention of piracy using the medium of optical disc.
Section 1 of Part II sets out the relevant Articles in TRIPS and the Berne Convention and the
implementing provisions in the CO.
TRADEMARKS
Hong Kong, China’s current trade mark law is mainly based on the Trade Marks Ordinance
(Cap. 43) (“TMO”). This Ordinance was made complia nt with TRIPS by way of amending legislation
– the Intellectual Property (World Trade Organi zation Amendments) Ordinance passed in 1996. At
common law, trade marks are protected by the tort of passing off. The Trade Descriptions Ordinance
(Cap. 362) offers protection against the use of false trade descriptions and forged trade marks. The
Government of Hong Kong, China has presented a new Trade Marks Bill (“the New Bill”) to theLegislative Council in 1999. The New Bill aims to streamline procedural matters, and provide a more
efficient service to trade mark applicants and proprietors. Reference is made to an article in the Annex
- Trade Marks Bill 1999 : The Shape of Things to Come. The New Bill is currently under the scrutinyof a Bills Committee of the Legislative Council.
Section 2 of Part II sets out the relevant Articles in the TRIPS Agreement and the Paris
Convention and the implementing provisions in the TMO.
INDUSTRIAL DESIGNS
The relevant legislations are the Registered Designs Ordinance (Cap. 522) and the Registered
Designs Rules.
Section 4 of Part II sets out the relevant Articles in the TRIPS Agreement and Paris
Convention and the implementing provisions in the Registered Designs Ordinance.
PATENTS
The relevant legislations are the Patents Or dinance (Cap.514) and the Patents (General)
Rules.
Section 5 of Part II sets out the relevant Articles in TRIPS and Paris Convention and refers to
the implementing provisions in the Patents Ordinance.
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS
The relevant legislation is the Layout-Designs (Topography) of Integrated Circuits Ordinance
(Cap.445).
Section 6 of Part II sets out the relevant Articles in TRIPS and implementing provisions in
Cap.445. Following Article 38.3, the text of the Treaty on Intellectual Property in Respect of
Integrated Circuits (1989) is set out with appropriate commentary to the implementation thereof.
Paragraph numberingIP/N/1/HKG/2/Add.1
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Commentary relating to TRIPS Articles are numbered by reference to the Article in TRIPS e.g.
Article 42 is 42.0 et seq  and Article 41 is 41.1.0 to 41.5.0.
Commentary relating to the Berne Convention (1 971) are prefaced with the letter B, thus
Article 6.3 of the Berne Convention is B6.3.0.
Commentary relating to the Paris Convention (1967) are prefaced as follows: Where
applicable to trademarks the preface is PT followed by the relevant Article and paragraph number of
the Paris Convention; where applicable to registered designs, the prefix is PD followed by the relevant
Article and paragraph number of the Paris Convention; and where applicable to patents, the prefix isPP followed by the relevant Article and paragraph number of the Paris Convention.
Commentary to the Treaty on Intellectual Property in Respect of Integrated Circuits is
prefaced T.IP/N/1/HKG/2/Add.1
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TRIPS AGREEMENT
PART I
GENERAL PROVISIONS AND BASIC PRINCIPLES
Article 1(1)
Members shall give effect to the provisions of this Agreement. Members may, but shall
not be obliged to, implement in their law more extensive protection than is required by this
Agreement, provided that such protection does no t contravene the provisions of this Agreement.
Members shall be free to determine the appropriate method of implementing the provisions of
this Agreement within their own legal system and practice.
_____________________________
1.1.0 Hong Kong, China has fully implemented the TRIPS Agreement.
1.1.1 Hong Kong, China has implemented, in some of its statutory provisions, more extensive
protection than that required by the Agreement (see for example the term of protection for
photographs detailed in the discussion of Article 7(4) of the Berne Convention, page 28
below). Statutory protection has also been enacted in areas not covered by the definition ofintellectual property in Article 1(2), for example in the protection of new plant varieties by
the Plant Varieties Protection Ordinance, Cap. 490. The extended protection fully complies
with the provisions of the Agreement.
1.1.2 In determining the appropriate method of im plementing the provisions of the Agreement,
common law precedents, existing administrative procedures, as well as the enactment of new
statutory provisions have all been utilised.
Article 1(2)
For the purposes of this Agreement, the term “intellectual property” refers to all
categories of intellectual property that are th e subject of Sections 1 through 7 of Part II.
_____________________________
1.2.0 Noted.
Article 1 (3)
Members shall accord the treatment provided for in this Agreement to the nationals of
other Members. In respect of th e relevant intellectual property right, the nationals of other
Members shall be Understood as those natural or  legal persons that would meet the criteria for
eligibility for protection provided for in the Paris Convention (1967), the Berne Convention(1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated
Circuits, were all Members of the WTO members of the Conventions. Any Member availing
itself of the possibilities provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the
Rome Convention shall make a notification as foreseen in those provisions to the Council for
Trade-Related Aspects of Intellectual Property Rights (the “Council for TRIPS”).
___________________________________
1.3.0 Hong Kong, China accords the treatment provid ed for in the Agreement to the nationals of
other Members.IP/N/1/HKG/2/Add.1
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1.3.1 In respect of copyright and related rights, the protection provided in Hong Kong, China
extends to all natural persons domiciled or resident or having a right of abode anywhere, and
to bodies incorporated under the laws of any country, territory or area. The statutory
exception to this provision is to the nationals of those countries to which section 180 of the
Copyright Ordinance applies. (No countr y has been designated under section 180.)
1.3.2 In respect of the rights afforded by registration of a trade mark (including a certification mark
in relation to geographical origin), industrial design, patent, or lay-out design (topography) of
integrated circuits, the protection provided by Hong Kong, China extends to all natural or
legal persons.
1.3.3 Hong Kong, China has notified the followin g to the Council for TRIPS in relation to
Article 1.3 :
• Hong Kong will not apply in respect of phonograms the criterion of fixation as provided
under Article 5 of the Rome Convention.
• Hong Kong intends to protect broadcasts only if the headquarters of the broadcasting
organization is situated in another Member and the broadcast was transmitted from a
transmitter situated in the territory of the same Member as provided under Article 6 of theRome Convention.
Article 2(1)
In respect of Parts II, III and IV of this Agreement, Members shall comply with
Articles 1 through 12, and Article 19, of the Paris Convention (1967).
___________________________
2.1.0 Hong Kong, China fully complies with Article 1 through 12, and Article 19, of the Paris
Convention (1967). For a full commentary of the in dividual Articles, see Part II, sections 2, 4,
and 5.
Article 2(2)
Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that
Members may have to each other under the Pari s Convention, the Berne Convention, the Rome
Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.
__________________________
2.2.0 Although Hong Kong, China is not a country of the Union under either the Paris Convention
or the Berne Convention in its own right, Chin a, as a party to both Conventions, has applied
both Conventions to Hong Kong, China since 1 July 1997. The obligation under Article 6
bis of
the Berne Convention, for example, is accordingly adhered to. See also paragraph 9.1.1
(page 13 below).
2.2.1 Hong Kong, China is not a Contracting State under the Rome Convention (1961) nor a
Contracting Party under the Treaty on Intellectual Property in Respect of Integrated Circuits.
Article 3(1)
Each Member shall accord to the nation als of other Members treatment no less
favourable than that it accords to its own nation als with regard to the protection of intellectual
property, subject to the exceptions already pr ovided in, respectively, the Paris ConventionIP/N/1/HKG/2/Add.1
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(1967), the Berne Convention (1971), the Rome  Convention or the Treaty on Intellectual
Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms
and broadcasting organizations, this obligation on ly applies in respect of the rights provided
under this Agreement. Any Member availing itself  of the possibilities provided in Article 6 of
the Berne Convention (1971) or paragraph 1(b)  of Article 16 of the Rome Convention shall
make a notification as foreseen in th ose provisions to the Council for TRIPS.
___________________________
3.1.0 Hong Kong, China accords to the nationals of other Members treatment no less favourable
than it accords to its own nationals with regard to the protection (as that word is defined in the
footnote of the TRIPS Agreement) of intellectual property. See also the commentary on
Article 1(3) above (pages 7 and 8).
3.1.1 Despite Hong Kong, China not being a signator y to, or having applied to it, the Treaty on
Intellectual Property in Respect of Integrated Circuits (1989), all of the Members of the WTO
have been designated as countries to which the protection of the Layout-Design
(Topographies) in Integrated Circuits Ordinance, Cap 445 applies. (see section 24 and the
Schedule to the Ordinance).
3.1.2 Where permitted exceptions have been enacted, these are detailed in the discussion following
each relevant Article in Part II hereof.
3.1.3 See also the commentary on Article 14 hereof (pages 15-18).3.1.4 Hong Kong, China has not availed itself of the possibilities provided in Article 6 of the Berne
Convention nor paragraph 1(b) of Article 16 of the Rome Convention.
Article 3(2)
Members may avail themselves of the exceptions permitted under paragraph 1 in
relation to judicial and administrative procedures, including the designation of an address for
service or the appointment of an agent within the jurisdiction of a Member, only where such
exceptions are necessary to secure compliance with laws and regulations which are not
inconsistent with the provisions of this Agreemen t and where such practices are not applied in a
manner which would constitute a disguised restriction on trade.
________________________
3.2.0 Hong Kong, China does make exceptions to the pr inciple of national treatment, in its judicial
and administrative procedures, where such exceptions are necessary to comply with laws and
regulations. In all such cases the exceptions are consistent with the provisions of theagreement, and do not constitute a disguised restriction on trade.
3.2.1 The first exception is that a party to civil proceedings must file with the court an address for
service within Hong Kong, China.
3.2.2 The second exception is that an applicant, opponent, agent, registered proprietor or registered
user who does not reside or carry on business within Hong Kong, China shall file an address
for service within Hong Kong, China pursuant to Rule 100 of the Trade Marks Rules. Any
other such person may file an address for service within Hong Kong, China but if he does not
do so, the Registrar shall treat as the address for service of the person concerned his trade orbusiness address in Hong Kong, China, if any.IP/N/1/HKG/2/Add.1
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3.2.3 Provisions enacted in the Registered Designs (General) Rules (rule 65), and the Patents
General Rules (rule 42) which require the nomination of an address for service in Hong Kong,
China are non-discriminatory as they  apply equally to all applicants.
Article 4
With regard to the protection of intellectua l property, any advantage, favour, privilege
or immunity granted by a Member to the nati onals of any other country shall be accorded
immediately and unconditionally to the nation als of all other Members. Exempted from this
obligation are any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreements on ju dicial assistance or law enforcement of a
general nature and not particularly confined to the protection of intellectual property;
(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome
Convention authorizing that the treatment accorded be a function not of national
treatment but of the treatment accorded in another country;
(c) in respect of the rights of performers, producers of phonograms and broadcasting
organizations not provided under this Agreement;
(d) deriving from international agreements rela ted to the protection of intellectual property
which entered into force prior to the entry into force of the WTO Agreement, provided
that such agreements are notified to the Council for TRIPS and do not constitute an
arbitrary or unjustifiable discrimination against nationals of other Members.
__________________________
4.0 Save for the exceptions referred to in paragraphs 4.1, 4.2 and 5.0 hereof, in the field of the
protection of intellectual property, Hong Kong, China grants no advantage, favour, privilege
or immunity to the nationals of any other country.
4.1 Mutual legal assistance agreements in criminal matters have been entered into by Hong Kong,
China with a number of countries providing for taking and production of evidence, assettracing and recovery and other legal assistance. Such assistance is not normally available to
the nationals of another WTO Member unless it has entered into such an agreement with
Hong Kong, China, or unless that Member agrees to the conditions for providing assistance
stipulated by Hong Kong, China, which may include a condition to provide an undertaking of
reciprocity.
4.2 The Hague Conventions on service of judicial and extra-judicial documents and taking of
evidence in civil and commercial matters have al so been applied to Hong Kong, China. The
benefits under the two Conventions can only be enjoyed by parties to the respective Hague
Conventions.
4.3 Hong Kong, China does not differentiate, in applying protection for applied art and industrial
design and models, between such countries as afford special protection and those that do not,
as envisaged by Article 2(7) of the Berne Convention (1971).
4.4 Hong Kong, China has not availed itself of the right provided in Article 6(1) of the Berne
Convention (1971); has not provided in its legislation for terms of protection which differdepending on the protection granted in the countr y of origin, Article 7(8) Berne (1971); does
not permit inalienable interests in original works of art etc., Article 14 ter Berne (1971); and
is not a party to any convention envisaged by Article 18 Berne (1971).IP/N/1/HKG/2/Add.1
Page 11
4.5 Hong Kong, China has made no exceptions as envisaged by Articles 15 and 16(1)(a)(iv) and
(b) of the Rome Convention (1961).
Article 5
The obligations under Articles 3 and 4 do not apply to procedures provided in
multilateral agreements concluded under the auspi ces of WIPO relating to the acquisition or
maintenance of intellectual property rights.
______________________
5.0 China has applied the Patent Co-operation Tr eaty to Hong Kong, China since 1 July 1997.
Article 6
For the purposes of dispute settlement under this Agreement, subject to the provisions
of Articles 3 and 4 nothing in this Agreement shal l be used to address the issue of the exhaustion
of intellectual property rights.
__________________________
6.0 This is noted.
Article 7
The protection and enforcement of intellectual property rights should contribute to the
promotion of technological innovation and to the transfer and dissemination of technology, to
the mutual advantage of producers and users of technological knowledge and in a manner
conducive to social and economic welfare, and to a balance of rights and obligations.
_________________________
7.0 Examples of the balance between intellectual property rights and the rights of the public to
access technological innovation can be found in Part II Division III of the Copyright
Ordinance which deals with permitted acts in relation to copyright works.
7.1 In the Patents Ordinance, the balance is struck by registering only those patents which have
been accepted by a designated patents office, which is one that requires both novelty and
industrial applicability, and restricting the term of protection to 20 years.
7.2 Protection under the Plant Varieties Protection Ordinance is conditional upon the breeder
maintaining adequate stocks of reproductive material for sale to the public (section 18(9)(b)).
The breeder’s rights only extend to the development of a new variety essentially derived fromthe protected variety.
7.3 Compulsory licencing may be ordered where a standard patent is not commercially worked
after 3 years from grant (Section 64 Patents Ordinance).
Article 8(1)
Members may, in formulating or amending their laws and regulations, adopt measures
necessary to protect public health and nutrition, and to promote the public interest in sectors of
vital importance to their socio-economic and t echnological development, provided that such
measures are consistent with the provisions of this Agreement.
__________________________
8.1.0 See commentary on Article 7 above.IP/N/1/HKG/2/Add.1
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8.1.1 Another measure that has been provided for is  the power for the Government to use, in the
case of a declared state of extreme urgency, (as defined) a registered design (Part IV of the
Ordinance), a patent (Part IX of the Ordina nce) or a layout-design (topography) of an
integrated circuit (sections 18 through 23 of the Ordinance). Such measures are not
inconsistent with the Agreement, as the circumstances when such a power could be used arerare, and equitable compensation is payable to the right owner.
8.1.2 Providing protection to breeders under the Plant Varieties Protection Ordinance, Cap. 490,
will encourage the development and dissemination of new plant varieties having health or
nutritional benefits.
Article 8(2)
Appropriate measures, provided that they are consistent with the provisions of this
Agreement, may be needed to prevent the abuse of  intellectual property rights by right holders
or the resort to practices which unreasonably restrain trade or adversely affect the international
transfer of technology.
_________________________
8.2.0 See discussion following Articles 30, 31 and 40.
8.2.1 The Patents Ordinance (section 89) and the Registered Designs Ordinance (section 57)
provide for a cause of action against the owner for groundless threats of infringement
proceedings.IP/N/1/HKG/2/Add.1
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TRIPS AGREEMENT
PART II
STANDARDS CONCERNINGS THE AVAILABILITY,
SCOPE AND USE OF INTELLECTUAL PROPERTY RIGHTS
Section 1 : Copyright and Related Rights  1
Article 9(1)
Members shall comply with Articles 1 thro ugh 21 of the Berne Convention (1971) and
the Appendix thereto. However, Members shal l not have rights or obligations under this
Agreement in respect of the rights conferred under Article 6bis of that Convention or of the
rights derived therefrom.
___________________________
9.1.0 Hong Kong, China is in compliance with the relevant provisions of the Berne Convention
(Paris Act of 1971) as set out after Article 14 in this section.
9.1.1 China, as a party to the Berne Convention, ha s applied that Convention to Hong Kong, China
since 1 July 1997. Thus, whilst the implementation of Article 6bis is not a requirement under
the TRIPS Agreement, it is a requirement for members of the Berne Union, and accordingly
Article 6bis has been implemented in Hong Kong, China. See also paragraphs B6bis.1.0
through B6bis.3.0 (at page 27).
Article 9(2)
Copyright protection shall extend to expressi ons and not to ideas, procedures, methods
of operation or mathematical concepts as such.
_____________________
9.2.0 The body of case law that has developed in common law jurisdictions is of extremely strong
persuasive authority on the application of statutory enactments which are otherwise silent on
this issue. The judicial statements to the effect that copyright protects the expression of ideas
rather than the ideas themselves is accordingly good law in Hong Kong, China. Statutory
provisions reinforce the concept by providing in section 4(2) CO that copyright does not
subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or
otherwise.
9.2.1 Section 2(1) CO lists the descriptions of works which qualify for copyright protection. The
categories are further expanded in sections 4 through 10 inclusive of that ordinance.
Article 10(1)
Computer programs, whether in source or object code, shall be protected as literary
works under the Berne Convention (1971).
_____________________
                                                     
1Unless otherwise stated, references to statutory prov isions in this section are to provisions in the
Copyright Ordinance (“CO”).IP/N/1/HKG/2/Add.1
Page 14
10.1.0 This Article is implemented in section 2(1)(a) CO, which extends copyright protection to
original literary works. The definition of a li terary work in section 4(1)(b) CO includes a
computer program.
10.1.1 Section 29(3) and (4) CO are also relevant to the extent that a version of a computer program
in which it is converted into another language, is regarded as a translation, and as such, anadaptation of the program. The owner of the copyright in a computer program has the
exclusive right to make an adaptation of the program pursuant to section 29(1) CO, read with
section 22(1)(g).
10.1.2 Both the source and object code version of a computer program are protected as the original
literary works.
Article 10(2)
Compilations of data or other material, whether in machine readable or other form,
which by reason of the selection or arrangem ent of their contents constitute intellectual
creations shall be protected as such. Such protection, which shall not extend to the data ormaterial itself, shall be without prejudice to any copyright subsisting in the data or material
itself.
________________________
10.2.0 The first sentence of Article 10(2) is implemented in section 4(1)(a) of the CO. The only
qualification to be read into section 4(1)(a) is that, as a literary work, the compilation must be
original to qualify for protection (see section 2(1)(a) CO).
10.2.1 General copyright principles provide that such compilations do not protect the data itself,
which is either in the public domain or, is itself subject to copyright protection and for whichauthorisation from the authors thereof needed to be previously obtained.
Article 11
In respect of at least computer programs and cinematographic works, a Member shall
provide authors and their successors in title the ri ght to authorize or to prohibit the commercial
rental to the public of originals or copies of their copyright works. A Member shall be excepted
from this obligation in respect of cinematographic works unless such rental has led to
widespread copying of such works which is materially impairing the exclusive right of
reproduction conferred in that Me mber on authors and their successors in title. In respect of
computer programs, this obligation does not apply to rentals where the program itself is not the
essential object of the rental.
_______________________
11.0 Article 11 is implemented, in so far as computer programs are concerned, by the provisions of
section 22(1)(c) and section 25 CO. As there is no widespread problem resulting from the
copying of rented films, the provisions of this Article have not been extended to films.
11.1 The CO confers rights on the owner of the copy right, who may be the author or a successor in
title.
11.2 The right of a copyright owner (who may be the au thor or a successor in title) to authorise the
commercial rental to the public of originals or copies of their computer programs is
implemented in section 22(1)(c) CO.IP/N/1/HKG/2/Add.1
Page 15
11.3 The right of a copyright owner (who may be the au thor or a successor in title) to prohibit the
commercial rental to the public of originals or copies of their computer programs is
implemented in section 22(2) and 25 CO.
11.4 Section 25(1) CO read together with section 25 (4) CO prohibits the rental of both the original
and copies of the work.
Article 12
Whenever the term of protection of a work , other than a photographic work or a work
of applied art, is calculated on a basis other than the life of a natural person, such term shall be
no less than 50 years from the end of the calendar year of authorized publication, or, failing
such authorized publication with in 50 years from the making of the work, 50 years from the end
of the calendar year of making.
_____________________
12.0 Hong Kong, China makes no exception for photographs which receive full protection as
artistic works (section 5(a) CO).
12.1 Although it is understood that this Article deals, inter alia, with works whose author is a
corporation, nevertheless in the copyright law of Hong Kong, China, other calculations for the
term of protection based other than on the life of a natural person are provided in certain
circumstances. In the case of literary, dramatic, musical or artistic works of unknownauthorship under section 17(3) CO; in the case of sound recordings, under section 18(2) CO;
in the case of films where neither the identity of the principal director nor the composer of
music specially created for and used in the film is known, under section 19(4) CO; in the case
of broadcasts, under section 20(2) CO; and in the case of performances under
section 214(2) CO.
Article 13
Members shall confine limitations or exceptions to exclusive rights to certain special
cases which do not conflict with a normal exploitation of the work and do not unreasonablyprejudice the legitimate interests of the right holder.
____________________
13.0 The exceptions to the exclusive rights enjoyed by copyright owners are to be found in
Division III under Part II of the CO, sections 37 through 88.
13.1 The exceptions relate only to the question of whether the activity complained of amounts to
infringement. Section 37(3) CO provides that the primary consideration in determining the
issue is that the act does not conflict with a normal exploitation of the work by the copyright
owner and does not unreasonably prejudice the legitimate interests of the copyright owner.
Article 14(1)
In respect of a fixation of their performanc e on a phonogram, performers shall have the
possibility of preventing the following acts when undertaken without their authorization: the
fixation of their unfixed performance and the reproduction of such fixation. Performers shall
also have the possibility of preventing the following acts when undertaken without theirauthorization: the broadcasting by wireless means and the communication to the public of their
live performance.
______________________IP/N/1/HKG/2/Add.1
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14.1.0 Rights in performances are the subject matter of Part III of the CO. The protection provided is
not restricted to fixations on a phonogram but applies to fixations in any material form.
“Fixation” is exhaustively defined in section 200(2) and includes a film or sound recording.
14.1.1 Performers have the right to prevent the fixation of their unfixed performance without
authorisation, by virtue of the provisions of section 202(1)(a).
14.1.2 Performers have the right to prevent the reproduction of fixations such as referred to in
paragraph 14.1.1 hereof by virtue of the provisions of section 203.
14.1.3 The final sentence of Article 14(1) is implemented by the provisions of section 202(1)(b).
Article 14(2)
Producers of phonograms shall enjoy the righ t to authorize or prohibit the direct or
indirect reproduction of their phonograms.
______________________
14.2.0 Phonograms are protected as “sound recordings” (see the wide definition in section 6). The
author of a sound recording is, by virtue of the operation of section 11(2)(a), the producer. As
author, the producer is the first owner of the copy right subsisting, (section 13) subject to it not
being an employee work.
14.2.1 The producer’s right to authorise reproduction is implemented in section 22(1)(a).
14.2.2 The producer’s right to prohibit reproduction is implemented in section 23.14.2.3 The provision incorporating direct or indirect reproduction is found in section 22(3).
Article 14(3)
Broadcasting organizations shall have the right to prohibit the following acts when
undertaken without their authoriz ation: the fixation, the reproduction of fixations, and the
rebroadcasting by wireless means of broadcasts, as well as the communication to the public of
television broadcasts of the same. Where Member s do not grant such rights to broadcasting
organizations, they shall provide owners of copy right in the subject matter of broadcasts with
the possibility of preventing the above acts, su bject to the provisions of the Berne Convention
(1971).
________________________
14.3.0 Hong Kong, China does not, by its copyright laws, grant special rights to broadcasting
organisations. A “broadcast” is regarded as a “work” (see section 2(1)(b) CO); the author of
such works, and consequently the first owner of  the copyright in the broadcast, is the person
making the broadcast (section 11(2)(c) CO), further defined in section 8(3) CO. “Person”, in
the laws of Hong Kong, China includes any body of persons, corporate or unincorporated(Interpretation and General Clauses Ordinance, Cap. 1 section 3), thus the owner of the
copyright in a broadcast may in fact be a broadcasting organisation.
14.3.1 The owner of the copyright in a broadcast has the right to prohibit an unauthorised fixation of
the broadcast by virtue of the operation of section 22(1)(a) CO, and section 23 CO. Thereproduction of a fixation is also regarded as copying the work and as such is prohibited
under section 22(1)(a) CO and section 23 CO.IP/N/1/HKG/2/Add.1
Page 17
14.3.2 The rebroadcasting of a broadcast is an act infringing the copyright in a broadcast by virtue of
sections 22(1)(f) CO and 28(c) CO. Communication to the public of television broadcasts of
broadcasts would contravene the provisions of section 28(c) CO as a result of the definition of
“broadcast” in section 8(1) CO which includes a transmission by wireless telegraphy of visual
images and sounds.
Article 14(4)
The provisions of Article 11 in respect of computer programs shall apply mutatis
mutandis to producers of phonograms and any other right holders in phonograms as
determined in a Member’s law. If on 15 April 1994 a Member has in force a system of equitable
remuneration of right holders in respect of th e rental of phonograms, it may maintain such
system provided that the commercial rental of phonograms is not giving rise to the materialimpairment of the exclusive rights of reproduction of right holders.
_______________________
14.4.0 The first sentence of Article 14(4) is implemented in respect of rental rights in phonograms
(being incorporated in the wide definition of “sound recordings” in section 6(1)) bysections 22(1)(c) and 25 CO. The expression “owner” as used throughout the CO includes the
author or a successor in title.
14.4.1 The right to authorise the commercial rental to the public of sound recordings is provided in
section 22(1)(c). The right to prohibit the commercial rental is provided in section 25.Section 25 is equally applicable to the original or to copies of the sound recording.
Article 14(5)
The term of the protection available under this Agreement to performers and producers
of phonograms shall last at least until the end of a period of 50 years computed from the end of
the calendar year in which the fixation was made  or the performance took place. The term of
protection granted pursuant to paragraph 3 shall last for at least 20 years from the end of the
calendar year in which the broadcast took place.
_____________________
14.5.0 Article 14(5) is implemented in section 18 CO in respect of phonograms, and in
section 214 CO in respect of performances.
14.5.1 The term of protection for broadcasts is the end of the period of 50 years from the end of the
calendar year in which the broadcast was made (section 20 CO).
Article 14(6)
Any Member may, in relation to the rights conferred under paragraphs 1, 2, and 3,
provide for conditions, limitations, exceptions and reservations to the extent permitted by the
Rome Convention. However, the provisions of Article 18 of the Berne Convention (1971) shallalso apply, mutatis mutandis , to the rights of performers and producers of phonograms in
phonograms.
__________________________
14.6.0 The permitted exceptions to the rights conferred under paragraphs 1, 2 and 3 provided for in
the CO relate only to the question of wh ether the activity complained of amounts to
infringement. Section 37(3) CO provides that the primary consideration in determining that
issue is that the act does not conflict with a normal exploitation of the work by the copyright
owner and does not unreasonably prejudice the legitimate interests of the copyright owner.IP/N/1/HKG/2/Add.1
Page 18
14.6.1 In respect of Article 13(d) of the Rome Conv ention (1961), section 22(1)(f) and (g) of the CO
provide that the owner of the copyright in a broadcast has the exclusive right to authorise the
performance of the work in public, and section 27(3) CO provides the prohibition of
unauthorised playing to the public. Section 81 CO exempts from infringement, the free
showing or playing of a broadcast to the public.
14.6.2 In respect of the Rome Convention (1961):
(i) Article 15(1)(a). Section 38 of the CO pr ovides an exemption from infringement for
fair dealing with a work for the purposes of research or private study; section 76 of
the CO exempts the performance, showing or playing of a work (other than a
broadcast or a cable programme) as part of the activities of a club or society;sections 79 and 80 of the CO exempt private recordings for the purposes of time
shifting and a private photograph of an image forming part of a television broadcast;
and section 202(2) of the CO exempts a fixation of a performance by a person for his
private and domestic use.
(ii) Article 15(b). Section 39(2) of the CO provides an exemption from infringement of
fair dealing with a work for the purpose of reporting current events if accompanied by
a sufficient acknowledgement;
(iii) Article 15(c). Section 77 of the CO provides for the incidental recording for the
purposes of broadcast or cable programme.
(iv) Article 15(d). Sections 41 and 43 throug h 45 of the CO exempt from infringement,
reproduction, the performance or the playing in public, the recording or thereprographic copying of works for educational purposes.
14.6.3 With respect to Article 18 of the Berne Convention (1971), there is no limitation to the
protection of owner’s rights in phonograms or performer’s rights which are still extant in the
country of origin and which have not fallen into the public domain in Hong Kong, China.IP/N/1/HKG/2/Add.1
Page 19
Berne Convention (1971)
The following relates to Hong Kong, China’s compliance with the relevant provisions in the
Berne Convention (1971). Hence the prefix B.
Article 1
The countries to which this convention app lies constitute a Union for the protection of
the rights of authors in thei r literary and artistic works.
_______________________
B1.0 China has applied the Convention to Hong Kong, China since 1 July 1997.
B1.1 The expression “authors” is applied, in the laws of Hong Kong, China, so as to include not
only natural persons, but also corporations. See more particularly paragraph B3.1.0 (page 23
below).
B1.2 The personal rights afforded to an author by the laws of Hong Kong, China, must be read
subject to sections 14 (employee works); 15 (commissioned works); and 16 (Government
copyright) of the CO which qualify the general rule, found in section 13 of the CO, that the
author is the first owner of the copyright subsisting in a work.
Article 2(1)
The expression “literary and artistic work s” shall include every production in the
literary, scientific and artistic domain, whatever  may be the mode or form of its expression,
such as books, pamphlets and other writings; lectures, addresses, sermons and other works of
the same nature, dramatic or dramatico-musical works; choreographic works andentertainments in dumb show; musical compositions with or without words; cinematographic
works to which are assimilated works expressed by a process analogous to cinematography;
works of drawing, painting, architecture, sculpture, engraving and lithography; photographic
works to which are assimilated works expressed by a process analogous to photography; works
of applied art; illustrations, maps, plans, sketches and three-dimensional works relative togeography, topography, architecture or science.
__________________________
B2.1.0 Article 2(1) is implemented in sections 4(1), 5, and 7 CO.B2.1.1 Dramatico-musical works receive protection, by virtue of the definition of a “musical work”
in section 4(1) of the CO, in the underlying music, and as a “dramatic work” in the wholework. This is a result of the open-ended definition of “dramatic work”.
B2.1.2 Works of applied art are referred to as “cor responding designs” in Hong Kong, China, and
receive protection pursuant to the provisions of sections 86-88 inclusive of the CO.
B2.1.3 Three-dimensional works relative to geography or topography are protected by virtue of the
inclusion of the word “any” before “....map or chart” in the definition of graphic work.
Furthermore, a 3-dimensional scientific work would be included as a sculpture, as “sculpture”
is open-ended and is not dependent on artistic quality. A work of architecture includes a
building or a model for a building. See generally section 5 CO.IP/N/1/HKG/2/Add.1
Page 20
Article 2(2)
It, shall, however, be a matter for legislatio n in the countries of the Union to prescribe
that works in general or any specified categories of works shall not be protected unless they
have been fixed in some material form.
__________________________
B2.2.0 Article 2(2) is implemented in section 4(2) CO which provides that copyright does not subsist
in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise.
Article 2(3)
Translations, adaptations, arrangements of music and other alterations of a literary or
artistic work shall be protected as original works without prejudice to  the copyright in the
original work.
_________________________
B2.3.0 Article 2(3) is implemented by section 22(1)( g) CO. Not only is the making of an adaptation
of a work an act restricted by the copyright in the work, but also the doing of any of the
restricted acts (section 22(1)(a)-(f)) to an adaptation is also regarded as a restricted act.
B2.3.1 Section 29 of the CO adds, in subsections (3) and (4), to the expression “adaptation” as used
in section 22(1)(g). It is not given a meaning distinct from “translations” and “arrangementsof music” which are incorporated within the m eaning of the word “adaptation”. The effect of
this is to give the author of such primary works the same protection as an Article 2(1) work,
provided that the requirement of originality is satisfied. As regards the expression “other
alterations....”, these are confined to those listed in section 29(3)(a)(ii) and (iii) and the special
provisions relating to computer programs (section 29(3)(b) CO).
B2.3.2 Adaptations and other alterations of artistic works are further protected in section 23(3) of the
CO which provides that the expression “copying”, in relation to an artistic work includes the
making of a copy in 3-dimensi ons of a 2-dimensional work, and vice versa . Any adaptation of
the written content of an artistic work, for example a written legend to industrial drawingswould be protected by such alterations being regarded as alterations to a literary work.
B2.3.3 Nothing in the Ordinance affects the continued subsistence of copyright in the original work.
Article 2(4)
It shall be a matter for legislation in th e countries of the Union to determine the
protection to be granted to official texts of a legislative, administrative and legal nature, and to
official translations of such texts.
__________________________
B2.4.0 Hong Kong, China has made specific provisi on for protection of the original texts of the
legislature, in section 183 of the CO, from the date of publication in the Gazette. Copyright
protection is also available for bills, pursuant to section 185.
B2.4.1 Hong Kong, China has also provided that work s made by an officer of the Government in the
course of his duties (section 182(1)) and works made by or under the direction or control ofthe Legislative Council (section 184) are protected.
B2.4.2 The official translations of official texts would receive protection as adaptations of literary
works pursuant to sections 22(1)(g) and 29 of the CO.IP/N/1/HKG/2/Add.1
Page 21
Article 2(5)
Collections of literary or artistic works su ch as encyclopaedias and anthologies which,
by reason of the selection and arrangement of th eir contents, constitute intellectual creations
shall be protected as such, without prejudice to the copyright in each of  the works forming part
of such collections.
____________________________
B2.5.0 Article 2(5) is implemented in section 4(1) (a) of the CO. Copyright protection is extended not
only to literary material, but also to compilations of literary and artistic material and even
artistic material alone.
B2.5.1 Nothing in the Ordinance affects the continuing  copyright in the underlying original literary
and artistic works.
Article 2(6)
The works mentioned in this article shall enj oy protection in all countries of the Union.
This protection shall operate for the benefit of the author and his successors in title.
____________________________
B2.6.0 Article 2(6) is implemented by section 2 as r ead with the author or publication qualification
provided in sections 177 and 178 of the CO.
B2.6.1 Section 13 CO provides that the author is the first owner of any copyright in the work and
thus is entitled to the benefit.
B2.6.2 The rights conferred by copyright reside in the owner. Thus where the author, as first owner,
assigns those rights or they pass by testamentary disposition or by operation of law, the
successor in title is the owner. Section 101 CO sets out the provisions relating to assignments
and licences.
Article 2(7)
Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for
legislation in the countries of the Union to dete rmine the extent of the application of their laws
of applied art and industrial design and models, as well as the conditions under which such
works, designs and models shall be protected. Works protected in the country of origin solely as
designs and models shall be entitled in anoth er country of the Union only to such special
protection as is granted in that country to designs and models; however, if no such special
protection is granted in that country, such works shall be protected as artistic works.
_______________________
B2.7.0 The extent of the application of the laws of Hong Kong, China to applied art and industrial
designs and models and the conditions under which such marks are protected can be found in
sections 86 to 88 inclusive of the CO.
B2.7.1 Irrespective of whether works are protected solely as designs and models in their country of
origin, Hong Kong, China, grants the same pr otection to them as to such works created by
nationals of any country.IP/N/1/HKG/2/Add.1
Page 22
Article 2(8)
The protection of this Convention shall not apply to news of the day or to miscellaneous
facts having the character of mere items of press information.
________________________
B2.8.0 Subject to the exception of fair dealing for the purpose of reporting current events
(section 39(2) of the CO), Hong Kong, China protects such works provided they satisfy the
tests for originality and are recorded in writing or otherwise.
Article 2bis (1)
It shall be a matter for legislation in the co untries of the Union to exclude, wholly or in
part, from the protection provided by the p receding Article political speeches and speeches
delivered in the course of legal proceedings.
______________________
B2bis.1.0 Subject to section 54 of the CO (proceedings of the Legislative Council and judicial
proceedings), Hong Kong, China imposes no such exclusions. A political speech or legal
address is protected as a literary work which is spoken (pursuant to section 4(1) of the
CO), provided however that copyright shall not subsist in such works unless or until it is
recorded in writing or otherwise (section 4(2) of the CO).
Article 2bis (2)
It shall also be a matter for legislation in the countries of the Union to determine the
conditions under which lectures, addresses and other works of the same nature which are
delivered in public may be reproduced by the press, broadcast, communicated to the public bywire and made the subject of public communication as envisaged in Article 11
bis (1) of this
Convention, when such use is justified by the informatory purpose.
_______________________
B2bis.2.0 The conditions imposed when a record of spoken words is made for the purpose of
reporting current events or broadcasting or including in a cable programme service are
set out in section 67(2) of the CO. The third part of Article 11bis viz. the public
communication by loudspeaker etc has not specifically been made the subject of
conditions by the legislation (see Article 11bis (1), pages 31 and 32 below).
Article 2bis (3)
Nevertheless, the author shall enjoy the excl usive right of making a collection of his
works mentioned in the preceding paragraphs.
__________________________
B2bis.3.0 This paragraph is implemented by virtue of the operation of section 4(1) and (2);
section 13; and section 22(1) of the CO. The conditions referred to in paragraph B2bis .2.0
simply exempt such publication from being an act of infringement provided that the
conditions set out therein are met, but in no other respect affect the author’s exclusive
rights to exploit his work.IP/N/1/HKG/2/Add.1
Page 23
Article 3(1)
The protection of this Convention shall apply to:
(a) authors who are nationals of one of the coun tries of the Union, for their works, whether
published or not;
(b) authors who are not nationals of one of the countries of the Union, for their works first
published in one of those countries, or simu ltaneously in a country outside the Union
and in a country of the Union.
_________________________
B3.1.0 Hong Kong, China implements Article 3(1)(a) in section 178 of the CO which provides that, a
work qualifies for copyright protection if the author was, at the material time (see
paragraph B3.1.1), an individual domiciled or resident or having a right of abode in Hong
Kong, China or elsewhere; or a body incorporated under the laws of any country, territory or
area. This provides more extensive protection than is required under the Convention as it does
not restrict protection to authors of Union countries (or authors habitually residing in a Unioncountry).
B3.1.1 No distinction is made in section 178 between published and unpublished works for the
purposes of author qualification. The expression “material time” however does differ
depending on whether the literary, dramatic, musical or artistic work in question is publishedor unpublished. By virtue of section 181(2)(a) it means, in the case of an unpublished work,
when the work was made or, if the making extended over a period, a substantial part of that
period. In the case of published works, section 181(2)(b) defines the material time to be when
the work was first published or, if the author had died before that time, immediately before
his death. Further qualification is provided in section 181(3) for sound recordings, film,broadcasts, cable programmes and typographical arrangements of published editions.
B3.1.2 Far more extensive protection than is required under the Convention by Article 3(1)(b) is
provided in section 177(1)(b), which provides for copyright subsistence in a work if it is
published in Hong Kong, China or elsewhere. The author need not be a national of one of thecountries of the Union (or a habitual resident therein), nor a non-national for works first or
simultaneously published in a country of the Union.
Article 3(2)
Authors who are not nationals of one of the countries of the Union but who have their
habitual residence in one of them shall, for the purposes of this Convention, be assimilated tonationals of that country.
_________________________
B3.2.0 As can be see from paragraph B3.1.0, the author qualification provision (section 178)
includes residents or persons having a right of abode in Hong Kong, China. Such persons fallwithin the expression “habitual residence”. This paragraph is accordingly implemented.
Article 3(3)
The expression “published works” means works published with the consent of their
authors, whatever may be the means of manufacture of the copies, provided that the availability
of such copies has been such as to satisfy the reasonable requirements of the public, having
regard to the nature of the work. The performance of a dramatic, dramatico-musical,IP/N/1/HKG/2/Add.1
Page 24
cinematographic or musical work, the public recitation of a literary work, the communication
by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the
construction of a work of architecture shall not constitute publication.
___________________________
B3.3.0 Subject to paragraph B3.3.1 hereof, Article 3(3) is fully implemented in section 196 CO. The
expression “dramatico-musical” work is treated in the laws of Hong Kong, China as both a
dramatic work and as a musical work, as explained in paragraph B2.1.1 (page 19 above). The
public recital of a literary work is a “performance” by virtue of the definition in section 27(2).
The provisions of section 23 define “copies” and implements the phrase “whatever may be
the means of manufacture of the copies”.
B3.3.1 Section 196(3) of the CO provides that in the case of a work of architecture in the form of a
building, construction of the building is trea ted as equivalent to publication. Hong Kong,
China does not consider this deviation from Article 3(3) to have any significance with regard
to the protection intended to be secured by this Article. In context, the significance of
Article 3(3) is to protect works of non-Union country authors which, pursuant to
Article 3(1)(b) must be first published (or simultaneously published) in a convention countryto gain protection. Article 4(b) however extends protection to authors of architecture erected
in a country of the Union (even if the author  was from a non-Union country) because there is
a sufficient nexus with the Union country by reason of the building being attached to the
ground of that country. Buildings do not therefore need to be included in the definition of
publication in Article 3(3) to be protected. Hong Kong, China achieves the same effect by adifferent route. It protects any work published in Hong Kong, China and includes the erection
of a building in the definition of publication. A ccordingly, if a building is built in Hong Kong,
China, whatever the nationality of the author, it is considered as published and thus protected.
Article 3(4)
A work shall be considered as having been published simultaneously in several countries
if it has been published in two or more countries within thirty days of its first publication.
__________________________
B3.4.0 With the exception of section 180 (denial of copyright protection to authors of countries not
giving adequate protection to Hong Kong work s), the concept of simultaneous publication is
unnecessary under the laws of Hong Kong, China. Such provision was necessary only to
allow Union country authors to choose a country of origin for the work that provided the
better protection, or a non-Union author to gain the protection of Article 3(1). Hong Kong,
China, however offers, by virtue of section 177(1)(b), the same protection to authors
irrespective of whether the work is first published in a Union, or a non-Union country, and byvirtue of section 178(1), to Union country and non-Union country authors.
Article 4
The protection of this Convention shall apply, even if the conditions of Article 3 are not
fulfilled, to:
(a) authors of cinematographic works the maker of which has his headquarters or habitual
residence in one of the countries of the Union;
(b) authors of works of architecture erected in  a country of the Union or of other artistic
works incorporated in a building or other structure located in a country of the Union.
____________________________IP/N/1/HKG/2/Add.1
Page 25
B4.0 The application of sections 177 and 178 is not restricted to any class of work, thus copyright
protection is extended to non-Union coun try authors by Hong Kong, China’s open
qualification system.
Article 5(1)
Authors shall enjoy, in respect of work s for which they are protected under this
Convention, in countries of the Union other than the country of origin, the rights which their
respective laws do now or may hereafter grant to their nationals, as well as the rights specially
granted by this Convention.
________________________
B5.1.0 The Copyright Ordinance makes no distinction between works of nationals or non-nationals
whose country of origin is Hong Kong, China, or foreign authors, Berne Union nationals or
otherwise. All authors receive, pursuant to the provisions of sections 177 and 178, full Berne
Convention protection.
Article 5(2)
The enjoyment and the exercise of these righ ts shall not be subject to any formality;
such enjoyment and such exercise shall be inde pendent of the existence of protection in the
country of origin of the work. Consequently, ap art from the provisions of this Convention, the
extent of protection, as well as the means of redr ess afforded to the author to protect his rights,
shall be governed exclusively by the laws of the country where protection is claimed.
_________________________
B5.2.0 There are no formality requirements for rights conferred in the copyright legislation of Hong
Kong, China.
B5.2.1 With respect to the latter part of the first sentence of Article 5(2), the position in Hong Kong,
China is modified by the provisions of section 180 CO which denies protection to the worksof authors of countries who do not give protection to Hong Kong, China works. This is in
accordance with the provisions of Article 6(1) of Berne. The provision is inapplicable
however in relation to Berne Union countries (section 180(4)).
Article 5(3)
Protection in the country of origin is gov erned by domestic law. However, when the
author is not a national of the country of origin of the work for which he is protected under this
Convention, he shall enjoy in that countr y the same rights as national authors.
_______________________
B5.3.0 Hong Kong, China provides full Berne Conv ention protection to all authors irrespective of
nationality. See paragraph B5.1.0 above (page 25).
Article 5(4)
The country of origin shall be considered to be:
(a) in the case of works first published in a count ry of the Union, that country; in the case of
works published simultaneously in several countries of the Union which grant different
terms of protection, the country whose legislation grants the shortest term of protection;IP/N/1/HKG/2/Add.1
Page 26
(b) in the case of works published simultaneously in a country outside the Union and in a
country of the Union, the latter country;
(c) in the case of unpublished works or of works first published in a country outside the
Union, without simultaneous publication in a country of the Union, the country of theUnion of which the author is a national, provided that:
(i) when these are cinematographic works the maker of which has his headquarters
or his habitual residence in a country of the Union, the country of origin shall be
that country, and
(ii) when these are works of architecture erected in a country of the Union or other
artistic works incorporated in a building or other structure located in a country
of the Union, the country of origin shall be that country.
_____________________
B5.4.0 For the reasons set out in paragraphs B5.1.0 (page 25) and B5.3.0 (page 25) above, the
definition of country of origin has no practical effect on the protection provided in Hong
Kong, China.
Article 6(1)
Where any country outside the Union fails to protect in an adequate manner the works
of authors who are nationals of one of the countr ies of the Union, the latter country may restrict
the protection given to the works of authors who are, at the date of the first publication thereof,
nationals of the other country and are not habitu ally resident in one of the countries of the
Union. If the country of first publication avails itself of this right, the other countries of theUnion shall not be required to grant to works thus subjected to special treatment a wider
protection than that granted to them in the country of first publication.
_____________________
B6.1.0 Subject to the commentary on section 180 of the CO (see paragraph B5.2.1 hereof (page 25)),
Hong Kong, China adopts an open protection system and has not had to invoke this retaliatory
measure.
Article 6(2)
No restrictions introduced by virtue of th e preceding paragraph shall affect the rights
which an author may have acquired in respect of a work published in a country of the Unionbefore such restrictions were put into force.
_________________________
B6.2.0 This saving is provided for in section 180(2) of the CO. The restriction can only apply after
the issue of a regulation by the Chief Executive in Council and, only in respect of works firstpublished in that country after a date specified in the regulation. Legislation in Hong Kong,
China does not have effect retroactively unless clearly specified.
Article 6(3)
The countries of the Union which restrict the grant of copyright in accordance with this
Article shall give notice thereof to the Direct or General of the World Intellectual Property
Organisation (hereinafter designated as “the Director General”) by a written declaration
specifying the countries in regard to which protecti on is restricted, and the restrictions to whichIP/N/1/HKG/2/Add.1
Page 27
rights of authors who are nationals of those coun tries are subjected. The Director General shall
immediately communicate this declaration to all the countries of the Union.
_______________________
B6.3.0 As stated in paragraph B6.1.0, Hong Kong, Ch ina has not availed itself of the provisions of
Article 6(1) of Berne.
Article 6bis (1)
Independently of the author’s economic rights, and even after the transfer of the said
rights, the author shall have the right to claim authorship of the work and to object to any
distortion, mutilation or other modification of, or  other derogatory action in relation to, the said
work, which would be prejudicial to his honour or reputation.
____________________
B6bis.1.0 This Article is implemented, subject to the right to be identified as author being asserted
in accordance with section 90, by sections 89 and 92 of the CO.
Article 6bis (2)
The rights granted to the author in a ccordance with the preceding paragraph shall,
after his death, be maintained, at least until the expiry of the economic rights, and shall be
exercisable by the persons or institutions author ized by the legislation of the country where
protection is claimed. However, those countries whose legislation, at the moment of their
ratification of or accession to this Act, does not provide for the protection after the death of the
author of all the rights set out in the precedin g paragraph may provide that some of these rights
may, after his death, cease to be maintained.
_____________________
B6bis.2.0 The first sentence of this paragraph is implemented in sections 97 and section 106 of the
CO. The second sentence is not applicable.
Article 6bis (3)
The means of redress for safeguarding the rights granted by this Article shall be
governed by the legislation of the country where protection is claimed.
______________________
B6bis.3.0 Section 114 of the CO makes provision for remedies for infringement of moral rights.
Article 7(1)
The term of protection granted by this Conv ention shall be the life of the author and
fifty years after his death.
________________________
B7.1.0 Article 7(1) is implemented in section 17(1) a nd (2) of the CO in respect of literary, dramatic,
musical or artistic works.
Article 7(2)
However, in the case of cinematographic wo rks, the countries of the Union may provide
that the term of protection shall expire fifty ye ars after the work has been made available to theIP/N/1/HKG/2/Add.1
Page 28
public with the consent of the author, or, failin g such an event within fifty years from the
making of such a work, fifty years after the making.
______________________
B7.2.0 Hong Kong, China provides the same protectio n for films as it does for literary, dramatic,
artistic and musical works. The relevant section is section 19(2) of the CO. An exceptionhowever is provided in section 19(4) in the case where the principal director, author of the
screen play, author of the dialogue or the composer of music specially created for and used in
the film cannot be identified. The protection in such a case is in accordance with Article 7(2).
Article 7(3)
In the case of anonymous or pseudonymous works, the term of protection granted by
this convention shall expire fifty  years after the work has been lawfully made available to the
public. However, when the pseudonym adopted by the author leaves no doubt as to his identity,
the term of protection shall be that provided in paragraph (1). If the author of an anonymous or
pseudonymous work discloses his identity during the above-mentioned period, the term of
protection applicable shall be that provided in paragraph (1). The countries of the Union shallnot be required to protect anonymous or pseudonymous works in respect of which it is
reasonable to presume that their author has been dead for fifty years.
________________________
B7.3.0 The expression used to cover both anonymous and pseudonymous works in the legislation of
Hong Kong, China is a work of “unknown authorship”. The first sentence of Article 7(3) is
implemented in section 17(3)(b) of the CO. If the work is not made available to the public,
copyright would expire 50 years after the work was made (section 17(3)(a)). The expression
“making available to the public” is defined in section 17(5) in which no account is to be taken
of any unauthorised act (for example making the work available to the public without thelicence of the copyright owner contrary to section 24 or 26).
B7.3.1 The second sentence of Article 7(3) is implemented by implication from the use of the
expression “unknown authorship” (defined in sect ion 11(4) of the CO). The reversion to the
general rule is provided for in section 17(4).
B7.3.2 The third sentence of Article 7(3) is implemented in section 17(4).B7.3.3 The final sentence of Article 7(3) is implemented in section 66(1)(b)(ii).
Article 7(4)
It shall be a matter for legislation in the co untries of the Union to determine the term of
protection of photographic works and that of works of applied art in so far as they are protected
as artistic work; however, this term shall last at least until the end of a period of twenty-five
years from the making of such a work.
_____________________
B7.4.0 Photographic works falls within the definition of an “artistic work” in section 5(a). The
protection provided is accordingly the same as for other artistic works, namely, copyright
expires at the end of the period of 50 years from the end of the calendar year in which the
author dies (section 17(2) of the CO).
B7.4.1 In respect of works of applied art in so far as they are protected as artistic work, the term of
protection is the end of the period of 25 years from the end of the calendar year in which
articles incorporating a registered corresponding design are first marketed.IP/N/1/HKG/2/Add.1
Page 29
Article 7(5)
The term of protection subsequent to the death of the author and the terms provided by
paragraphs (2), (3) and (4) shall run from the date of death or of the event referred to in those
paragraphs, but such terms shall always be deemed  to begin on the first of January of the year
following the death or such event.
______________________
B7.5.0 Article 7(5) is implemented in sections 17(2); 17(3); 19(2); 66(1)(b) and 87 of the CO.
Article 7(6)
The countries of the Union may grant a term of protection in excess of those provided by
the preceding paragraphs.
____________________
B7.6.0 This Article is authority for the greater terms of protection provided for in respect of films, by
virtue of section 19(2) and for photographs, by virtue of section 17(2) of the CO.
Article 7(7)
Those countries of the Union bound by the Rome Act of this Convention which grant, in
their national legislation in force at the time of signature of the present Act, shorter terms or
protection than those provided for in the preced ing paragraphs shall have  the right to maintain
such terms when ratifying or acceding to the present Act.
_________________________
B7.7.0 Hong Kong, China is bound by the Paris Act of the Convention. This paragraph is
accordingly inapplicable.
Article 7(8)
In any case, the term shall be governed by the legislation of the country where
protection is claimed; however, unless the legislation of that country otherwise provides, the
term shall not exceed the term fixed in  the country of origin of the work.
________________________
B7.8.0 There is no provision in the laws of Hong Kong, China restricting the term of protection to
that prevailing in the country of origin. Works could therefore still receive protection despitethe fact that protection has expired in the country of origin.
Article 7
bis
The provisions of the preceding Article shall al so apply in the case of a work of joint
authorship, provided that the terms measured from  the death of the author shall be calculated
from the death of the last surviving author.
__________________________
B7bis.0 This Article is implemented in section 17(7) of the CO with the qualification that where the
identity of one or more of the joint authors is unknown, then the period runs from the death of
the last identified author to die.IP/N/1/HKG/2/Add.1
Page 30
Article 8
Authors of literary and artistic works prot ected by this Convention shall enjoy the
exclusive right of making and of authorizing th e translation of their works throughout the term
of protection of their rights in the original works.
__________________________
B8.0 Translation is a form of adaptation. Under Se ction 22(1)(g) of the CO, a copyright owner has
the exclusive right to make an adaptation (which is taken to include the making of a
translation) of his literary or artistic work, as the case may be. See also adaptation of literary,
artistic and musical works at paras B2.3.0 to B2.3.3 (page 20).
Article 9(1)
Authors of literary and artistic works protected by this Convention shall have the
exclusive right of authorizing the reproduction  of these works, in any manner or form.
____________________
B9.1.0 Article 9(1) is implemented in section 22(1)(a) and (g) as read with section 23 and section 29
of the CO.
Article 9(2)
It shall be a matter for legislation in the countries of the Union to permit the
reproduction of such works in cer tain special cases, provided th at such reproduction does not
conflict with a normal exploitation of the work and does not unreasonably prejudice the
legitimate interests of the author.
_________________________
B9.2.0 The exceptions permitted by Article 9(2) find expression in Part II, Division III (sections 38 –
88) of the CO. The broad areas of non-infringing use of a copyright work are: education;
libraries and archives; public administration; and special provisions relation to computer
programs, type faces and works in electronic form.
B9.2.1 Section 37(3) provides that in determining wh ether any of the aforesaid exempted acts may be
done in relation to a copyright work, the primary consideration is that the act does not conflict
with a normal exploitation of the work by the owner and does not unreasonably prejudice the
legitimate interests of the owner.
Article 9(3)
Any sound or visual recording shall be considered as a reproduction for the purposes of
this Convention.
_____________________
B9.3.0 This Article is implemented in sections 23(2) and (6) of the CO which broadly define copying
as the reproduction of the work in any material form, including copies which are transient or
are incidental to some other use of the work.
Article 10(1)
It shall be permissible to make quotations from a work which has already been lawfully
made available to the public, provided that their making is compatible with fair practice, andIP/N/1/HKG/2/Add.1
Page 31
their extent does not exceed that justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries.
____________________
B10.1.0 Section 22(3) of the CO, when defining “the  doing of any act restricted by the copyright
in a work”, qualifies the infringing act to doing it to a substantial part of the work.Substantiality is more a question of quality rather than quantity but nevertheless, making
a quotation from a work is unlikely to take a substantial part of the work and is thus
permissible.
B10.1.1 Also relevant to Article 10(1) are sections 38 and 39 of the CO which permit fair dealing
in a work for research or private study and for the purposes of criticism or review or for
the purposes of reporting current events. In respect to quotations which are solely oral,section 68 of the CO is relevant. Section 69 of the CO also permits the copying of an
abstract, if provided, of an article on a scientific or technical subject.
Article 10(2)
It shall be a matter for legislation in the countries of the Union, and for special
agreements existing or to be concluded between them, to permit the utilization, to the extent
justified by the purpose, of literary or artistic works by way of illustration in publications,
broadcasts or sound or visual recordings for te aching, provided such utilization is compatible
with fair practice.
________________________
B10.2.0 The exception permitted by Article 10(2) finds expression in sections 41 to 45 inclusive
of the CO.
Article 10(3)
Where use is made of works in accordan ce with the preceding paragraphs of this
Article, mention shall be made of the source, and of the name of the author if it appears thereon.
_________________________
B10.3.0 Article 10(3) is implemented in sections 39(1 ) and (2); 42(1); 44(1)(a); and 68 of the CO.
Article 10
bis (1)
It shall be a matter for legislation in the countries of the Union to permit the
reproduction by the press, the broadcasting or  the communication to the public by wire of
articles published in newspapers or periodicals on current economic, political or religious
topics, and of broadcast works of the same ch aracter, in cases in which the reproduction,
broadcasting or such communication thereof is not expressly reserved. Nevertheless, the source
must always be clearly indicated; the legal consequences of a breach of this obligation shall be
determined by the legislation of the country where protection is claimed.
______________________
B10bis.1.0 Section 39 of the CO permits a fair dealing exception in reporting of current events only.
Article 10bis (2)
It shall also be a matter for legislation in  the countries of the Union to determine the
conditions under which, for the purpose of report ing current events by means of photography,
cinematography, broadcasting or communication to the public by wire, literary or artisticIP/N/1/HKG/2/Add.1
Page 32
works seen or heard in the course of the event may, to the extent justified by the informatory
purpose, be reproduced and made available to the public.
______________________
B10bis.2.0 The conditions relevant to this Article can be found in section 39 of the CO, which
applies inter alia to literary and artistic works. In addition, section 40 exempts from the
act of infringement, the incidental inclusion of copyright material in artistic works
(including photographs), sound recordings, film, broadcast or cable programmes.
B10bis.2.1 The provisions of section 67 are also relevant to this Article.
Article 11(1)
Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusive
right of authorizing:
(i) the public performance of their works, including such public performance by any means
or process;
(ii) any communication to the public of the performance of their works.
_________________________
B11.1.0 Article 11(1) is implemented in section 27 of the CO. For commentary on the concept of
‘dramatico-musical’, see paragraph B2.1.1 (page 19).
Article 11(2)
Authors of dramatic or dramatico-musical works shall enjoy, during the full term of
their rights in the original wo rks, the same rights with respect to translations thereof.
________________________
B11.2.0 Article 11(2) is fully implemented by virt ue of sections 17, 22(1)(g) and 29 of the CO.
Article 11bis (1)
Authors of literary and artistic works shal l enjoy the exclusive right of authorizing:
(i) the broadcasting of their works or the communication thereof to the public by any other
means of wireless diffusion of signs, sounds or images;
(ii) any communication to the public by wire or  by rebroadcasting of the broadcast of the
work, when this communication is made by an  organization other than the original one;
(iii) the public communication by loudspeaker or any other analogous instrument
transmitting, by signs, sounds or images, the broadcast of the work.
_________________________
B11bis.1.0 This Article is implemented in respect to (i) and (ii) by sections 22(1)(f) and 28 of the
CO. Furthermore, section 9(5)(a) provides that copyright does not subsist in a cable
programme if it is included in a cable programme service by reception and immediate re-transmission of a broadcast.
B11
bis.1.1 Section 27 of the CO is broad enough to implement paragraph (iii) of this Article as
“performance” any acoustic presentation and any presentation by means of broadcast. ItIP/N/1/HKG/2/Add.1
Page 33
should also be pointed out that Section 81 of the CO, which provides that the showing or
playing in public of a broadcast or cable programme (other than an encrypted broadcast
or cable programme) to an audience who have not paid for admission to the place where
the broadcast or programme is to be seen or heard, only affects the copyright in the
broadcast or cable programme or, any sound recording or film included in it. The
provision does not affect the rights of the authors of literary and artistic works.
Article 11bis (2)
It shall be a matter for legislation in th e countries of the Union to determine the
conditions under which the rights mentioned in the preceding paragraph may be exercised, but
these conditions shall apply only in the countries  where they have been prescribed. They shall
not in any circumstances be prejudicial to the moral rights of the author, nor to his right toobtain equitable remuneration which, in the absence of agreement, shall be fixed by competent
authority.
_____________________
B11
bis.2.0 The conditions under which the rights prescribed in Article 11bis (1) may be exercised can
be found in sections 77-84 inclusive of the CO.
B11bis.2.1 The moral rights of an author of literary and artistic works referred to in this Article are
implemented in section 89 of the CO. A breach of moral rights can be remedied by the
Courts.
Article 11bis (3)
In the absence of any contrary stipulatio n, permission granted in accordance with
paragraph (1) of this Article shall not imply permission to record, by means of instrumentsrecording sounds or images, the work broadcast. It shall, however, be a matter for legislation in
the countries of the Union to determine the reg ulations for ephemeral recordings made by a
broadcasting organization by means of its own facilities and used for its own broadcasts. The
preservation of these recordings in official ar chives may, on the ground of their exceptional
documentary character, be authorized by such legislation.
______________________
B11
bis.3.0 A broadcast is treated as a separate work under the CO. An authorization to broadcast the
underlying literary or artistic work will not include a right to record the broadcast.
Section 77 of the CO is limited to the situation where, by virtue of a licence or
assignment of copyright, a person is authorized to broadcast, he may then, but solely for
the purposes of the broadcast, make a recording of the work. The section would onlyoperate in the circumstances where a contrary  intention is not provided in the licence.
B11
bis.3.1 Other conditions are imposed by section 78 for limited supervisional purposes.
B11bis.3.2 In addition to section 77, section 64 of the CO permits the making of a transient and
incidental copy of a work which is technically required for the viewing or listening of the
work by a member of the public to whom a copy of the work is made available. This
section would be wide enough to permit ephemeral recordings by a broadcasting
organization.
B11bis.3.3 Section 84 makes provision for the recording of a broadcast or cable programme in
limited circumstances for archival purposes.IP/N/1/HKG/2/Add.1
Page 34
Article 11ter (1)
Authors of literary works shall enj oy the exclusive right of authorizing:
(i) the public recitation of their works, including such public recitation by any means or
process;
(ii) any communication to the public of the recitation of their works.
_______________________
B11ter.1.0 This Article is implemented by section 22(1)(e) and section 27 of the CO. The reading in
public by one person of a reasonable extract from a published literary or dramatic work
does not infringe copyright, provided it is accompanied by a sufficient acknowledgement
(Section 68(1) of the CO). If the public recita tion does not infringe copyright, neither the
making of a sound recording, nor the broadcasting or inclusion in a cable programme of
the public recitation will infringe copyright, provided that the recording, broadcast or
cable programme consists mainly of material that does not rely on such exemption
(Section 68(2)).
Article 11ter (2)
Authors of literary works shall enjoy, during th e full term of their rights in the original
works, the same rights with respect to translations thereof.
______________________
B11ter.2.0 The same protection is afforded a translation of a literary work as is afforded the original
(Sections 22(1)(g) and 29(2) of the CO).
B11ter.2.1 This extends to versions of computer programs in another computer language despite the
fact that the conversion was done by an automated compilation process (Section 29(4)).
Article 12
Authors of literary or artistic works shal l enjoy the exclusive right of authorizing
adaptations, arrangements and other alterations of their works.
_____________________
B12.0 This Article is implemented in section 22(1)(g) and section 29 of the CO in respect of literary
works. See also the commentary in paragraph B2.3.2 hereof (page 20).
Article 13(1)
Each country of the Union may impose for itself reservations and conditions on the
exclusive right granted to the author of a musi cal work and to the author of any words, the
recording of which together with the musical work has already been  authorized by the latter, to
authorize the sound recording of that musical work, together with such words, if any; but all
such reservations and conditions shall apply only  in the countries which have imposed them and
shall not, in any circumstances, be prejudicial to the rights of these authors to obtain equitable
remuneration which, in the absence of agreeme nt, shall be fixed by competent authority.
______________________
B13.1.0 Hong Kong, China has not imposed any of the reservations envisioned by this paragraph.IP/N/1/HKG/2/Add.1
Page 35
Article 13(2)
Recordings of musical works made in a country  of the Union in accordance with Article
13(3) of the Conventions signed at Rome on June 2, 1928, and at Brussels on June 26, 1948, may
be reproduced in that country without the permis sion of the author of the musical work until a
date two years after that country becomes bound by this Act.
______________________
B13.2.0 This Article has no application to Hong Kong, China.
Article 13(3)
Recordings made in accordance with paragrap hs (1) and (2) of this Article and imported
without permission from the parties concern ed into a country where they are treated as
infringing recordings shall be liable to seizure.
______________________
B13.3.0 In Hong Kong, China any recording which is an unauthorised and therefore an infringing
copy would be liable to forfeiture.
Article 14(1)
Authors of literary or artistic works shal l have the exclusive right of authorizing:
(i) the cinematographic adaptation and reproduction of these works, and the distribution
of the works thus adapted or reproduced;
(ii) the public performance and communication to the public by wire of the works thus
adapted or reproduced.
______________________
B14.1.0 Article 14(1)(i) is implemented in section 22(1)(g) and section 29(3)(a)(ii) of the CO.
B14.1.1 Article 14(1)(ii) is implemented, in respect of literary works, by section 22(1)(e) and (f).
Section 27 is also relevant as explained in paragraph B14.1.0.
Article 14(2)
The adaptation into any other artistic form  of a cinematographic production derived
from literary or artistic works shall, without p rejudice to the authorization of the author of the
cinematographic production, remain subject to th e authorization of the authors of the original
works.
______________________
B14.2.0 The author of an original work has the exclusive right to make an adaptation of the work,
pursuant to section 22 of the CO. In the event that sufficient skill and labour have been
exerted by someone other than the author, so that the second work could be regarded as
being entitled to independent copyright, the original author, though not the owner of the
second copyright, nevertheless has the right to bring an action for infringement of his
original work. In this manner, the original author can be said to have the exclusive rightto authorise such adaptations. The provisions of section 29(3)(a)(iii) are also relevant.IP/N/1/HKG/2/Add.1
Page 36
Article 14(3)
The provisions of Article 13(1) shall not apply.
______________________
B14.3.0 Hong Kong, China has not imposed any reservations in this respect.
Article 14bis (1)
Without prejudice to the copyright in an y work which may have been adapted or
reproduced, a cinematographic work shall be pr otected as an original work. The owner of
copyright in a cinematograpic work shall enjoy the same rights as the author of an original
work, including the rights referr ed to in the preceding Article.
______________________
B14bis.1.0 The first sentence of this paragraph is implemented in section 2(1)(b) of the CO.
B14bis.1.1 The second sentence is implemented in section 22(1); and, with regard to adaptations of
the film, by section 22(1)(g).
Article 14bis (2)
(a) Ownership of copyright in a cinematographic work shall be a matter for legislation in
the country where protection is claimed.
(b) However, in the countries of the Union which, by legislation, include among the owners
of copyright in a cinematographic work auth ors who have brought contributions to the
making of the work, such authors, if they have undertaken to bring such contributions,may not, in the absence of any contrary or special stipulation, object to the
reproduction, distribution, public performan ce, communication to the public by wire,
broadcasting or any other communication to the public, or to the subtitling or dubbing
of texts, of the work.
(c) The question whether or not the form of the undertaking referred to above should, for
the application of the preceding subparagraph (b), be in a written agreement or a
written act of the same effect shall be a matter for the legislation of the country where
the maker of the cinematographic work has his headquarters or habitual residence.
However, it shall be a matter for the legislation of the country of the Union where
protection is claimed to provide that the said undertaking shall be in a written
agreement or a written act of the same effect. The countries whose legislation soprovides shall notify the Director General by means of a written declaration, which will
be immediately communicated by him to all the other countries of the Union.
(d) By “contrary or special stipulation” is meant any restrictive condition which is relevant
to the aforesaid undertaking.
______________________
B14
bis.2.0 Section 11(2)(b) of the CO provides that the author of a film is taken to be the producer
and the principal director jointly. By virtue of section 13 of the CO the author is the first
owner of the copyright, subject to section 14, which excepts employee works (includingfilms) from the basic rule.IP/N/1/HKG/2/Add.1
Page 37
B14bis.2.1 The legislation of Hong Kong, China does not provide for authors as envisaged by
paragraph (b) to be included among the owners of copyright in a film. The remaining
sections of this paragraph do not therefore apply to Hong Kong, China.
Article 14bis (3)
Unless the national legislation provides to the contrary, the provisions of
paragraph (2) (b) above shall not be applicable to author s of scenarios, dialogues and musical
works created for the making of the cinematograp hic work, or to the principal director thereof.
However, those countries of the Union whose legi slation does not contain rules providing for the
application of the said paragraph (2) (b) to such director shall notify the Director General by
means of a written declaration, which will be immediately communicated by him to all the other
countries of the Union.
______________________
B14bis.3.0 As the principal director is, under the laws of Hong Kong, China, an owner of the
copyright in a cinematograph work, and can therefore object to the acts referred to in
paragraph 2(b) above, the requirement to notify does not arise.
Article 14ter
(1) The author, or after his death the person s or institutions authorized by national
legislation, shall, with respect to original works of art and original manuscripts ofwriters and composers, enjoy the inalienable ri ght to an interest in any sale of the work
subsequent to the first transfer by the author of the work.
(2) The protection provided by the preceding paragraph may be claimed in a country of the
Union only if legislation in the country to which the author belongs so permits, and tothe extent permitted by the country where this protection is claimed.
(3) The procedure of collection and the amou nts shall be matters for determination by
national legislation.
______________________
B14
ter.0 The legislation of Hong Kong, China does not permit for inalienable interests in original
works of art, manuscripts or compositions after the first transfer of the work by the
author.
Article 15(1)
In order that the author of a literary or arti stic work protected by this Convention shall,
in the absence of proof to the contrary, be regarded as such, and consequently be entitled to
institute infringement proceedings in the countries of the Union, it shall be sufficient for his
name to appear on the work in the usual manner. This paragraph shall be applicable even if this
name is a pseudonym, where the pseudonym adopted by the author leaves no doubt as to hisidentity.
______________________
B15.1.0 This paragraph is implemented in sections 115(1) and (2) of the CO.IP/N/1/HKG/2/Add.1
Page 38
Article 15(2)
The person or body corporate whose name appears on a cinematographic work in the
usual manner shall, in the absence of proof to th e contrary, be presumed to be the maker of the
said work.
______________________
B15.2.0 This paragraph is implemented in section 116(2) of the CO.
Article 15(3)
In the case of anonymous and pseudonymous  works, other than those referred to in
paragraph (1) above, the publisher whose name a ppears on the work shall, in the absence of
proof to the contrary, be deemed to represent the author, and in this capacity he shall be
entitled to protect and enforce the author’s righ ts. The provisions of this paragraph shall cease
to apply when the author reveals his identity and established his claim to authorship of the
work.
______________________
B15.3.0 This paragraph is implemented in section 115(4) of the CO save that the publisher, until
the contrary is proved, is taken to be the author rather than be deemed only to represent
him. The publisher can therefore enforce the author’s rights as required by the Article.
Article 15(4)
(a) In the case of unpublished works where the identity of the author is unknown, but
where there is every ground to presume that he is a national of a country of the Union, it
shall be a matter for legislation in that country to designate the competent authority
which shall represent the author and shall be entitled to protect and enforce this rights
in the countries of the Union.
(b) Countries of the Union which make such designation under the terms of this provision
shall notify the Director General by means of a written declaration giving fullinformation concerning the authority thus designated. The Director General shall at
once communicate this declaration to all other countries of the Union.
______________________
B15.4.0 Although provision has been made in sect ion 189 of the CO for the designation of a
competent authority for the representation of authors of unpublished works, no such
designation has been made to date.
Article 16(1)
Infringing copies of a work shall be liable to seizure in any country of the Union where
the work enjoys legal protection.
______________________
B16.1.0 This Article is implemented, for the purposes of seizure of infringing copies of works in
Hong Kong, China, by section 122(1)(b) of the CO in criminal proceedings. Orders for
delivery up and disposal in civil actions are also provided for in sections 109 and 111. Inaddition, an application may be made for a detention order under section 136 of the CO.IP/N/1/HKG/2/Add.1
Page 39
Article 16(2)
The provisions of the preceding paragraph shall also apply to reproductions coming
from a country where the work is not protected, or has ceased to be protected.
______________________
B16.2.0 This Article has been implemented as detailed in paragraph B16.1.0. There is no
restriction placed on the right to seize based on lack of protection or the cessation of
protection in the exporting country, with the exception that for the purposes of criminal
proceedings, a copy of the work lawfully made in the country where it was made and
imported into Hong Kong, China after the expiration of 18 months from the first
publication of the work, shall not be regarded as an infringing copy (section 35(4) of the
CO).
Article 16(3)
The seizure shall take place in accordan ce with the legislation of each country.
______________________
B16.3.0 The conditions relating to seizure are contained in section 122 of the CO.
Article 17
The provisions of this Convention cannot in any way affect the right of the Government
of each county of the Union to permit, to control,  or to prohibit, by legislation or regulation, the
circulation, presentation, or exhibition of an y work or production in regard to which the
competent authority may find it necessary to exercise that right.
______________________
B17.0 Noted. An example of the exercise of the prohibition of circulation, presentation or
production of a work can be found in the Control of Obscene and Indecent Articles Ordinance
(Cap. 390).
Article 18(1)
This Convention shall apply to all works whic h, at the moment of its coming into force,
have not yet fallen into the public domain in the country of origin through the expiry of the
term of protection.
______________________
B18.1.0 Noted.
Article 18(2)
If, however, through the expiry of the term of protection which was previously granted,
a work has fallen into the public domain of th e country where protection is claimed, that work
shall not be protected anew.
______________________
B18.2.0 The copyright laws of Hong Kong, China do not permit reactivation of protection once
the term of copyright protection has expired. Specific provision is provided in
section 6(2) of the CO in the case of sound recordings; in section 7(4) in the case of
films; and section 10(2) in the case of typographical arrangements of published editionsIP/N/1/HKG/2/Add.1
Page 40
to prevent fresh copyright protection being claimed by copying a previously made sound
recording, film or typographical edition, as the case may be.
Article 18(3)
The application of this principle shall be subject to any provisions contained in special
conventions to that effect existing or to be concluded between countries of the Union. In the
absence of such provisions, the respective countr ies shall determine, each in so far as it is
concerned, the conditions of application of this principle.
______________________
B18.3.0 Hong Kong, China is not party to any convention having an effect contrary to
Article 18(2).
Article 18(4)
The preceding provisions shall also apply in the case of new accessions to the Union and
to cases in which protection is extended by the application of Article 7 or by the abandonment ofreservations.
______________________
B18.4.0 Because of Hong Kong, China’s open qualification system (see paragraph B 3.1.0 et seq .
page 23), this paragraph is fully implemented.
Article 19
The provisions of this Convention shall not preclude the making of a claim to the benefit
of any greater protection which may be granted by legislation in a country of the Union.
______________________
B19.0 Where greater protection is provided in the Copyright Ordinance, that protection is available
to all claimants.
Article 20
The Governments of the countries of the Unio n reserve the right to enter into special
agreements among themselves, in so far as su ch agreements grant to authors more extensive
rights than those granted by the Convention, or  contain other provisions not contrary to this
Convention. The provisions of existing agreements which satisfy these conditions shall remain
applicable.
______________________
B20.0 Hong Kong, China has not entered into any such special agreements, other than the WTO
TRIPS Agreement, on intellectual property rights protection.
Article 21
(1) Special provisions regarding developing countries are included in the Appendix.(2) Subject to the provisions of Article 28(1) (b), the Appendix forms an integral part of this
Act.
______________________IP/N/1/HKG/2/Add.1
Page 41
B21.0 Though entitled to do so, Hong Kong, China, has not availed itself of any of the provisions in
the Appendix in its intellectual property legislation.IP/N/1/HKG/2/Add.1
Page 42
TRIPS AGREEMENT
Section 2 : Trade Marks2
Article 15(1)
Any sign, or any combination of signs, capabl e of distinguishing the goods or services of
one undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative elements
and combinations of colours as well as any combination of such signs, shall be eligible for
registration as trademarks. Where signs are not inherently capable of distinguishing the
relevant goods or services, Members may make registrability depend on distinctiveness
acquired through use. Members may require, as a condition of registration, that signs be
visually perceptible.
______________________
15.1.0 Article 15(1) is implemented by Section 2(1) of the TMO, which provides that a mark means
any sign that is visually perceptible and capable of being represented graphically and may, in
particular, consist of words, personal names, letters, numerals, figurative elements or
combination of colours, and includes any combination of such signs.
15.1.1 Under Sections 9(3) and 10(2) of the TMO, use may be taken into account to determine
whether a mark can be registered.
Article 15(2)
Paragraph 1 shall not be understood to prevent a Member from denying registration of
a trademark on other grounds, provided that they do not derogate from the provisions of the
Paris Convention (1967).
______________________
15.2.0 A trade mark may be denied registration on other grounds e.g. deceptiveness (Section 12(1)
of TMO) or conflict with other registered marks (Section 20 of TMO).
Article 15(3)
Members may make registrability depend on use. However, actual use of a trademark
shall not be a condition for filing an applicatio n for registration. An application shall not be
refused solely on the ground that intended use has not taken place before the expiry of a periodof three years from the date of application.
______________________
15.3.0 Article 15(3) is implemented by Section 13 of the TMO, which enables a trade mark
application to be made by someone who has used or proposes to use a trade mark. Where amark is not distinctive or capable of distinguishing within the meaning of Sections 9 or 10 of
TMO respectively, use may be required to enable registration to proceed.
                                                     
2 Unless otherwise stated, references to statutory provisions in this section are to provisions in the
Trade Marks Ordinance (“TMO”).IP/N/1/HKG/2/Add.1
Page 43
Article 15(4)
The nature of the goods or services to which a trademark is to be applied shall in no case
form an obstacle to registration of the trademark.
______________________
15.4.0 Article 15(4) is implemented by virtue of the fact that the TMO does not ban registration of a
trade mark because of the nature of the goods or services. The TMO classifies goods and
services in accordance with Schedule 4 of the TMO.
Article 15(5)
Members shall publish each trademark either before it is registered or promptly after it
is registered and shall afford a reasonable opport unity for petitions to cancel the registration. In
addition, Members may afford an opportunity for the registration of a trademark to be
opposed.
______________________
15.5.0 Article 15(5) is implemented by Section 14 of the TMO and Rule 22 of the Trade Marks
Rules. An application for the registration of a mark which has been accepted by the Registrar
of Trade Marks must be advertised in the Government Gazette.
15.5.1 A mark may be opposed (Section 15 of the TMO/Rules 23-24 of the Trade Marks Rules).
15.5.2 Rule 35(3) of the Trade Marks Rules provides that the fact of the registration of a trade mark
in the Trade Marks Register must be advertised in the Government Gazette.
15.5.3 Sections 37, 48-49 of the TMO allows for the removal, rectification and correction of
registration upon the application by any aggrieved person.
Article 16(1)
The owner of a registered trademark shall ha ve the exclusive right to prevent all third
parties not having the owner’s consent from usin g in the course of trade identical or similar
signs for goods or services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion. In case of the
use of an identical sign for identical goods or  services, a likelihood of confusion shall be
presumed. The rights described above shall not prejudice any existing prior rights, nor shall
they affect the possibility of Members ma king rights available on the basis of use.
______________________
16.1.0 Article 16(1) is implemented by Sections 2 7, 27A, 28 and 28A of the TMO which set out the
rights given to a registered proprietor. The proprietor is given exclusive rights to use the trade
mark in respect of goods or services. These rights are infringed by someone who uses anidentical mark in respect of identical goods or services for which the mark is registered. There
is also infringement where someone uses a trade mark which nearly resembles a registered
trade mark in relation to goods or services of the same description as the goods or services for
which the mark is registered.
16.1.1 Under Section 2(4) of the TMO a near resemblance of marks is a resemblance so near as to be
likely to deceive or cause confusion.
16.1.2 Prior rights are protected under Section 33 of the TMO which protects vested rights.IP/N/1/HKG/2/Add.1
Page 44
Article 16(2)
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis , to services. In
determining whether a trademark is well-known, Members shall take account of the knowledge
of the trademark in the relevant section of the public, including knowledge in the Member
concerned which has been obtained as a result of the promotion of the trademark.
______________________
16.2.0 Well-known trade marks (for goods or services) may be protected in Hong Kong by way of
defensive trade marks (Section 55/55A of the TMO), certification trade marks (Section 64 of
the TMO) and the law of passing-off under the common law.
16.2.1 Under Section 55/55A of the TMO, a defensive trade mark has to be “exceptionally well-
known”. What is exceptionally well-known is a question of fact, and the factors expressly
mentioned in Article 16(2) of TRIPS may be taken into account by a court of law.
16.2.2 It is possible to protect in Hong Kong a famous mark by way of the passing off action under
the common law. An international reputation may be sufficient to found such an action eventhough the plaintiff bringing the action has not established a business in Hong Kong. [Tan-
Ichi Co. Ltd. v Jancar Ltd. & Others [1990] FSR 151] .
16.2.3 Well-known marks may also be registered as certification trade marks under the TMO. These
are marks which are certified as to origin, material, mode of manufacture, quality, accuracy orother characteristic.
Article 16(3)
Article 6
bis of the Paris Convention (1967) shall apply, mutatis mutandis , to goods or
services which are not similar to those in respec t of which is a trademark is registered, provided
that use of that trademark in relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered trademark and provided that
the interests of the owner of the registered tr ademark are likely to be damaged by such use.
______________________
16.3.0 Article 16(3) is implemented by Section 12(1) of the TMO and by the law of passing off. This
is Section 12(1) of the TMO which provides that “It shall not be lawful to register as a trade
mark or part of a trade mark any matter the use of which would be likely to deceive or would
be disentitled to protection to a Court of Justice or would be contrary to law or morality, or
any scandalous design”.
16.3.1 An application for the registration of a trade mark may be opposed by the owner of a trade
mark for dissimilar goods or services under Section 12(1) of the TMO.
16.3.2 An owner of a mark (whether registered or not ) may also resort to the law of passing off to
prevent the use of an identical or similar mark by another owner in respect of dissimilar goodsor services.
Article 17
Members may provide limited exceptions to th e rights conferred by a trademark, such
as fair use of descriptive terms, provided that  such exceptions take account of the legitimate
interests of the owner of the trademark and of third parties.
______________________IP/N/1/HKG/2/Add.1
Page 45
17.0 Article 16(3) is implemented by Section 34 of  the TMO which provides that the registration
of a trade mark shall not interfere e.g. with the bona fide  use:
• by a person of his own name, or the name of his business
• of any bona fide description of a person's good services.
Article 18
Initial registration, and each renewal of registration, of a trademark shall be for a term
of no less than seven years. The registration of a trademark shall be renewable indefinitely.
______________________
18.0 Article 18 is implemented by Sections 17(2) and 45 of the TMO. The initial regulation of a
trade mark is 7 years. Thereafter, the term of a trade mark may be renewed for further periods
of 14 years.
Article 19(1)
If use is required to maintain a registration, the registration may be cancelled only after
an uninterrupted period of an least three years of non-use, unless valid reasons based on the
existence of obstacles to such use are shown by the trademark owner. Circumstances arising
independently of the will of the owner of the tr ademark which constitute an obstacle to the use
of the trademark, such as import restrictions on or other government requirements for goods or
services protected by the trademark, shall be recognised as valid reasons for non-use.
______________________
19.1.0 Article 19(1) is implemented by Section 37 of  the TMO which enables a mark to be removed
from the Trade Marks Register if there has been no bona fide  use of a trade mark for 5 years
or longer.
Article 19(2)
When subject to the control of its owner, us e of a trademark by another person shall be
recognised as use of the trademark for the purpose of maintaining the registration.
______________________
19.2.0 Article 19(2) is implemented by Section 58 of the TMO which enables a proprietor of a
registered trade mark to permit his mark to be used by a registered user. The use of the mark
by the registered user is deemed use by the proprietor.
Article 20
The use of a trademark in the course of tr ade shall not be unjustifiably encumbered by
special requirements, such as use with another trademark, use in a special form or use in a
manner detrimental to its capability to distinguish the goods or services of one undertaking
from those of other undertakings. This will not preclude a requirement prescribing the use ofthe trademark identifying the undertaking producing the goods or services along with, but
without linking it to, the trademark distinguishing the specific goods or services in question of
that undertaking.
______________________
20.0 The TMO does not impose limitations of the kind envisaged in Article 20.IP/N/1/HKG/2/Add.1
Page 46
Article 21
Members may determine conditions on the li censing and assignment of trademarks, it
being understood that the compulsory licensing of trademarks shall not be permitted and that
the owner of a registered trademark shall have  the right to assign the trademark with or
without the transfer of the business to which the trademark belongs.
______________________
21.0 The TMO does not contain any provisions relating to the compulsory licensing of trade
marks.
21.1 Section 41(1) and 41A(1) of the TMO provides that a registered trade mark is assignable
either with or without the goodwill of a business.IP/N/1/HKG/2/Add.1
Page 47
Paris Convention and Trade Marks
The following deals with Hong Kong, China’s compliance with the Paris Convention in
respect of trade marks. Hence the prefix PT. Where a particular paragraph of the article refers to
different types of intellectual property rights, those parts of the article which concern trade marks are
underlined.
Article 1(1)
The countries to which this Convention applies constitute a Union for the protection of
industrial property.
______________________
PT1.1.0 China has applied the Paris Convention to Hong Kong, China since 1 July 1997.
Article 1(2)
The protection of industrial property has as its object patents, utility models, industrial
designs, trademarks, service marks, trade names, indications of source or appellations of origin,
and the repression of unfair competition.
______________________
PT1.2.0 Hong Kong, China protects trade marks for goods and services by way of the TMO.
Article 1(3)
Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agri cultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle,
minerals, mineral waters, beer, flowers, and flour.
______________________
PT1.3.0 Under the TMO, it will be possible to apply for a trade mark for a wide range of
goods/services. Hong Kong, China basically follows the International Nice Classification
drawn up under the Nice Agreement (1957 as subsequently revised).
Article 1(4)
Patents shall include the various kinds of industrial patents recognized by the laws of
the countries of the Union, such as patents of importation, patents of improvement, patents andcertificates of addition, etc.
______________________
PT1.4.0 This is not applicable to trade marks.
Article 2(1)
Nationals of any country of the Union shall, as regards the protection of industrial
property, enjoy in all the other counties of th e Union the advantages that their respective laws
now grant, or may hereafter grant, to national s; all without prejudice to the rights specially
provided for by this Convention. Consequently, they shall have the same protection as the latter,IP/N/1/HKG/2/Add.1
Page 48
and the same legal remedy against any infringement  of their rights, provided that the conditions
and formalities imposed upon nationals are complied with.
______________________
PT2.1.0 Hong Kong, China observes national treatment in the protection of trade marks.
Article 2(2)
However, no requirement as to domicile or establishment in the country where
protection is claimed may be imposed upon nationals of countries of the Union for the
enjoyment of any industrial property rights.
______________________
PT2.2.0 The TMO imposes no such domicile or establishment conditions.
Article 2(3)
The provisions of the laws of each of the co untries of the Union relating to judicial and
administrative procedure and to jurisdiction, and to the designation of an address for service or
the appointment of an agent, which may be required by the laws on industrial property are
expressly reserved.
______________________
PT2.3.0 Article 2(3) is implemented by Rule 100 of the Trade Marks Rules which provides that
an applicant, opponent, agent, registered proprietor or registered user who does not reside
or carry on a business in Hong Kong must file an address for service in Hong Kong.
Rule 102 of the Trade Marks Rules enables any person to appoint an agent.
Article 3
Nationals of countries outside the Union who are domiciled or who have real and
effective industrial or commercial establishments in the territory of one of the countries of the
Union shall be treated in the same manner as  nationals of the countries of the Union.
______________________
PT3.0 Hong Kong, China does not discriminate against nationals of countries outside the
Union.
Article 4A(1)
Any person who has duly filed an application for a patent, or for the registration of a
utility model, or of an industrial design, or of a trademark, in one of the countries of the Union,
or his successor in title, shall enjoy, for the pur pose of filing in the other countries, a right of
priority during the periods hereinafter fixed.
______________________
PT4A.1.0 Article 4A(1) is implemented by Section 13A of the TMO whereby applicant for a trade
mark enjoys a right of priority.IP/N/1/HKG/2/Add.1
Page 49
Article 4A(2)
Any filing that is equivalent to a regular na tional filing under the domestic legislation of
any country of the Union or under bilateral or mu ltilateral treaties concluded between countries
of the Union shall be recognised as giving rise to the right of priority.
______________________
PT4A.2.0 This Article is implemented by Section 13A(5) of the TMO.
Article 4A(3)
By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent fate
of the application.
______________________
PT4A.3.0 This Article has been implemented by Section 13A(5)(b) of the TMO.
Article 4B
Consequently, any subsequent filing in any of the other countries of the Union before the
expiration of the periods referred to above shall not be invalidated by reason of any acts
accomplished in the interval, in particular, anot her filing, the publication or exploitation of the
invention, the putting on sale of copies of th e design, or the use of the mark, and such acts
cannot give raise to any third-party right or an y right of personal possession. Rights acquired
by third parties before the date of the first application that serves as the basis for the right of
priority are reserved in accordance with the dome stic legislation of each country of the Union.
______________________
PT4B.0 There is nothing specific in the TMO that any subsequent filing of an application should
be invalidated by the use of a mark accomplished in the interval. The TMO is silent on
this point. The TMO does, however, contain a sa ving for vested rights (see Section 33 of
the TMO).
Article 4C(1)(2)
(1) The periods of priority referred to above shall be twelve months for patents and utility
models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing
shall not be included in the period.
______________________
PT4C.1-2.0 This Article is implemented in Section 13A(2) of the TMO which provides that the
period of priority is six months calculated from the date of application for protection on
the Convention Country, or where there is more than one application, from the date of
the first application.IP/N/1/HKG/2/Add.1
Page 50
Article 4C(3)
If the last day of the period is an official holiday, or a day when the Office is not open for
the filing of applications in the country where pr otection is claimed, the period shall be extended
until the first following working day.
______________________
PT4C.3.0 This Article is implemented in Section 90A(2) of TMO.
Article 4C(4)
A subsequent application concerning the same subject as a previous first application
within the meaning of paragraph (2), above, file d in the same country of the Union, shall be
considered as the first application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application, the said previous
application has been withdrawn, abandoned, or refused, without having been laid open to
public inspection and without leaving any rights ou tstanding, and if it has not yet served as a
basis for claiming a right of priority. The prev ious application may not thereafter serve as a
basis for claiming a right of priority.
______________________
PT4C.4.0 There is no specific provision in the TMO covering this point. In practice, no point
would be taken where the Trade Marks Registry was not aware whether an applicationwas a first, second or subsequent application in a convention country.
Article 4D(1) to (4)
(1) Any person desiring to take advantage of the priority of a previous filing shall be
required to make a declaration indicating the date of such filing and the country in
which it was made. Each country shall determine the latest date on which such
declaration must be made.
(2) These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the pate nts and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to
produce a copy of the application (description, drawings, etc.) previously filed. The
copy, certified as correct by the authority which received such application, shall not
require any authentication, and may in any case  be filed, without fee, at any time within
three months of the filing of the subsequent application. They may require it to beaccompanied by a certification from the same  authority showing the date of filing, and
by a translation.
(4) No other formalities may be required for the d eclaration of priority at the time of filing
the application. Each country of the Union shall determine the consequences of failureto comply with the formalities prescribed by this Article, but such consequences shall in
no case go beyond the loss of the right of priority.
______________________
PT4D.1-4.0 This Article is implemented in Section 13A(4) and Rule 9(2) of the TMO. An applicant
must specify the country in which an application was made and the date of that
application. Such details are placed in the Leave to Advertise, which will be published in
the Government Gazette, once the mark has been accepted by the Registrar. The
applicant must file at any time before acceptance of the application a certificate by theIP/N/1/HKG/2/Add.1
Page 51
registrar or other registering authority of the Paris Convention country or otherwise
verify the application made or deemed to be made in that country. The consequence of a
failure to comply is that the claim for priority will fail.
Article 4D(5)
(5) Subsequently, further proof may be required. Any person who avails himself of the
priority of a previous application shall be required to specify the number of that
application; this number shall be published as provided for by paragraph (2), above.
______________________
PT4D.5.0 No further proof regarding the claim for priority is mentioned other than the matters
referred to under Article 4D(1) to (4). The number of an application made in a ParisConvention country is mentioned in the Leaves to Advertise under the TMO.
Article 5C(1)
If, in any country, use of the registered mark is compulsory, the registration may be
cancelled only after a reasonable period, and then only if the person concerned does not justify
his inaction.
______________________
PT5C.1.0 This Article is implemented by Section 37 of the TMO, where a mark may be revoked if
there has been no bona fide  use of a trade mark for 5 years.
Article 5C(2)
Use of a trademark by the proprietor in a form differing in elements which do not alter
the distinctive character of the mark in the fo rm in which it was registered in one of the
countries of the Union shall not entail invalidation of the registration and shall not diminish the
protection granted to the mark.
______________________
PT5C.2.0 This Article is implemented in Section 38 of the TMO, which provides that where use of
a registered trade mark is required to be proved, use of the trade mark with additions or
alterations not substantially affecting its identity may be accepted.
Article 5C(3)
Concurrent use of the same mark on iden tical or similar goods by industrial or
commercial establishments considered as co-propr ietors of the mark according to the provisions
of the domestic law of the country where protec tion is claimed shall not prevent registration or
diminish in any way the protection granted to the said mark in any country of the Union,
provided that such use does not result in misleading the public and is not contrary to the public
interest.
______________________
PT5C.3.0 This Article is implemented in Sections 19 and 19A of the TMO, which enable marks for
goods and services to be jointly owned. Persons who use a trade mark independently may
not be registered as joint proprietors (see Section 19B of the TMO).IP/N/1/HKG/2/Add.1
Page 52
Article 5D
No indication or mention of the patent, of the utility model, of the registration of the
trademark, or of the deposit of the industrial design, shall be required upon the goods as a
condition of recognition of the right to protection.
______________________
PT5D.0 This Article is implemented in that no mention of the registration of a trade mark upon
the good is required as a condition of recognition of the right to protection.
Article 5bis
(1) A period of grace of not less than six mont hs shall be allowed for the payment of the fees
prescribed for the maintenance of industrial property rights, subject, if the domestic
legislation so provides, to the payment of a surcharge.
(2) The Countries of the Union shall have the right to provide for the restoration of patents
which have lapsed by reason of non-payment of fees.
______________________
PT5bis.0 Under the TMO, there is no time limit within which the registration of a trade mark may
be restored after it has been removed from the Register from a failure to pay a renewal
fee (Rule 60).
Article 6
(1) The conditions for the filing and registratio n of trademarks shall be determined in each
country of the Union by its domestic legislation.
(2) However, an application for the registration of a mark filed by a national of a country of
the Union in any country of the Union may not be refused, nor may a registration be
invalidated, on the ground that filing, registration, or renewal, has not been effected in
the country of origin.
(3) A mark duly registered in a country of the Union shall be regarded as independent of
marks registered in the other countries of th e Union, including the country of origin.
______________________
PT6.0 This Article is implemented, under the TMO in that an application made in Hong Kong,
China for the registration of a trade mark would not be refused because an application had notbeen made in the country of origin. A mark that has been registered here would stand alone
and be independent of marks registered in other countries.
Article 6
bis
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration, and to prohibit the
use, of a trademark which constitute a reproduction, an imitation, or a translation,
liable to create confusion, of a mark co nsidered by the competent authority of the
country of registration or use to be well known in that country as being already themark of a person entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an imitation liable to create
confusion therewith.IP/N/1/HKG/2/Add.1
Page 53
(2) A period of at least five years from th e date of registration shall be allowed for
requesting the cancellation of such a mark. The countries of the Union may provide for
a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use
of marks registered or used in bad faith.
______________________
PT6bis.0 This Article has been implemented by opposition and rectification under the TMO and
the law of passing off. An applicant may attempt to register a well-known trade mark not
belonging to him as an ordinary trade mark, a defensive trade mark or a certification
trade mark. Where such a mark has been approved for registration, it will be published inthe Government Gazette. The proprietor of the well-known mark may often oppose such
a registration on the grounds that its registration is likely to deceive (Section 12(1) of the
TMO). The proprietor may also seek to rectify the registration of a mark wrongly placed
on the register under Section 48 of the TMO. There is no time limit under which an
application to rectify may be brought under Section 48.
PT6
bis.1 It is also possible in Hong Kong, China to protect a famous mark by way of the passing
off action under the common law. An international reputation may be sufficient to found
such an action even though the plaintiff bringing the action has not established a business
in Hong Kong, China (see Tan-Ichi Ltd v Jancar Ltd & Others [1990] FSR 151).
Article 6ter (1)(a)
The countries of the Union agree to refuse or to invalidate the registration, and to
prohibit by appropriate measures the use, with out authorisation by the competent authorities,
either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State
emblems, of the countries of the Union, official signs and hallmarks indicating control and
warranty adopted by them, and any imitation from a heraldic point of view.
______________________
PT6ter.1(a).0 This Article is implemented by Rule 5 of the Trade Marks Rules. Any attempt to
register as a trade mark the items mentioned in Rule 5 (which was not duly
authorised) could be opposed on the ground that it was in breach of section 12(1) of
the TMO. Similarly a mark which had been registered could be rectified from the
Register on the ground that it had been wrongly placed on the Register.
Article 6ter (1)(b)
The provisions of subparagraph (a), above, shall apply equally to armorial bearings,
flags, other emblems, abbreviations, and names, of international intergovernmental
organisations of which one or more countries of  the Union are members,  with the exception of
armorial bearings, flags, other emblems, abbrevia tions, and names, that are already the subject
of international agreements in force, intended to ensure their protection.
______________________
PT6ter.1(b).0 See the answer above to 6ter (1)(a). Reliance would have been placed on Rule 5 of the
Trade Marks Rules, Section 12(1) of the TMO and Section 48 of the TMO in respectof rectification.IP/N/1/HKG/2/Add.1
Page 54
Article 6ter (1)(c)
No country of the Union shall be required to apply the provisions of subparagraph (b),
above, to the prejudice of the owners of rights ac quired in good faith before the entry into force,
in that country, of this Convention. The countrie s of the Union shall not be required to apply the
said provisions when the use or registration ref erred to in subparagraph (a), above, is not of
such a nature as to suggest to the public that a connection exists between the organisation
concerned and the armorial bearings, flags, embl ems, abbreviations, names, or if such use or
registration is probably not of such a nature as to mislead the public as to the existence of a
connection between the user and the organisation.
______________________
PT6ter.1(c).0 This Article is implemented by Rule 5 of the Trade Marks Rules.
Article 6ter (2)
Prohibition of the use of official signs a nd hallmarks indicating control and warranty
shall apply solely in cases wher e the marks in which they are in corporated are intended to be
used on goods of the same or a similar kind.
______________________
PT6ter.2.0 Where such official signs or hall marks had been notified to Hong Kong, China
application by a third party relating to this mark would be refused.
Article 6ter (3)to(4)
(3) (a) For the application of these provisions, the countries of the Union agree to
communicate reciprocally, through the intermediary of the International Bureau,the list of State emblems, and official signs and hallmarks indicating control and
warranty, which they desire, or may hereafter desire, to place wholly or within
certain limits under the protection of this Article, and all subsequent modifications
of such list. Each country of the Union shall in due course make available to the
public the lists so communicated.
Nevertheless such communication is not obligatory in respect of flags of States.
(b) The provisions of subparagraph (b) of paragraph (1) of this Article shall apply only
to such armorial bearings, flags, other emblems, abbreviations, and names, of
international intergovernmental organisa tions as the latter have communicated to
the countries of the Union through the in termediary of the International Bureau.
(4) Any country of the Union may, within a period of twelve months from the receipt of
the notification, transmit its objections, if any, through the intermediary of the
International Bureau, to the countr y or international intergovernmental
organisation concerned.
______________________
PT6
ter.3-4.0 Hong Kong, China has access to information on such notifications as referred to in
Article 6ter.(3) to (4) of the Paris Convention. An application for a mark incorporating
such matters would be rejected by the Registrar of Trade Marks.IP/N/1/HKG/2/Add.1
Page 55
Article 6ter (5)
In the case of State flags, the measures pres cribed by paragraph (1), above, shall apply
solely to marks registered after November 6, 1925.
______________________
PT6ter.5.0 The TMO implements this Article. The TMO was passed in 1954.
Article 6ter (6)
In the case of State emblems other than flags, and of official signs and hallmarks of the
countries of the Union, and in the case of armorial bearings, flags, other emblems,
abbreviations, and names, of international in tergovernmental organisations, these provisions
shall apply only to marks registered more than  two months after receipt of the communication
provided for in paragraph (3), above.
______________________
PT6ter.6.0 Under Rule 5 of the Trade Marks Rules, the Registrar has a discretion at any time during
the application stage to decide whether to refuse or to accept an application for names,
initials, armorial bearings, insignia, orders of chivalry, etc.
Article 6ter (7)
In cases of bad faith, the countries shall have the right to cancel even those marks
incorporating State emblems, signs, and hallmarks, which were registered before
November 6, 1925.
______________________
PT6ter.7.0 As previously explained, it is possible to rectify the Register under the TMO on the
ground that an entry has been made on the Register without sufficient cause or that it was
an entry wrongly remaining on the register (see Section 48 of the TMO).
Article 6ter (8)
Nationals of any country who are authorised to make use of the State emblems, signs,
and hallmarks, of their country may use them ev en if they are similar to those of another
country.
______________________
PT6ter.8.0 This Article is implemented because there is no prohibition in the TMO.
Article 6ter (9)
The countries of the Union undertake to prohibit the unauthorised use in trade of the
State armorial bearings of the other countries of  the Union, when the us e is of such a nature as
to be misleading as to the origin of the goods.
______________________
PT6ter.9.0 A country could contemplate a passing off action under the common law.
Article 6ter (10)
The above provisions shall not prevent the countries from exercising the right given in
paragraph (3) of Article 6 quinquies, Section B, to refuse or to invalidate the registration of marksIP/N/1/HKG/2/Add.1
Page 56
incorporating, without authorisation, armorial be arings, flags, other State emblems, or official
signs and hallmarks adopted by a country of the Union, as well as the distinctive signs of
international intergovernmental organisati ons referred to in paragraph (1), above.
______________________
PT6ter.10.0 This Article is implemented in Sections 12(1), 13(1) and 48(1)(a) of the TMO. An
application for a mark that was deceptive could always face an opposition on the grounds
that the person applying was not the proprietor (Section 13(1) TMO), or that its
registration would lead to deception (Section 12(1) TMO). A mark that was already
registered could be invalidated under Section 48(1)(a) of the TMO on the grounds that it
was a mark made on the Register without sufficient cause or that it was an entry wrongly
remaining on the register.
Article 6quater (1)
When, in accordance with the law of a countr y of the Union, the assignment of a mark is
valid only if it takes place at the same time as the transfer of the business or goodwill to which
the mark belongs, it shall suffice for the recogn ition of such validity that the portion of the
business or goodwill located in that country be tr ansferred to the assignee, together with the
exclusive right to manufacture in the said countr y, or to sell therein, the goods bearing the mark
assigned.
______________________
PT6quater.1.0 Under the TMO, a registered trade mark is assignable either with or without the
goodwill of a business.
Article 6quater (2)
The foregoing provision does not impose upon the countries of the Union any obligation
to regard as valid the assignment of any mark the use of which by the assignee would, in fact, be
of such a nature as to mislead the public, particularly as regards the origin, nature, or essential
qualities, of the goods to which the mark is applied.
______________________
 PT6quater.2.0 Under the TMO, any assignment of a mark which rendered the mark deceptive
could be challenged as a mark wrongly remaining on the Register (see Section
48(1)(a) of the TMO).
Article 6quinquies A(1)
Every trademark duly registered in the country of origin shall be accepted for filing and
protected as is in the other countries of the Union, subject to the reservations indicated in this
Article. Such countries may, before proceeding to final registration, require the production of a
certificate of registration in the country of origin, issued by the competent authority. No
authentication shall be req uired for this certificate.
______________________
PT6quinquiesA.1.0 Hong Kong, China accepts for filing any application for a trade mark, including
trade marks registered elsewhere. However, whether such a mark can proceed to
registration must depend upon on examination process, as envisaged inArticle 6
quinquies B.IP/N/1/HKG/2/Add.1
Page 57
Article 6quinquies A(2)
Shall be considered the country of origin the country of the Union where the applicant
has a real and effective industrial or commercial establishment, or, if he has no such
establishment within the Union, the country of the Union where he has his domicile, or, if he has
no domicile within the Union but is a national of a country of the Union, the country of which heis a national.
______________________
PT6
quinquiesA.2.0 Under the TMO Section 13(1), anyone claiming to be entitled to be registered as a
proprietor could apply.
Article 6quinquies B(1)
Trademarks covered by this Article may be neither denied registration nor invalidated
except in the following cases:
(1) When they are of such a nature as to infringe rights acquired by third parties in the
country where protection is claimed.
_____________________________
PT6quinquiesB.1.0 This Article is implemented by Section 20 of the TMO. A mark registered in
violation of this could be rectified under Section 48 of the TMO as an entry madeon the register without sufficient cause.
Article 6
quinquies B(2)
(2) When they are devoid of any distinctive character, or consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality, quantity, intended
purpose, value, place of origin, of the goods, or the time of production, or have become
customary in the current language or in the bona fide and established practices of the
trade of the country where protection is claimed.
_____________________________
PT6quinquiesB.2.0 This Article is implemented by Sections 9(1)(d) and (e) and 10(2) of the TMO.
Such marks were not regarded as distinctive or capable of distinguishing goods. A
mark registered in breach of Section 9 or 10 could be rectified under Section 48 of
the TMO as an entry made on the register without sufficient cause.
Article 6quinquies B(3)
(3) When they are contrary to morality or public order and, in particular, of such a nature
as to deceive the public. It is understood that a mark may not be considered contrary to
public order for the sole reason that it does not conform to a provision of the legislation
on marks, except if such provision itself relates to public order.
_____________________________
PT6quinquiesB.3.0 This Article is implemented by Section 12(1) of the TMO where it is not lawful to
register a mark that is, inter alia , likely to deceive or to be contrary to morality.IP/N/1/HKG/2/Add.1
Page 58
Article 6quinquies C(1)
In determining whether a mark is eligible for protection, all the factual circumstances
must be taken into consideration, particularly the length of time the mark has been in use.
_____________________________
PT6quinquiesC.1.0 Use is relevant in determining whether a mark can be registered (See Section 9(3)
and 10(2) of the TMO).
Article 6quinquies C(2)
No trademark shall be refused in the other countries of the Union for the sole reason
that it differs from the mark protected in the country of origin only in respect of elements thatdo not alter its distinctive character and do not a ffect its identity in the form in which it has
been registered in the said country of origin.
_____________________________
PT6
quinquiesC.2.0 The registration of a mark will not be refused on this basis.
Article 6quinquies D
No person may benefit from the provisions of this Article if the mark for which he
claims protection is not registered in the country of origin.
_____________________________
PT6quinquiesD.0 A person may apply for the registration of a trade mark whether or not his mark is
registered in other countries.
Article 6quinquies E
However, in no case shall the renewal of th e registration of the mark in the country of
origin involve an obligation to renew the registration in the other countries of the Union in
which the mark has been registered.
_____________________________
PT6quinquiesE.0 There is no such obligation under the TMO.
Article 6quinquies F
The benefit of priority shall remain unaffe cted for applications for the registration of
marks filed within the period fixed by Article 4, even if registration in the country of origin is
effected after the expiration of such period.
_____________________________
PT6quinquiesF.0 In questions of Convention priority, it is the earlier filing date in a Convention
Country which is of paramount importance. (See Section 13A of the TMO.)
Article 6sexies
The countries of the Union undertake to protect service marks. They shall not be
required to provide for the registration of such marks.
_____________________________
PT6sexies.0 It is possible to register a service mark under the TMO.IP/N/1/HKG/2/Add.1
Page 59
Article 6septies (1) to (3)
(1) If the agent or representative of the person wh o is the proprietor of a mark in one of the
countries of the Union applies, without su ch proprietor’s authorisation, for the
registration of the mark in his own name, in  one or more countries of the Union, the
proprietor shall be entitled to oppose the registration applied for or demand its
cancellation or, if the law of the country so allows, the assignment in his favor of the said
registration, unless such agent or representative justifies his action.
(2) The proprietor of a mark shall, subject to the provisions of paragraph (1), above, be
entitled to oppose the use of his mark by his agent or representative if he has not
authorised such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of
a mark must exercise the rights provided for in this Article.
_____________________________
PT6septies.1-3.0 Under the TMO the proprietor would be able to oppose and to rectify under
Section 48(1)(a) of the TMO in the event of a registration (e.g. entry made in the
register without sufficient cause).
Article 7
The nature of the goods which a trademark is to be applied shall in no case form an
obstacle to the registration of the mark.
_____________________________
PT7.0 The nature of goods to which a trademark is applied is not an obstacle under the TMO.
Article 7bis
(1) The countries of the Union undertake to accept for filing and to protect collective marks
belonging to associations the existence of which is not contrary to the law of the country
of origin, even if such associations do not possess an industrial or commercial
establishment.
(2) Each country shall be the judge of the particular conditions under which a collective
mark shall be protected and may refuse protecti on if the mark is contrary to the public
interest.
(3) Nevertheless, the protection of these mark s shall not be refused to any association the
existence of which is not contrary to the law of the country of origin, on the ground that
such association is not established in the country where protection is sought or is not
constituted according to the law of the latter country.
_____________________________
PT7bis.0 The TMO does not provide for collective marks. However, the TMO provides for
certification trade marks (Sections 64 to 72). It is possible for what are collective marks
to be registered as certification trade marks.IP/N/1/HKG/2/Add.1
Page 60
Article 9
(1) All goods unlawfully bearing a trademark or trade name shall be seized on importation
into those countries of the Union where such  mark or trade name is entitled to legal
protection.
(2) Seizure shall likewise be affected in th e country where the unlawful affixation occurred
or in the country into which the goods were imported.
(3) Seizure shall take place at the request of the public prosecutor, or any other competent
authority, or any interested party, wheth er a nature person or a legal entity, in
conformity with the domestic legislation of each country.
(4) The authorities shall not be bound to affect seizure of goods in transit.
(5) If the legislation of a country does not permit seizure on importation, seizure shall be
replaced by prohibition of importation or by seizure inside the country.
(6) If the legislation of a country permits neither seizure on importation nor prohibition of
importation nor seizure inside the country, then, until such time as the legislation is
modified accordingly, these measures shall be replaced by the actions and remedies
available in such cases to nationals under the law of such country.
_____________________________
PT9.0 This Article is implemented by Part IIIA of the Trade Descriptions Ordinance
(Cap.362)(“TDO”) (Sections 30A to 30K), which set out the provisions relating to a detention
order in respect of “infringing goods”. The proprietor of a trade mark may apply to the Court
of First Instance where he has reasonable grounds for suspecting that the importation of suchgoods may take place. Infringing goods are defined as goods to which a forged trade mark has
been applied or a trade mark or mark so nearly resembling a mark as to be calculated to
deceive is falsely applied. No application for detention order can be made with respect to
goods in transit (Section 30B(5) of the TDO). Power to seize goods inside Hong Kong, China
is provided by Section 15 of the TDO.
Article 10
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use of a
false indication of the source of the goods or  the identity of the producer, manufacturer,
or merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity,
engaged in the production or manufacture of  or trade in such goods and established
either in the locality falsely indicated as th e source, or in the region where such locality
is situated, or in the country falsely indi cated, or in the country where the false
indication of source is used, shall in any case be deemed an interested party.
_____________________________
PT10.0 This Article is implemented in the TDO which also covers the application of a false trade
description to goods and makes this an offence. The Customs and Exercise Department have
power to seize such goods within Hong Kong, China (Section 15 TDO).IP/N/1/HKG/2/Add.1
Page 61
Article 10bis
(1) The countries of the Union are bound to assure to nationals of such countries effective
protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters
constitutes an act of unfair competition.
(3) The following in particular shall be prohibited :
1. all acts of such a nature as to create  confusion by any means whatever with the
establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trade of such a nature as to discredit the
establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead
the public as to the nature, the manufacturing process, the characteristics, thesuitability for their purpose, or the quantity, of the goods.
_____________________________
PT10
bis.0 See paragraphs PG10bis.0 and PG10bis.1, pages 69 and 70 post (Paris Convention and
GIs).
Article 10ter
(1) The countries of the Union undertake to assure to nationals of the other countries of the
Union appropriate legal remedies effectively to repress all the acts referred to inArticles 9, 10, and 10
bis.
(2) They undertake, further, to provide measures to permit federations and associations
representing interested industrialists, pro cedures, or merchants, provided that the
existence of such federations and associatio ns is not contrary to the laws of their
countries, to take action in the courts or be fore the administrative authorities, with a
view to the repression of the acts referred to in Articles 9, 10, 10bis , in so far as the law of
the country in which protection is claime d allows such action by federations and
associations of that country.
_____________________________
PT10ter.0 This has been implemented. See paragraphs PT9.0, PT10.0 and PT10bis.0 above.
Article 11
(1) The countries of the Union shall, in conformity with their domestic legislation, grant
temporary protection to patentable inventions, utility models, industrial designs, andtrademarks, in respect of goods exhibited at official or officially recognised international
exhibitions held in the territory of any of them.
(2) Such temporary protection shall not extend the periods provided by Article 4. If, later,
the right of priority is invoked, the auth orities of any country may provide that the
period shall start from the date of intr oduction of the goods into the exhibition.IP/N/1/HKG/2/Add.1
Page 62
(3) Each country may require, as proof of the identify of the article exhibited and of the
date of its introduction, such document ary evidence as it considers necessary.
_____________________________
PT11.0 There are provisions in the Patents and Designs Ordinances which enable products to be
exhibited at exhibitions without prejudicing novelty. These same considerations do notapply to trade marks because there is no issue of novelty. A trade mark owner can protect
his mark by applying for a registration under the TMO. He may oppose any attempt to
register his mark by a third party. He may bring an action for passing-off.
Article 12
(1) Each country of the Union undertakes to establish a special industrial property service
and a central office for the communication to the public of patents, utility models,
industrial designs, and trademarks.
(2) This service shall publish an official periodical journal. It shall publish regularly:
(a) the names of the proprietors of patents granted, with a brief designation of the
inventions patented;
(b) the reproductions of registered trademarks.
_____________________________
PT12.0 The Intellectual Property Department wh ich includes the Patents, Designs and Trade
Marks Registries is the service and office. It also publishes the Government Gazette
which deals with matters referred to in Article 12(2).
Article 19
It is understood that the countries of the Union reserve the right to make separately
between themselves special agreements for the prot ection of industrial property, in so far as
these agreements do not contravene the provisions of this Convention.
_____________________________
PT19.0 Hong Kong, China has not made special agreements separately for the protection of
industrial property with any country.IP/N/1/HKG/2/Add.1
Page 63
TRIPS AGREEMENT
Section 3 : Geographical Indications
Article 22(1)
Geographical indications are, for the purpos es of this Agreement, indications which
identify a good as originating in the territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin.
_____________________________
22.1.0 A geographical indication (“GI”) can be applied for as an ordinary trade mark.
22.1.1 An application may also be made to register the GI as a certification trade mark even though
it may designate a geographical origin of goods (section 64(3) of TMO).
Article 22(2)
In respect of geographical indications, Members shall provide the legal means for
interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or
suggests that the good in question originat es in a geographical area other than the
true place of origin in a manner which misleads the public as to the geographical
origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of
Article 10bis of the Paris Convention (1967).
_____________________________
22.2.0 An aggrieved party may begin an action for passing off under the common law to prevent the
misleading use of a GI. Furthermore, the action of “passing off” is preserved under section 36
of the Trade Marks Ordinance (Cap 43). Thus any trader misrepresenting his goods as those
of another trader who has acquired a reputation, causing loss to the other trader, faces an
action for passing off. The distinctiveness of a plaintiff’s goodwill in his business can derive
from his name, his mark, a description or the get-up of his goods. The owner of a certification
trade mark may bring an action under Section 67 of the TMO in respect of any infringement.
22.2.1 The use of a misleading GI may also constitute an offence under the TDO where it is an
offence for someone to apply a false description to any goods.
22.2.2 The Trade Descriptions Ordinance (TDO) (Cap 362) defines, in section 2, a “trade
description” as, inter alia , an indication, direct or indirect, and by whatever means given, of
any of the following matters with respect to any goods or part of goods ...... method of
manufacture, production, processing or reconditioning ...approval by any person or
conformity with a type approved by any person .... place or date of production ...... person by
whom produced ...... other history including previo us ownership or use. A trade description is
false if it is false to a material degree. It is an offence, pursuant to section 7 of the TDO, in thecourse of any trade or business, to apply a false trade description to goods, or to supply or
offer to supply any goods to which a false trade description is applied, or to possess such
goods. Pursuant to section 12, it is also an offence to import or export any goods to which a
false trade description is applied.IP/N/1/HKG/2/Add.1
Page 64
22.2.3 The relevant provisions of the TDO accordingly exceeds the protection required under Article
22(2)(a) in that the criminal offences are not restricted to goods from a region or locality
where a given quality, reputation or other characteristic of the good is essentially attributable
to its geographic origin, but extends to any false description of origin.
22.2.4 To facilitate the prosecution of importers who import goods bearing a false description of
origin of the goods, a presumption is provided in section 24A of the TDO, that evidence that
the goods were imported from a country is prima facie evidence that the goods were produced
in that country. Thus, the prosecution would not have the burden of proving where the goods
originated, simply relying on the country from which they were imported.
Article 22(3)
A Member shall, ex officio if its legislation so permits or at the request of an interested
party, refuse or invalidate the registration of a trademark which contains or consists of a
geographical indication with resp ect to goods not originating in th e territory indicated, if use of
the indication in the trademark for such goods in that Member is of such a nature as to mislead
the public as to the true place of origin.
_____________________________
22.3.0 A party may oppose the registration of a misleading GI as a trade mark or certification trade
mark under the TMO, and may rectify the register if such a mark has been registered.
22.3.1 Section 12(1) of the TMO may be used to oppose the registration of a trade mark on the
grounds that it is deceptive. Section 20 of the TMO can be used if there are prior registered
marks which conflict with the applied for mark.
22.3.2 Under Section 68 of the TMO, the entry of a certification trade mark may be varied or
expunged by the Registrar of Trade Marks, or the court, if it can be shown, inter alia , that the
proprietor is no longer competent to certify the goods, or it is no longer to the public
advantage that the mark should be registered.
Article 22(4)
The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical
indication which, although literally true as to the territory, region or locality in which the goods
originate, falsely represents to the public that the goods originate in another territory.
_____________________________
22.4.0 An aggrieved party may resort to Section 12(1) of the TMO to prevent an application for such
a trade mark, or as a basis for revoking the registration of a trade mark. An aggrieved party
may also bring a passing-off action under the common law to obtain an injunction against the
use of such a geographical indication.
22.4.1 There is also the possibility of a prosecution under the TDO which provides that a false trade
description means a trade description which, though not false, is misleading, that is to say,
likely to be taken for such an indication of any of the matters specified in the definition of
“trade description” as would be false to a material degree (Section 2(1) of the TDO). What is
covered by trade description is defined in Section 2(1) of the TDO and has been discussedabove at paragraph 22.2.2 (page 63) and covers method of manufacture, processing and
production.IP/N/1/HKG/2/Add.1
Page 65
Article 23(1)
Each Member shall provide the legal means fo r interested parties to prevent use of a
geographical indication identifying wines for wine s not originating in the place indicated by the
geographical indication in question or identifying spirits for spirits not originating in the place
indicated by the geographical indication in questio n, even where the true origin of the goods is
indicated or the geographical indication is used  in translation or accompanied by expressions
such as “kind”, “type”, “style”, “imitation” or the like.
_____________________________
23.1.0 Under Section 12(1) of the TMO it is not lawful to register a trade mark which would be
likely to deceive. Section 12(1) may therefore be used to prevent the registration of a trade
mark, where such a registration is deceptive. This is true whether the application is for anordinary trade mark or a certification trade mark.
23.1.1 The action for passing off is also available for anyone who wishes to stop the use of a GI
where the true origin of the goods has been stated or is used with words like “kind”, “type”,
“style”, “imitation”. See, e.g., J. Bollinger v. The Costa Brava Wine Co [1961] R.P.C. 116
where an attempt to use the words “Spanish Champagne” led to the granting of an injunction
for passing off in the face of “Champagne” wine produced in the district of Champagne in
France. There is also the Taittinger v Allbev [1993] FSR 641 where a passing-off action
succeeded against Elderflower Champagne.
23.1.2 Reference should also be made to the TDO. This makes it an offence to apply a false
description to goods, or to supply or offer to supply any goods to which a false description is
applied. Use of words like “style” etc. would not, however, give rise to criminal offences as
the description that the wine is of a named style is unlikely to be false.
Article 23(2)
The registration of a trademark for wines which contains or consists of a geographical
indication identifying wines or for spirits which contains or consists of a geographical indication
identifying spirits shall be refused or invalidated, ex officio if a Member’s legislation so permits
or at the request of an interested party, with res pect to such wines or spirits not having this
origin.
_____________________________
23.2.0 See paragraphs 22.3.0 to 22.3.2 above (page 64).
Article 23(3)
In the case of homonymous geographical in dications for wines, protection shall be
accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each
Member shall determine the practical conditio ns under which the homonymous indications in
question will be differentiated from each other, ta king into account the need to ensure equitable
treatment of the producers concerned and that consumers are not misled.
_____________________________
23.3.0 Section 22 of the TMO enables identical or nearly resembling marks to be registered through
the doctrine of honest concurrent use.IP/N/1/HKG/2/Add.1
Page 66
Article 23(4)
In order to facilitate the protection of geographical indications for wines, negotiations
shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral
system of notification and registration of geographical indications for wines eligible for
protection in those Members participating in the system.
_____________________________
23.4.0 Noted.
Article 24(1)
Members agree to enter into negotiations aimed at increasing the protection of
individual geographical indications under Article 23. The provisions of paragraphs 4 through 8
below shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral
or multilateral agreements. In the context of such negotiations, Members shall be willing to
consider the continued applicability of these pr ovisions to individual geographical indications
whose use was the subject of such negotiations.
_____________________________
24.1.0 Hong Kong, China will enter into negotiations sought as appropriate. To date no approaches
have been made.
Article 24(2)
The Council for TRIPS shall keep under review the application of the provisions of this
Section; the first such review sh all take place within two years of the entry into force of the
WTO Agreement. Any matter affecting the compliance with the obligations under theseprovisions may be drawn to the attention of the Council, which, at the request of a Member,
shall consult with any Member or Members in resp ect of such matter in respect of which it has
not been possible to find a satisfactory Members  concerned. The Council shall take such action
as may be agreed to facilitate the operation and further the objectives of this Section.
_____________________________
24.2.0 Noted.
Article 24(3)
Implementing this Section, a Member shall not diminish the protection of geographical
indications that existed in that Member immediatel y prior to the date of entry into force of the
WTO Agreement.
_____________________________
24.3.0 There has been no such reduction.
Article 24(4)
Nothing in this Section shall require a Member to prevent continued and similar use of a
particular geographical indication of another Me mber identifying wines or spirits in connection
with goods or services by any of its nationals or domiciliaries who have used that geographicalindication in a continuous manner with regard to  the same or related goods or services in the
territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good
faith preceding that date.
_____________________________IP/N/1/HKG/2/Add.1
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24.4.0 Hong Kong, China has no such provision in its laws.
Article 24(5)
Where a trademark has been applied for or registered in good faith, or where rights to a
trademark have been acquired through use in good faith either:
(a) before the date of application of these provisions in that Member as defined in
Part VI; or
(b) before the geographical indication is  protected in its country of origin;
measures adopted to implement this Section shall not prejudice eligibility for or the validity or
the registration of a trademark, or the right to use a trademark, on the basis that such a
trademark is identical with, or similar to, a geographical indication.
_____________________________
24.5.0 GIs may be registered as ordinary trade marks, certification trade marks or may be protected
under the common law by a passing-off action.
24.5.1 Any challenge to a registered trade mark would have to be made under the terms of the TMO,
which allows a mark to be revoked or removed from the Register if it is e.g. an entry madewithout sufficient cause, or on entry wrongly remaining on the Register, or where there has
been no bona fide use of a mark. The TMO has provisions regarding the saving for vested
rights (Section 33 of the TMO). Note also Section 30 of the TMO.
Article 24(6)
Nothing in this Section shall require a Memb er to apply its provisions in respect of a
geographical indication of any other Member wi th respect to goods or services for which
relevant indication is identical with the term  customary in common language as the common
name for such goods or services in the territory of that Member. Nothing in this Section shall
require a Member to apply its provisions in resp ect of a geographical indication of any other
Member with respect to products of the vine fo r which the relevant indica tion is identical with
the customary name of a grape variety existing in  the territory of that Member as of the date of
entry into force of the WTO Agreement.
_____________________________
24.6.0 This Article essentially provides that a WTO member is not required to protect a GI if it has
become a generic term. Article 24(6) contains a general principle, and a specific application
of that principle as regards a grape variety.
24.6.1 There are two avenues open to an applicant for a trade mark involving a GI. One is to register
as an ordinary trade mark, and the other is to register as a certification trade mark. In eithercase, the mark must be distinctive. A generic mark would not satisfy the distinctive test. An
attempt to register the generic term would be rejected as an attempt to register mark that was
not distinctive, or face an opposition on this ground.
Article 24(7)
A Member may provide that any request made under this Section in connection with the
use or registration of a trademark must be pres ented within five years after the adverse use of
the protected indication has become generally known in that Member or after the date ofIP/N/1/HKG/2/Add.1
Page 68
registration of the trademark in that Member provided that the trademark has been published
by that date, if such date is earlier than th e date on which the adverse use became generally
known in that Member, provided that the geograph ical indication is not used or registered in
bad faith.
_____________________________
24.7.0 There is no such five-year limit in the TMO.
Article 24(8)
The provisions of this Section shall in no way prejudice the right of any person to use, in
the course of trade, that person’s name or th e name of that person’s predecessor in business,
except where such name is used in su ch a manner as to mislead the public.
_____________________________
24.8.0 This Article is implemented in section 34 of the TMO. See paragraph 17.0 above (page 45).
Article 24(9)
There shall be no obligation under this Agreement to protect geographical indications
which are not or cease to be protected in their co untry of origin, or which have fallen into disuse
in that country.
_____________________________
24.9.0 Noted. Where an application is for a mark that is no longer a GI in the country of origin, it
will be difficult to reject a mark under Section 12(1) of the TMO on the ground that it is
deceptive. However, there might be a criminal offence under the TDO as the trade description
would still be false.
24.9.1 Marks that have already been registered on the Trade Marks Register as ordinary trade marks
or certification trade marks would have to be challenged on the grounds provided under
Section 48(1)(a) of the TMO, e.g. that it was an entry made in the Register without sufficient
cause or an entry wrongly remaining on the Register. Section 30 of the TMO prevents achallenge after 7 years.
24.9.2 A certification mark could be challenged on the ground that it was not distinctive as regards
origin, material, mode of manufacture, quality, accuracy or other characteristic (see
Section 64(1) of TMO).IP/N/1/HKG/2/Add.1
Page 69
The Paris Convention and GIs
The following deals with Hong Kong, China’s compliance with the Paris Convention in
respect of geographical indications. Hence the prefix PG.
Article 10
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use of a
false indication of the source of the goods or  the identity of the producer, manufacturer,
or merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity,
engaged in the production or manufacture of  or trade in such goods and established
either in the locality falsely indicated as th e source, or in the region where such locality
is situated, or in the country falsely indi cated, or in the country where the false
indication of source is used, shall in any case be deemed an interested party.
_____________________________
PG10.0 This states that the power of seizure referred to in Article 9 of the Paris Convention
applies to the use of a false indication of goods.
PG10.1 Reference should be made to the answers given on Articles 9 and 10 in the Section on the
Paris Convention and Trade Marks (pages 60 and 61).
Article 10bis
(1) The countries of the Union are bound to assure to nationals of such countries effective
protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters
constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
1. all acts of such a nature as to create  confusion by any means whatever with the
establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trad e of such a nature as to discredit the
establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead
the public as to the nature, the manufacturing process, the characteristics, the
suitability for their purpose, or the quantity, of the goods.
_____________________________
PG10bis.0 Acts liable to create confusion between different undertakings are remedied by the tort of
passing off and/or trade mark infringement. Behaviour which discredits competitors,
depending on the circumstances, may be actionable in libel, slander, malicious falsehood
and in unlawful interference with economic or other interests. Acts which tend to misleadas regards origin, quality, quantity and other characteristics are regulated by trade
descriptions legislation and passing off. Industry guidelines in the form of codes of
practice also carry persuasive authority in the spheres of advertising and broadcasting.IP/N/1/HKG/2/Add.1
Page 70
PG10bis.1 Reference is made to pages 63-65 on the TRIPS Agreement and GIs (particularly the
discussion on Articles 22(2), 22(3), 22(4) and 23(1) of the TRIPS Agreement).
Article 10ter
(1) The countries of the Union undertake to assure to nationals of the other countries of the
Union appropriate legal remedies effectively to repress all the acts referred to in
Articles 9, 10 and 10bis.
(2) They undertake, further, to provide measures to permit federations and associations
representing interested industrialists, producers, or merchants, provided that the
existence of such federations and associatio ns is not contrary to the laws of their
countries, to take action in the courts or be fore the administrative authorities, with a
view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far as the
law of the country in which protection is cl aimed allows such action by federations and
associations of that country.
_____________________________
PG10ter.0 The remedies that can be brought to repress the acts referred to have been discussed in
the responses to Article 10 and 10bis. Federations and associations may bring an action.IP/N/1/HKG/2/Add.1
Page 71
TRIPS AGREEMENT
Section 4 : Industrial Designs3
Article 25(1)
Members shall provide for the protection of independently created industrial designs
that are new or original. Members may provide th at designs are not new or original if they do
not significantly differ from known designs or combinations of known design features. Members
may provide that such protection shall not extend to designs dictated essentially by technical or
functional considerations.
_____________________________
25.1.0 This Article is implemented by the Registered Designs Ordinance which provides for the
registration of new designs. Section 5(1) of the Registered Designs Ordinance states that a
design which is new can be registered in respect of any article or set of articles specified in
the application.
25.1.1 Section 5(2) of the Registered Designs Ordinance provides that a design is not new if it is the
same as a design registered in pursuance of a prior application or the same as a design which
has been published in Hong Kong, China or elsewhere. A design is not new if it differs only
in immaterial details or features which are variants commonly used in the trade.
25.1.2 The Registered Designs Ordinance provides for the registration of new designs for the
appearance of products. Paragraph (b)(i)(ii) of the definition of “design” in section 2 of the
Registered Designs Ordinance excludes protection for features of shape or configuration
dictated solely by function or dependent on the appearance of another article of which thearticle is intended by the designer to form an integral part.
Article 25(2)
Each Member shall ensure that  requirements for securing protection for textile designs,
in particular in regard to any cost, examination or publication, do not unreasonably impair the
opportunity to seek and obtain such protection. Members shall be free to meet this obligation
through industrial design law or through copyright law.
_____________________________
25.2.0 Textile designs are registrable under Hong Kong, China’s Registered Designs Ordinance. The
provisions specifically applying to textile designs are stated below. In other respects textiledesigns are treated in the same manner as other designs.
25.2.1 “Textile article” is specifically defined in section 2(1) of the Registered Designs Rules (the
subsidiary legislation of the Registered Designs Ordinance).
25.2.2 Section 9(1)(c) of the Registered Designs Ordinance provides that an application for the
registration of a design shall not be refused, and the registration of a design shall not be
invalidated, by reason only of, in the case of a new or original textile design intended for
registration, the acceptance of a first and confidential order for goods bearing the design.
                                                     
3 Unless otherwise stated, references to statutory provisions in this section are to provisions in the
Registered Designs Ordinance.IP/N/1/HKG/2/Add.1
Page 72
25.2.3 Under section 8(4) of the Registered Designs Rules, a statement of novelty is not required in
an application for registration of a design to be applied to a textile article.
25.2.4 Under section 14 of the Registered Designs Rules, an application for registration of a two-
dimensional design intended to be applied to a textile article may be accompanied by a
sample of the article to which the design reproduced in the representation is applied. Samplesof other articles are not accepted, except where the Registrar requires.
25.2.5 Where a design has been registered the Registrar of Designs has to advertise that fact and
publish a presentation of the design by notice in the Government gazette. A prescribed filing
fee and advertisement fee is payable by the applicant which is cost based.
Protection
Article 26(1)
The owner of a protected industrial design shall have the right to prevent third parties
not having the owner’s consent from making, selling or importing articles bearing or
embodying a design which is a copy, or substant ially a copy, of the protected design, when such
acts are undertaken for commercial purposes.
_____________________________
26.1.0 Section 31 of the Registered Designs Ordinance provides that the owner of a registered design
can prevent others from manufacturing, importing, using, selling or hiring the design article
or an article to which a design not substantially different has been applied.
26.1.1 In addition, the right in a registered design is infringed if any person, without the consent of
the registered owner, makes anything for enabling any infringing article to be made in Hong
Kong, China or elsewhere.
26.1.2 The right conferred by the registration of a design does not extend to acts done privately for
non-commercial purposes, or acts done for the purpose of evaluation, analysis, research or
teaching.
Article 26(2)
Members may provide limited exceptions to the protection of industrial designs,
provided that such exceptions do not unreasonabl y conflict with the normal exploitation of
protected industrial designs and do not unreasonably prejudice the legitimate interests of theowner of the protected design, taking account of the legitimate interests of third parties.
_____________________________
26.2.0 This Article is implemented by the exceptions to the registered owner’s rights stated in
section 31 of the Registered Designs Ordinance. The right conferred by the registration of adesign does not extend to acts done privately for non-commercial purposes, or acts done for
the purpose of evaluation, analysis, research or teaching.
Article 26(3)
The duration of protection available shall amount to at least 10 years.
_____________________________IP/N/1/HKG/2/Add.1
Page 73
26.3.0 This Article is implemented by Section 28 of the Registered Designs Ordinance. The initial
period of registration of a design is five years beginning on the filing date of the application
for registration. The period of registration of a design may be extended for additional periods
of five years each but the total period of registration may not exceed 25 years beginning on
the filing of the application for registration.IP/N/1/HKG/2/Add.1
Page 74
Paris Convention and Designs
The following deals with Hong Kong China’s compliance with the Paris Convention in
respect of designs. Hence the prefix PD. Where a particular paragraph of the article refers to different
types of intellectual property rights, those parts of the article which concern designs are underlined.
Article 1(1)
The countries to which this Convention applies constitute a Union for the protection of
industrial property.
_____________________________
PD1.1.0 China has applied the Convention to Hong Kong, China since 1 July 1997.
Article 1(2)
The protection of industrial property has as its object patents, utility models, industrial
designs, trademarks, service marks, trade names, indications of source or appellations of origin,
and the repression of unfair competition.
_____________________________
PD1.2.0 Hong Kong, China provides for the protection of industrial designs under the Registered
Designs Ordinance.
Article 1(3)
Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agri cultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle,
minerals, mineral waters, beer, flowers, and flour.
_____________________________
PD1.3.0 Registered design rights in Hong Kong, China apply only to aesthetic designs applied to
manufactured articles by any industrial process (see the definitions of ‘article’ and
‘design’ in section 2 of the Registered Designs Ordinance).
Article 1(4)
Patents shall include the various kinds of industrial patents recognized by the laws of
the countries of the Union, such as patents of importation, patents of improvement, patents andcertificates of addition, etc.
_____________________________
PD1.4.0 This paragraph is not applicable to designs.
Article 2(1)
Nationals of any country of the Union shall, as regards the protection of industrial
property, enjoy in all the other countries of th e Union the advantages that their respective laws
now grant, or may hereafter grant, to national s; all without prejudice to the rights specially
provided for by this Convention. Consequently, they shall have the same protection as the latter,
and the same legal remedy against any infringement  of their rights, provided that the conditions
and formalities imposed upon nationals are complied with.
_____________________________IP/N/1/HKG/2/Add.1
Page 75
PD2.1.0 Hong Kong, China observes national treatment in the protection of registered design
rights.
Article 2(2)
However, no requirement as to domicile or establishment in the country where
protection is claimed may be imposed upon nation als ofcountries of the Union for the enjoyment
of any industrial property rights.
_____________________________
PD2.2.0 Hong Kong, China’s Registered Designs Ordinance does not impose domicile or
establishment conditions on the enjoyment of registered design rights.
Article 2(3)
The provisions of the laws of each of the co untries of the Union relating to judicial and
administrative procedure and to jurisdiction, and to the designation of an address for service or
the appointment of an agent, which may be required by the laws on industrial property are
expressly reserved.
_____________________________
PD2.3.0 Hong Kong, China’s Registered Designs Ordinance does not oblige an applicant for the
registration of a design to appoint an agent. However, if an applicant or registered design
owner does appoint an agent, under section 75(1) of the Registered Designs Ordinance
the agent can act in all respects on behalf of the applicant or proprietor. Under
section 75(4) of the Registered Designs Ordinance an agent must reside or have a place
of business in Hong Kong, China.
PD2.3.1 Under section 12(2)(e) of the Registered Designs Ordinance and sections 6(2)(e),
25(1)(e), 25(1)(f) and 65(1) of the Registered Designs Rules, an applicant for registration
of a design, a registered design owner, and any person concerned in any proceeding
under the Registered Designs Rules must have an address for service in Hong Kong,China.
Article 3
Nationals of countries outside the Union who are domiciled or who have real and
effective industrial or commercial establishments in the territory of one of the countries of the
Union shall be treated in the same manner as  nationals of the countries of the Union.
_____________________________
PD3.0 Hong Kong, China does not discriminate against nationals of countries outside the Union.
Registered design rights in Hong Kong, China are not dependant on reciprocity.
Article 4A(1)
Any person who has duly filed an application for a patent, or for the registration of a
utility model, or of an industrial design, or of a trademark, in one of the countries of the Union,
or his successor in title, shall enjoy, for the pur pose of filing in the other countries, a right of
priority during the periods hereinafter fixed.
_____________________________IP/N/1/HKG/2/Add.1
Page 76
PD4A.1.0 This Article is implemented by Section 15(1) of the Registered Designs Ordinance which
gives a person or his successor in title who has filed an application for registration of a
design in a Paris Convention country or WTO member territory a right of priority for the
purpose of registering the same design in respect of any or all of the same articles.
Article 4A(2)
Any filing that is equivalent to a regular na tional filing under the domestic legislation of
any country of the Union or under bilateral or mu ltilateral treaties concluded between countries
of the Union shall be recognized as giving rise to the right of priority.
_____________________________
PD4A.2.0 This Article is implemented by section 15(2) of the Registered Designs Ordinance. Any
filing which is equivalent to a regular national filing under the law of the Paris
Convention country or WTO member, or any bilateral or multilateral agreement to which
it is a party, is recognized as giving rise to a right of priority.
Article 4A(3)
By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent fate
of the application.
_____________________________
PD4A.3.0 This Article is implemented by Section 15(4) of the Registered Designs Ordinance which
defines ‘regular national filing’ as any filing that establishes the date on which the
application was filed, whatever the outcome of the application.
Article 4B
Consequently, any subsequent filing in any of the other countries of the Union before the
expiration of the periods referred to above shall not be invalidated by reason of any acts
accomplished in the interval, in particular, anot her filing, the publication or exploitation of the
invention, the putting on sale of copies of th e design, or the use of the mark, and such acts
cannot give rise to any third-party right or any right of personal possession. Rights acquired by
third parties before the date of the first applic ation that serves as the basis for the right of
priority are reserved in accordance with the dome stic legislation of each country of the Union.
_____________________________
PD4B.0 Under section 17(1) of the Registered Desi gns Ordinance, the right of priority has the
effect that the filing date of the previous application is regarded as being the filing date of
the application for registration for the purpose of determining whether the design is new.
Consequently, publication or exploitation of the design after the priority date cannot
affect the novelty of the design.
PD4B.1 Section 35 of the Registered Designs Or dinance preserves rights to use which began
before the filing date of an application for registration of a design.
Article 4C(1)
The periods of priority referred to above shall be twelve months for patents and utility
models, and six months for industrial designs and trademarks.
_____________________________IP/N/1/HKG/2/Add.1
Page 77
PD4C.1.0 Section 15(1) of the Registered Designs Ordi nance provides that the priority period is six
months.
Article 4C(2)
These periods shall start from the date of filin g of the first application; the day of filing
shall not be included in the period.
_____________________________
PD4C.2.0 Section 15(1) of the Registered Designs Or dinance provides that the priority period starts
after the filing date of the first application.
Article 4C(3)
If the last day of the period is an official holiday, or a day when the Office is not open for
the filing of applications in the country where pr otection is claimed, the period shall be extended
until the first following working day.
_____________________________
PD4C.3.0 Section 71(2) of the Registered Designs Ordinance provides that where the time for
doing anything under the Ordinance expires on a day which is not a business day, time is
extended to the next following business day.
Article 4C(4)
A subsequent application concerning the same subject as a previous first application
within the meaning of paragraph (2), above, file d in the same country of the Union, shall be
considered as the first application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application, the said previous
application has been withdrawn, abandoned, or refused, without having been laid open to
public inspection and without leaving any rights ou tstanding, and if it has not yet served as a
basis for claiming a right of priority. The prev ious application may not thereafter serve as a
basis for claiming a right of priority.
_____________________________
PD4C.4.0 Section 15(3) of the Registered Desi gns Ordinance provides that a subsequent
application for the registration of a design that was the subject of a previous application,
and that is filed in or in respect of the same Paris Convention country or WTO member,
shall be considered as the first application for the purpose of determining priority if, and
only if, on the filing date of the subsequent  application, the previous application has been
withdrawn, abandoned or refused, without being open to public inspection and without
leaving any rights outstanding, and has not served as a basis for claiming a right of
priority.
Article 4D(1)
Any person desiring to take advantage of the priority of a previous filing shall be
required to make a declaration indicating the date of such filing and the country in which it was
made. Each country shall determine the latest date on which such declaration must be made.
_____________________________
PD4D.1.0 This Article is implemented in sections 10 and 11(1) of the Registered Designs Rules,
which provides that where an applicant wishes to claim the priority of a previousIP/N/1/HKG/2/Add.1
Page 78
application, the application shall include a statement claiming priority and specifying the
date and country of the filing of the previous application.
Article 4D(2)
These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the pate nts and the specifications relating thereto.
_____________________________
PD4D.2.0 This Article is implemented by section 25(d) of the Registered Designs Ordinance. The
Registrar advertises the fact of the registration of the design in the Gazette published by
the Government of the Hong Kong Special Administrative Region. Under
section 27(1)(b) of the Registered Designs Rules, the advertisement of the registration ofa design published in the gazette contains, if priority is claimed, the priority date and the
name of the relevant Paris Convention country or WTO member.
Article 4D(3)
The countries of the Union may require any person making a declaration of priority to
produce a copy of the application (description, drawings, etc.) previously filed. The copy,
certified as correct by the authority which recei ved such application, shall not require any
authentication, and may in any case be filed, with out fee, at any time within three months of the
filing of the subsequent application. They may require it to be accompanied by a certificate
from the same authority showing the da te of filing, and by a translation.
_____________________________
PD4D.3.0 The first sentence of this paragraph is the basis for section 11(1) of the Registered
Designs Rules, which requires an application to include a statement of priority and acopy of the previous application.
PD4D.3.1 The second and third sentences of this paragraph are implemented in section 11(2) of the
Registered Designs Rules, which requires the filing of a certificate of a competent
authority of the relevant Paris Convention country or WTO member verifying thecountry, territory or area of filing of the previous application, the filing date of the
previous application and its filing number, the representation of the design and the
articles covered by the previous application. The certificate must be filed, at the latest,
within three months of the filing date of the subsequent application.
Article 4D(4)
No other formalities may be required for the d eclaration of priority at the time of filing
the application. Each country of the Union sh all determine the consequences of failure to
comply with the formalities prescribed by this Ar ticle, but such consequences shall in no case go
beyond the loss of the right of priority.
_____________________________
PD4D.4.0 The formalities for the declaration of prio rity are described in paragraphs PD4D.3.0 and
PD4D.3.1 above. No other formalities are requir ed for the declaration of priority at the
time of filing the application. The consequenc e of failure to comply with the formalities
of the Registered Designs Ordinance is the loss of the right of priority only (seesection 27(b) of the Registered Designs Ordinance).IP/N/1/HKG/2/Add.1
Page 79
Article 4D(5)
Subsequently, further proof may be required. Any person who avails himself of the
priority of a previous application shall be requi red to specify the number of that application;
this number shall be published as provided for by paragraph (2), above.
_____________________________
PD4D.5.0 Under section 11(2)(b) of the Registered Designs Rules, in addition to the statement of
priority and copy of the previous application, an applicant has to file a certificate issued
by a competent authority of the relevant Paris Convention country or WTO member
verifying to the Registrar’s satisfaction the filing date of the previous application and its
filing number. The filing number of the previous application appears by way of an entry
in the register of designs which is open to public inspection.
Article 4E(1)
Where an industrial design is filed in a country by virtue of a right of priority based on
the filing of a utility model, the period of priority shall be the same as that fixed for industrialdesigns.
_____________________________
PD4E.1.0 This Article is implemented by section 15 of the Registered Designs Ordinance. Priority
for an application for registration of a design in Hong Kong, China can be claimed fromany earlier application for registering the same design in or in respect of a Paris
Convention country or WTO member.
Article 5B
The protection of industrial designs shall not, under any circumstance, be subject to any
forfeiture, either by reason of failure to work  or by reason of the importation of articles
corresponding to those which are protected.
_____________________________
PD5B.0 There are no provisions under the Register ed Designs Ordinance or Rules providing for
forfeiture of registered designs.
Article 5D
No indication or mention of the patent, of the utility model, of the registration of the
trademark, or of the deposit of the industrial design, shall be required upon the goods as a
condition of recognition of the right to protection.
_____________________________
PD5D.0 No indication or mention of the registration of the industrial design on the goods is
required as a condition of the righ t to protection in Hong Kong, China.
Article 5bis (1)
A period of grace of not less than six months  shall be allowed for the payment of the fees
prescribed for the maintenance of industrial property rights, subject, if the domestic legislationso provides, to the payment of a surcharge.
_____________________________IP/N/1/HKG/2/Add.1
Page 80
PD5bis .1.0 This Article is implemented in section 28(5) of the Registered Designs Ordinance where
a grace period of six months is allowed for the payment of renewal fees.
Article 5quinquies
Industrial Designs shall be protected in all the countries of the Union.
_____________________________
PD5quinquies .0 Industrial designs are protected under the Registered Designs Ordinance and the
Copyright Ordinance in Hong Kong, China. Registered design protection and
copyright protection are concurrent. A regi stered design owner has protection under
copyright law for articles produced from his design drawings for 25 years from first
marketing of the article (see section 87 of the Copyright Ordinance).
Article 11(1)
The countries of the Union shall, in conformi ty with their domestic legislation, grant
temporary protection to patentable inventions, utility models, industrial designs , and
trademarks, in respect of goods exhibited at official or officially recognized international
exhibitions held in the territory of any of them.
_____________________________
PD11.1.0 This Article is implemented in section 9(2)  of the Registered Designs Ordinance, which
provides that an application for the registration of a design shall not be refused, and the
registration of a design shall not be invalidated by reason only that a representation of the
design, or any article to which the design has been applied, has been displayed at an
official international exhibition if the application for registration of the design is made
not later than six months after the opening of the exhibition.
PD11.1.1 “Official International Exhibition” mean s an official, or officially recognised,
international exhibition falling within the terms of the Convention on International
Exhibitions signed at Paris on 22 November 1928, and any protocols to that convention,
as revised or amended from time to time (see section 9(3) of the Registered DesignsOrdinance).
Article 11(2)
Such temporary protection shall not extend the periods provided by Article 4. If, later,
the right of priority is invoked, the authorities of any country may provide that the period shall
start from the date of introduction of the goods into the exhibition.
_____________________________
PD11.2.0 Temporary protection under Section 9(2) of  the Registered Designs Ordinance does not
extend the priority period under Section 15(1). The period of temporary protection under
Section 9(2) is six months from  the opening of the exhibition.
Article 11(3)
Each country may require, as proof of the identity of the article exhibited and of the
date of its introduction, such document ary evidence as it considers necessary.
_____________________________
PD11.3.0 This Article is implemented by section 9 of the Registered Designs Rules. An applicant
for the registration of a design must state in his application the name of the exhibitionIP/N/1/HKG/2/Add.1
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and the place where it was held, the opening date of the exhibition and if the disclosure
did not take place in the opening date of the exhibition, the date of such first disclosure.
An applicant may file documentary evidence in support of a claim that the disclosure of
the design relates to an official international exhibition but is not obliged to file
documentary evidence.
Article 12(1)
Each country of the Union undertakes to establish a special industrial property service
and a central office for the communication to the public of patents, utility models, industrial
designs, and trademarks.
_____________________________
PD12.1.0 The Designs Registry, established within the Intellectual Property Department of Hong
Kong, China, is responsible for the communication to the public of industrial designs
registered in Hong Kong, China.
Article 12(2)
This service shall publish an official period ical journal. It shall publish regularly:
(a) the names of the proprietors of patents granted, with a brief designation of the
inventions patented;
(b) the reproductions of registered trademarks.
_____________________________
PD12.2.0 Section 25(d) of the Registered Designs Ordi nance requires the Registrar to advertise the
registration of the design by notice in the Government Gazette, which is published
regularly by the Government of the Hong Kong Special Administrative Region. The
advertisement of the registration must contain the information prescribed by section 27
of the Registered Designs Rules. The advertised information includes the name of the
registered design owner, a representation of the design and particulars of the article orarticles in respect of which the design is registered.
Article 19
It is understood that the countries of the Union reserve the right to make separately
between themselves special agreements for the prot ection of industrial property, in so far as
these agreements do not contravene the provisions of this Convention.
_____________________________
PD19.0 Hong Kong, China has not separately ma de special agreements for the protection of
industrial property with any country.IP/N/1/HKG/2/Add.1
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TRIPS AGREEMENT
Section 5:  Patents4
Patentable Subject Matter
Article 27(1)
Subject to the provisions of paragraphs 2 and 3, patents shall be available for any
inventions, whether products or processes, in all fields of technology, provided that they are
new, involve an inventive step and are capable of industrial application. Subject to paragraph 4
of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall beavailable and patent rights enjoyable without disc rimination as to the place of invention, the
field of technology and whether products are imported or locally produced.
_____________________________
27.1.0 This Article is implemented by Section 93 of the Patents Ordinance, which provides that an
invention is patentable if it is new, involves an inventive step and is susceptible of industrial
application. A patent can be obtained for a product or a process without discrimination as to
the place of invention, the field of technology and whether products are imported or locally
produced. Section 93(2) and (3) list subject-matter not regarded as inventions.
Article 27(2)
Members may exclude from patentability in ventions, the prevention within their
territory of the commercial exploitation of which is necessary to protect ordre public or
morality, including to protect human, animal or plant life or health or to avoid serious prejudiceto the environment, provided that  such exclusion is not made merely because the exploitation is
prohibited by their law.
_____________________________
27.2.0 This Article is implemented by Section 93(5) of the Patents Ordinance, which provides that
inventions shall not be patentable if their publication or working would be contrary to public
order or morality, but the working of an invention is not to be deemed to be contrary to public
order or morality merely because it is prohibited by any law in force in Hong Kong, China.
Article 27(3)
Members may also exclude from patentability :
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;(b) Plants and animals other than micro-organisms, and essentially biological processes for
the production of plants or animals other than non-biological and microbiologicalprocesses. However, Members shall provide fo r the protection of plant varieties either
by patents or by an effective sui generis system or by any combination thereof. The
provisions of this subparagraph shall be reviewed four years after the date of entry into
force of the WTO Agreement.
_____________________________
                                                     
4 Unless otherwise stated, references to statutory provisions in this section are to provisions of the
Patents Ordinance.IP/N/1/HKG/2/Add.1
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27.3.0 Section 93(4) of the Patents Ordinance excludes from patentability a method for treatment of
the human or animal body by surgery or therapy and a diagnostic method practised on the
human or animal body. The section makes it clear that this exclusion does not apply to a
product and in particular a substance or composition for use in any such method.
27.3.1 Section 93(6) of the Patents Ordinance provides that a plant or animal variety or an essentially
biological process for the production of plants or animals (other than a microbiological
process or the products of such a process) shall not be patentable.
27.3.2 Hong Kong, China protects plant varieties by a sui generis system. The Plant Varieties
Protection Ordinance (Cap. 490) grants propriet ary rights to persons who breed or discover
plant varieties. The Ordinance provides for legal remedies against infringement. A plant
variety must be new, distinct, stable and homogeneous to have protection under theOrdinance.
Rights Conferred
Article 28(1)
A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the
owner’s consent from the acts of : making, using, offering for sale, selling, or importing
for these purposes that product;
(b) where the subject matter of a patent is a pr ocess, to prevent third parties not having the
owner’s consent from the act of using the process, and from the acts of : using, offeringfor sale, selling, or importing for these purpose s at least the product obtained directly by
that process.
_____________________________
28.1.0 Section 73(a) of the Patents Ordinance provides that the proprietor of a patent relating to a
product can prevent third parties (not having his consent) from making, putting on the market,
using, importing or stocking the product in Hong Kong, China.
28.1.1 Section 73(b) and (c) of the Patents Ordinance state the patent proprietor’s rights in relation to
a patent for a process and any product obtained from the process. The proprietor has the right
to prevent third parties from using the process, or offering the process for use in Hong Kong,
China. In relation to a product obtained directly from the process, the proprietor can preventthird parties from putting the product on the market, or from using, importing or stocking the
product (whether for the purpose of putting it on the market in Hong Kong, China or
elsewhere).
Article 28(2)
Patent owners shall also have the right to assign, or transfer by succession, the patent
and to conclude licensing contracts.
_____________________________
28.2.0 Section 50 of the Patents Ordinance provides that any patent or application for a patent is
personal property, and any patent or any such application and rights in or under it may be
transferred, created or granted in accordance with subsections (2) to (7).IP/N/1/HKG/2/Add.1
Page 84
28.2.1 There is no limitation on the transfer or assignment of rights, save that where two or more
persons are proprietors of a patent, a transfer or assignment requires the consent of the other
or others (subject to agreement of the parties) as provided by section 54 of the Patents
Ordinance.
28.2.2 Section 50(4) allows sub-licences and dealings in sub-licences.28.2.3 Section 50(6) requires certain transactions to be in writing and to be signed.
Conditions on Patent Applicants
Article 29(1)
Members shall require that an applicant for a patent shall disclose the invention in a
manner sufficiently clear and complete for the invention to be carried out by a person skilled in
the art and may require the applicant to indicate  the best mode for carrying out the invention
known to the inventor at the filing date or, where priority is claimed, at the priority date of theapplication.
_____________________________
29.1.0 Section 77 of the Patents Ordinance provides that the application for and specification of a
patent for an invention shall disclose the inve ntion to which it relates in a manner sufficiently
clear and complete for it to be performed by a person skilled in the art. Section 78 of the
Patents Ordinance requires that the claims shall define the matter for which protection is
given or sought, be clear and concise and be supported by the description.
29.1.1 Sections 58, 59 and 60 of the Patents (General) Rules prescribe in detail the format and
contents of the specification of the invention contained in an application for a short-term
patent.
29.1.2 Section 128 of the Patents Ordinance and section 73 and Schedule 1 of the Patents (General)
Rules prescribe the circumstances in which the specification of an application for a short-termpatent, or of a short-term patent, for an invention which requires for its performance the use
of a micro-organism, is to be treated as disclosing the invention in a manner sufficiently clear
and complete for the invention to be performed by a person skilled in the art.
Article 29(2)
Members may require an applicant for a patent to provide information concerning the
applicant’s corresponding foreign applications and grants.
_____________________________
29.2.0 The grant of a standard patent in Hong Kong, China is based on the registration of a patent
granted by one of three designated patent offices. The designated patent offices are the StateIntellectual Property Office of the People’s Republic of China, the European Patent Office in
respect of a patent designating the United Kingdom, and the United Kingdom Patent Office.
In this connection, sections 15, 16 and 24 of the Patents Ordinance require an applicant for a
standard patent to provide information concerning the corresponding application and grant in
the designated patent office.
29.2.1 An applicant who claims priority under the Paris Convention for the Protection of Industrial
Property or the WTO Agreement needs to provide details of the foreign application from
which priority is claimed. Section 15(2)(e) of the Patents Ordinance provides that an applicantIP/N/1/HKG/2/Add.1
Page 85
for a standard patent must state in his request to record whether priority has been claimed in
the designated patent application, and if so, the date of priority and the country in which the
earlier application was filed. Section 98 of the Patents Ordinance provides that the priority
enjoyed in a designated patent application under the law of the designated patent office shall
also be enjoyed in the application for a standard patent in Hong Kong, China.
29.2.2 Section 111 of the Patents Ordinance and section 69 of the Patents (General) Rules require
similar information to support a priority claim in an application for a short-term patent.
Exceptions to Rights Conferred
Article 30
Members may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking
account of the legitimate interests of third parties.
_____________________________
30.0 This Article is implemented by Section 75 of the Patents Ordinance which makes limited
exceptions to the exclusive rights conferred by a patent. The exceptions include acts done
privately for non-commercial purposes, acts done  for experimental purposes and the use of
inventions on board vessels and aircraft which enter Hong Kong, China.
Other Use Without Authorization of the Right Holder
Article 31 (a)
Where the law of a Member allows for other use of the subject matter of a patent
without the authorization of the right holder, including use by the government or third parties
authorized by the government, the foll owing provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
_____________________________
31.a.0 The Patents Ordinance allows the use of a patented product or process, without the
authorisation of the patent proprietor, under provisions relating to compulsory licences and
Government use. The effect of Government use of a patented invention is equivalent to acompulsory licence.
31.a.1 Section 64(2) of the Patents Ordinance allows the grant of a compulsory licence under a
standard patent on limited grounds where, for example, the patented invention is not being
commercially worked in Hong Kong, China; or where the demand for a particular product isnot being met, for example, by importation. Short-term patents are not subject to compulsory
licences.
31.a.2 Any person may apply to the court for a licence on the grounds specified in section 64(2) after
three years from the grant of a standard patent. The court must determine, in the particularcircumstances of an application, whether the grounds are established in ordering the grant of a
licence on such terms as it thinks fit.IP/N/1/HKG/2/Add.1
Page 86
31.a.3 Sections 68 and 69 of the Patents Ordinance allow Government use of a patented invention
during a period of extreme urgency declared by the Chief Executive in Council of the Hong
Kong Special Administrative Region. Government use may be made of an invention patented
under a standard or short-term patent.
31.a.4 Section 69(1) of the Patents Ordinance allows Government use of an invention in Hong Kong,
China only if it is necessary or expedient in connection with the urgency giving rise to the
declaration.
Article 31(b)
such use may only be permitted if, prior to such use, the proposed user has made efforts
to obtain authorization from the right holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of
time. This requirement may be waived by a Member in the case of a national emergency
or other circumstances of extreme urgency or in cases of public non-commercial use. In
situations of national emergency or other circumstances of extreme urgency, the right
holder shall, nevertheless, be notified as soon as reasonably practicable. In the case ofpublic non-commercial use, where the government or contractor, without making a
patent search, knows or has demonstrable grounds to know that a valid patent is or will
be used by or for the government, the right holder shall be informed promptly;
_____________________________
31.b.0 Section 64(5) of the Patents Ordinance states that no order for a compulsory licence can be
made unless the court is satisfied that the applicant for a licence has made reasonable efforts
to obtain authorisation from the standard patent proprietor on reasonable terms and conditions
and that such efforts have not been successful within a reasonable period of time.
31.b.1 In relation to Government use of an invention, section 69(7) of the Patents Ordinance requires
the public officer authorised by the Chief Executive to notify the patent proprietor as soon as
practicable of the use of the invention and to inform him of the extent of the use.
Article 31(c)
the scope and duration of such use shall be limited to the purpose for which it was
authorized, and in the case of semi-conductor technology shall only be for public non-
commercial use or to remedy a practice determined after judicial or administrative
process to be anti-competitive;
_____________________________
31.c.0 Section 64(3) of the Patents Ordinance provides that where there are grounds for ordering the
grant of a compulsory licence, the court may do so on such terms as it thinks fit. Under
section 64(7) of the Patents Ordinance, the order granting a licence must specify the scope
and duration of the licence.
31.c.1 Section 69(1) of the Patents Ordinance allows Government use of an invention in Hong Kong,
China only if it is necessary or expedient in connection with the urgency giving rise to the
declaration.
31.c.2 Section 69(4) of the Patents Ordinance provides that Government use shall be on terms
agreed, before or after the use, by the Government and the patent proprietor.
31.c.3 Under section 18 of the Layout-design (Topography) of Integrated Circuits Ordinance, the
Chief Executive in Council may by regulation declare a period of extreme urgency wheneverIP/N/1/HKG/2/Add.1
Page 87
he considers it necessary or expedient for securing sufficient supplies or maintenance of
supplies and services essential to the life of the community. During the period of extreme
urgency, a duly authorised public officer may without the consent of the owner do anything
for the purpose of acquiring protected layout-designs (topographies) for the non-exclusive use
of the Government for use in Hong Kong, China or dispose of the same.
Article 31(d)
such use shall be non-exclusive;
_____________________________
31.d.0 Section 64(7)(a) of the Patents Ordinance provides that a compulsory licence is non-
exclusive.
31.d.1 Government use under the Patents Ordinance is non-exclusive. This is clear from section 71
which acknowledges the existence of licences. In addition, nothing in the Patents Ordinance
prevents the proprietor from licensing his invention, or prevents an application being made
for a compulsory licence under Part  VIII of the Patents Ordinance.
Article 31(e)
such use shall be non-assignable, except with  that part of the enterprise or goodwill
which enjoys such use;
_____________________________
31.e.0 Section 64(7)(b) provides that a compulsory licence is non-assignable except with that part of
the enterprise or goodwill which enjoys the use of the patent under the licence.
31.e.1 Section 69(1) allows Government use of an invention to be made only by or with the
authority of a public officer authorised in  writing by the Chief Executive in Council. No
assignment of such a right is possible because of the restrictive nature of Government use.
Article 31(f)
any such use shall be authoriz ed predominantly for the supply of the domestic market of
the Member authorizing such use;
_____________________________
31.f.0 Under section 66(1)(a) of the Patents Ordinance, the powers of the court on an application for
a compulsory licence are to be exercised with a view to securing that inventions which can beworked on a commercial scale in Hong Kong, Ch ina and which should in the public interest
be so worked shall be worked there without undue delay and to the fullest extent that is
reasonably practicable.
31.f.1 Sections 68 and 69 of the Patents Ordinance allow for Government use of a patented
invention during a period of extreme urgency declared by the Chief Executive in Council of
the Hong Kong Special Administrative Region by regulation. A period of extreme urgency
may be declared only where it is necessary or expedient in the public interest for the
maintenance of supplies and services essential to the life of the community or for securing
sufficient supplies and services essential to the life of the community.
31.f.2 Section 69(1) of the Patents Ordinance allows Government use of an invention in Hong Kong,
China only if it is necessary or expedient in connection with the urgency giving rise to the
declaration.IP/N/1/HKG/2/Add.1
Page 88
Article 31(g)
authorization for such use shall be liable , subject to adequate protection of the
legitimate interests of the persons so auth orized, to be terminated if and when the
circumstances which led to it cease to exis t and are unlikely to recur. The competent
authority shall have the authority to revi ew, upon motivated requests, the continued
existence of these circumstances;
_____________________________
31.g.0 Section 66(3) of the Patents Ordinance provides that any person aggrieved by the grant of the
compulsory licence may apply to the court for an order for the variation or cancellation of the
licence if the court in all the circumstances should think fit.
31.g.1 In relation to Government use, under section 72(1) of the Patents Ordinance, any dispute as to
the exercise by a public officer, or a person authorised by a public officer of the powers to use
an invention, or any dispute as to the terms for Government use, or the right to compensation
may be referred to the court by either party to the dispute.
Article 31(h)
the right holder shall be paid adequate rem uneration in the circumstances of each case,
taking into account the economic value of the authorization;
_____________________________
31.h.0 Section 66(1)(b) of the Patents Ordinance provides that the grant of a compulsory licence is
subject to the inventor or other person beneficially entitled to a standard patent receiving
reasonable remuneration having regard to the nature of the invention.
31.h.1 A patent proprietor must be compensated for Government use under section 69(4) of the
Patents Ordinance, which states that any Government use of an invention shall be made on
such terms as may be agreed, either before or after the use, by the Government and the patent
proprietor or, in default of agreement, by the court. In addition, under section 71(1) of thePatents Ordinance, the Government is liable to pay compensation to a patent proprietor or an
exclusive licensee for loss resulting from a failure to secure a contract to supply the patented
product or to perform the patented process or supply a thing made by means of the patented
process.
Article 31(i)(j)
(i) the legal validity of any decision relating  to the authorization of such use shall be
subject to judicial review or other independent review by a distinct higher authority
in that Member;
(j) any decision relating to the remuneration  provided in respect of such use shall be
subject to judicial review or other independent review by a distinct higher authority
in that Member;
_____________________________
31.i.j.0 Under the Patents Ordinance, any decision to grant, vary or cancel a compulsory licence and
any decision concerning the remuneration of the patent proprietor under a compulsory licence
are to be made by the Court of First Instance in Hong Kong, China. Appeals from the Court
of First Instance are heard by the Court of Appeal. There is also the possibility of a final
appeal to the Court of Final Appeal.IP/N/1/HKG/2/Add.1
Page 89
31.i.j.1 In relation to Government use under section 72(1) of the Patents Ordinance, any dispute as to
the exercise by a public officer, or a person authorised by a public officer of the powers to use
an invention, or any dispute as to the terms for Government use, or the right to compensation
may be referred to the Court of First Instance. Appeals from the Court of First Instance are
heard by the Court of Appeal. There is also the possibility of a final appeal to the Court ofFinal Appeal.
Article 31(k)
Members are not obliged to apply the conditions set forth in sub-paragraphs (b) and (f)
where such use is permitted to remedy a practice determined after judicial or
administrative process to be anti-competitive. The need to correct anti-competitivepractices may be taken into account in determining the amount of remuneration in such
cases. Competent authorities shall have the authority to refuse termination of
authorization if and when the conditions which led to such authorization are likely to
recur;
_____________________________
31.k.0 Noted.
Article 31(l)
where such use is authorized to permit the exploitation of a patent (“the second patent”)
which cannot be exploited without infringing another patent (“the first patent”), the
following additional conditions shall apply:
(i) the invention claimed in the second pate nt involve an important technical advance
of considerable economic significance in rela tion to the invention claimed in the first
patent;
(ii) the owner of the first patent shall be en titled to a cross-licence on reasonable terms
to use the invention claimed in the second patent; and
(iii) the use authorized in re spect of the first patent shall be non-assignable except with
the assignment of the second patent.
_____________________________
31.l.0 In relation to compulsory licences, Article 31(l) is implemented in sections 64(2)(d)(i), 64(6)
and 64(7)(a)(b) of the Patents Ordinance.
31.l.1 In a period of extreme urgency where Gove rnment use might be made of an invention
claimed in a patent, the Government’s use would also effectively be in respect of the
invention claimed in any dependant patent. The proprietors of both patents would be entitled
to compensation under the Patents Ordinance.
Revocation/Forfeiture
Article 32
An opportunity for judicial review of any decision to revoke or forfeit a patent shall be
available.
_____________________________IP/N/1/HKG/2/Add.1
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32.0 Under section 130 of the Patents Ordinance, an appeal to the Court of First Instance lies from
any decision or order of the Registrar of Patents.  Appeals from the Court of First Instance are
heard by the Court of Appeal. There is also the possibility of a final appeal to the Court of
Final Appeal.
Term of Protection
Article 33
The term of protection available shall not end before the expiration of a period of twenty
years counted from the filing date.
_____________________________
33.0 Section 39(1)(b) of the Patents Ordinance provides that the term of a standard patent is twenty
years beginning with the date of filing of the designated patent application in the designated
patent office.
33.1 Under section 126(1)(b) of the Patents Ordinance, the term of the short-term patent is eight
years from the filing date. This type of patent caters for products and processes with a short
commercial life.
Process Patents : Burden of Proof
Article 34(1)
For the purposes of civil proceedings in respec t of the infringement of the rights of the
owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process
for obtaining a product, the judicial authorities shall have the authority to order the defendant
to prove that the process to obta in an identical product is diff erent from the patented process.
Therefore, Members shall provide, in at least one of the following circumstances, that any
identical product when produced without the consent of the patent  owner shall, in the absence
of proof to the contrary, be deemed to have been obtained by the patented process:
(a) if the product obtained by the patented process is new;(b) if there is a substantial likelihood that th e identical product was made by the process
and the owner of the patent has been unable through reasonable efforts to determine the
process actually used.
_____________________________
34.1.0 This Article is implemented by section 134(1) of the Patents Ordinance, which provides that
if the invention for which a patent is granted is a process for obtaining a new product, thesame product produced by a person other than the patent proprietor or licensee shall, unless
the contrary is proved, be taken in any proceedings to have been obtained by that process.
Article 34(2)
Any Member shall be free to provide that the burden of proof indicated in paragraph 1
shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled
or only if the condition referred to in subparagraph (b) is fulfilled.
_____________________________IP/N/1/HKG/2/Add.1
Page 91
34.2.0 This Article is implemented by section 134(1) of the Patents Ordinance.
Article 34(3)
In the adduction of proof to the contrary, the legitimate interests of defendants in
protecting their manufacturing and business secrets shall be taken into account.
_____________________________
34.3.0 This Article is implemented by section 134(2) of the Patents Ordinance, which provides that
in considering whether a party has discharged the burden imposed on him, the court shall not
require him to disclose any manufacturing or commercial secrets if it appears to the court that
it would be unreasonable to do so.IP/N/1/HKG/2/Add.1
Page 92
Paris Convention and Patents
The following deals with Hong Kong, China’s compliance with the Paris Convention in
respect of patents. Hence the prefix PP. Where a particular paragraph of the article refers to different
types of intellectual property rights, those parts of the article which concern patents are underlined.
Article 1(1)
The countries to which this Convention applies constitute a Union for the protection of
industrial property.
_____________________________
PP1.1.0 China has applied the Convention to Hong Kong, China since 1 July 1997.
Article 1(2)
The protection of industrial property has as its object patents, utility models, industrial
designs, trademarks, service marks, trade names, indications of source or appellations of origin,
and the repression of unfair competition.
_____________________________
PP1.2.0 Hong Kong, China provides for the protection of patents under the Patents Ordinance.
Article 1(3)
Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agri cultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle,minerals, mineral waters, beer, flowers, and flour.
_____________________________
PP1.3.0 Patents rights in Hong Kong, China are av ailable, without restriction, for products and
processes.
Article 1(4)
Patents shall include the various kinds of industrial patents recognized by the laws of
the countries of the Union, such as patents of importation, patents of improvement, patents and
certificates of addition, etc.
_____________________________
PP1.4.0 The Patents Ordinance does not exclude any type of patent from registration. To be
patentable, however, an invention must comply with Section 93 of the Patents Ordinance.
Article 2(1)
Nationals of any country of the Union shall, as regards the protection of industrial
property, enjoy in all the other countries of th e Union the advantages that their respective laws
now grant, or may hereafter grant, to national s; all without prejudice to the rights specially
provided for by this Convention. Consequently, they shall have the same protection as the latter,and the same legal remedy against any infringement  of their rights, provided that the conditions
and formalities imposed upon nationals are complied with.
_____________________________IP/N/1/HKG/2/Add.1
Page 93
PP2.1.0 Hong Kong, China observes national treatment in the protection of patent rights.
Article 2(2)
However, no requirement as to domicile or establishment in the country where
protection is claimed may be imposed upon nationals of countries of the Union for theenjoyment of any industrial property rights.
_____________________________
PP2.2.0 The Patents Ordinance does not impose domicile or establishment conditions to the
enjoyment of patent rights.
Article 2(3)
The provisions of the laws of each of the co untries of the Union relating to judicial and
administrative procedure and to jurisdiction, and to the designation of an address for service or
the appointment of an agent, which may be required by the laws on industrial property are
expressly reserved.
_____________________________
PP2.3.0 Hong Kong, China’s Patents Ordinance does not oblige an applicant for a patent or a
patent proprietor to appoint an agent. However, if an applicant or patent proprietor does
appoint an agent, under Section 140(1) of the Ordinance, the agent can act in all respects
on behalf of the applicant or patent proprietor. Under section 140(4), an agent must
reside or have a place of business in Hong Kong, China. Under section 15(2)(g) and
section 113(2)(d) of the Ordinance and section 42(1) of the Patents (General) Rules, an
applicant for a patent or patent proprietor must have an address for service in Hong
Kong, China.
Article 3
Nationals of countries outside the Union who are domiciled or who have real and
effective industrial or commercial establishments in the territory of one of the countries of theUnion shall be treated in the same manner as  nationals of the countries of the Union.
_____________________________
PP3.0 Hong Kong, China does not discriminate against nationals of countries outside the Union.
Patent rights in Hong Kong, China are not dependant on reciprocity.
Article 4A(1)
Any person who has duly filed an application for a patent, or for the registration of a
utility model, or of an industrial design, or of a trademark, in one of the countries of the Union,
or his successor in title, shall enjoy, for the pur pose of filing in the other countries, a right of
priority during the periods hereinafter fixed.
_____________________________
PP4A.1.0 The Patents Ordinance provides for the grant of standard patents in Hong Kong, China
based on patents granted by designated patent offices. The designated patent offices are
the State Intellectual Property Office of the People’s Republic of China, the EuropeanPatent Office (in respect of patents granted under European Patent Convention
designating the United Kingdom) and the United Kingdom Patent Office. The Patents
Ordinance also provides for the grant of short-term patents in Hong Kong, China.IP/N/1/HKG/2/Add.1
Page 94
PP4A.1.1 Under Section 98 of the Patents Ordinance,  an applicant for a standard patent in Hong
Kong, China enjoys the same right of priority in respect of his application as he, or his
predecessor in title, enjoys in the designat ed patent office, provided that priority is
claimed under the law of the designated patent office on the basis of an earlier
application filed in a country, territory or area which is a party to the Paris Convention,
or member of the WTO, or party to any other international agreement which is applied toHong Kong, China.
PP4A.1.2 In relation to short-term patents, this Article is implemented by section 110(1) of the
Patents Ordinance.
Article 4A(2)
Any filing that is equivalent to a regular na tional filing under the domestic legislation of
any country of the Union or under bilateral or mu ltilateral treaties concluded between countries
of the Union shall be recognized as giving rise to the right of priority.
_____________________________
PP4A.2.0 In relation to standard patents, this Article is implemented in section 98(4)(a) of the
Patents Ordinance which states that a filing in a Paris Convention country that is
equivalent to a regular national filing under the domestic legislation of that country or
under bilateral or multilateral agreements gives rise to a right of priority.
PP4A.2.1 In relation to short-term patents, this Article is implemented in section 110(2)(a) of the
Patents Ordinance which states that every filing which in a Paris Convention country (or
WTO member country, territory or area) is equivalent to a regular national filing under
its domestic legislation or under bilateral or multilateral agreements shall be recognised
as giving rise to a right of priority.
Article 4A(3)
By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent fate
of the application.
_____________________________
PP4A.3.0 In relation to standard patents, the claim to priority on the basis of a regular national
filing is provided for under the law of the designated patent office.
PP4A.3.1 In relation to short-term patents, this Article is implemented in Section 110(2) of the
Patents Ordinance which defines ‘regular national filing’ as any filing that establishes the
date on which the application was filed, whatever may be the outcome of the application.
Article 4B
Consequently, any subsequent filing in any of the other countries of the Union before the
expiration of the periods referred to above shall not be invalidated by reason of any acts
accomplished in the interval, in particular, anot her filing, the publication or exploitation of the
invention, the putting on sale of copies of th e design, or the use of the mark, and such acts
cannot give rise to any third-party right or any right of personal possession. Rights acquired by
third parties before the date of the first applic ation that serves as the basis for the right of
priority are reserved in accordance with the dome stic legislation of each country of the Union.
_____________________________IP/N/1/HKG/2/Add.1
Page 95
PP4B.0 In relation to standard patents, this Article is implemented in Section 99(2) of the Patents
Ordinance which states that a patent is not invalidated by disclosure after the filing date
of the application from which priority is claimed, and by Section 83 of the Ordinance
which preserves rights to use an invention which began before a patent’s priority date.
PP4B.1 In relation to short-term patents, this Article is implemented in Section 112(2) of the
Patents Ordinance which states that a patent is not invalidated by disclosure after the
filing date of the application from which priority is claimed, and by Section 83 of the
Ordinance which preserves rights to use an invention which began before a patent’s
priority date.
Article 4C(1)
The periods of priority referred to above shall be twelve months for patents and utility
models, and six months for industrial designs and trademarks.
_____________________________
PP4C.1.0 In relation to standard patents, this Article is implemented in section 98(1) of the Patents
Ordinance which provides a tw elve month’s priority period.
PP4C.1.1 In relation to short-term patents, this Article is implemented in section 110(1) of the
Ordinance which provides a tw elve month’s priority period.
Article 4C(2)
These periods shall start from the date of filin g of the first application; the day of filing
shall not be included in the period.
_____________________________
PP4C.2.0 In relation to standard patents, this Article is implemented in section 98(1) of the Patents
Ordinance which provides that the priority period starts after the date of filing of the
earlier application.
PP4C.2.1 In relation to short-term patents, this Article is implemented in section 110(1) of the
Ordinance which provides that the priority period starts after the date of filing of the first
application.
Article 4C(3)
If the last day of the period is an official holiday, or a day when the Office is not open for
the filing of applications in the country where pr otection is claimed, the period shall be extended
until the first following working day.
_____________________________
PP4C.3.0 This Article is implemented in section 148(2) of the Patents Ordinance which states that
where time for doing anything under the Ordinance expires on a day which is not a
registry business day, time is extended to the next business day.
Article 4C(4)
A subsequent application concerning the same subject as a previous first application
within the meaning of paragraph (2), above, f iled in the same country of the Union shall be
considered as the first application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application, the said previousIP/N/1/HKG/2/Add.1
Page 96
application has been withdrawn, abandoned, or refused, without having been laid open to
public inspection and without leaving any rights ou tstanding, and if it has not yet served as a
basis for claiming a right of priority. The prev ious application may not thereafter serve as a
basis for claiming a right of priority.
_____________________________
PP4C.4.0 In relation to standard patents, this Article is implemented in section 98(4)(b) of the
Patents Ordinance which provides that a subsequent application for a patent for the same
subject-matter as a previous first application and filed in or in respect of the same Paris
Convention country is to be considered as the first application for the purposes of
determining priority.
PP4C.4.1 In relation to short-term patents, this Article is implemented in section 110(2)(b), (c) of
the Patents Ordinance which provides that a subsequent application for the same subject
matter shall be considered as the first application for the purposes of determining
priority, if at the date of filing the subsequent application the previous application has
been withdrawn, abandoned or refused, without being open to public inspection and
without leaving any rights outstanding, and has not served as a basis for claiming a rightof priority.
Article 4D(1)
Any person desiring to take advantage of the priority of a previous filing shall be
required to make a declaration indicating the date of such filing and the country in which it was
made. Each country shall determine the latest date on which such declaration must be made.
_____________________________
PP4D.1.0 In relation to standard patents, this Article is implemented in section 15(2)(e) of the
Patents Ordinance which provides that every request to record to be filed with the
Registrar shall contain a statement indicating whether or not priority is claimed under
section 98 in respect of a right of priority enjoyed in the designated patent office on the
basis of an earlier application. Where the statement indicates that priority is so claimed,
the applicant must state the name of the country where the priority application was filedand the date of priority claimed.
PP4D.1.1 In relation to short-term patents, this Article is implemented in section 69 of the Patents
(General) Rules, which provides that where an applicant wishes to claim the priority of a
previous application, a statement of priority shall be made at the time of filing the
application and shall state the date of filing and the application number of any
application specified in the statement and the country, territory or area in or for which theapplication was made.
Article 4D(2)
These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the pate nts and the specifications relating thereto.
_____________________________
PP4D.2.0 In relation to standard patents, the Registrar publishes the request to record and
advertises the fact of such publication in the gazette under section 20(1) of the PatentsOrdinance. The required particulars concerning the right of priority are stated in the
gazette advertisement.IP/N/1/HKG/2/Add.1
Page 97
PP4D.2.1 In relation to short-term patents, under section 118 of the Ordinance, the Registrar
publishes the grant of the short-term patent by advertisement in the gazette and the
required particulars concerning the right of priority are stated in the advertisement.
Article 4D(3)
The countries of the Union may require any person making a declaration of priority to
produce a copy of the application (description, drawings, etc.) previously filed. The copy,
certified as correct by the authority which recei ved such application, shall not require any
authentication, and may in any case be filed, with out fee, at any time within three months of the
filing of the subsequent application. They may require it to be accompanied by a certificate
from the same authority showing the da te of filing, and by a translation.
_____________________________
PP4D.3.0 In relation to standard patents, section 23(3)(c) of the Patents Ordinance allows the
Registrar to require a claim to priority to be supported by copies of the documents filed
in the designated patent office. However, the Registrar has not made rules requiring
supporting documents and the Registrar’s practice is not to require supportingdocuments.
PP4D.3.1 For short-term patents, please see 111(1) of the Ordinance and section 69(3) and (4) of
the Patents (General) Rules which require the applicant to produce a verified copy of the
previous application, a certificate issued by the authority receiving the application and atranslation if the previous application is not in Chinese or English (the official languages
in Hong Kong, China).
PP4D.3.2 Under section 68(1) of the Patents (Gener al) Rules, additional time is available to an
applicant to file a verified copy of the previous application and a translation. TheRegistrar shall specify a period of not less than three months from the date of filing of the
subsequent application within which the applicant may remedy the failure to file.
Article 4D(4)
No other formalities may be required for the d eclaration of priority at the time of filing
the application. Each country of the Union sh all determine the consequences of failure to
comply with the formalities prescribed by this Ar ticle, but such consequences shall in no case go
beyond the loss of the right of priority.
_____________________________
PP4D.4.0 Under the Patents Ordinance the formalitie s required for the declaration of priority are
stated in paragraphs PP4D.3.0 and PP4D.3.1 above. No other formalities are required for
the declaration of priority at the time of filing the application.
PP4D.4.1 In relation to standard patents, under section 19(4) of the Patents Ordinance, failure to
correct a deficiency relating solely to a claim to any right of priority results in a loss of
priority for the application.
PP4D.4.2 In relation to short-term patents, under section 115(4) of the Ordinance, failure to correct
a deficiency relating solely to a claim to any right of priority results in a loss of priority
for the application.IP/N/1/HKG/2/Add.1
Page 98
Article 4D(5)
Subsequently, further proof may be required. Any person who avails himself of the
priority of a previous application shall be requi red to specify the number of that application;
this number shall be published as provided for by paragraph (2), above.
_____________________________
PP4D.5.0 No further proof is required for the claim of priority for a standard patent.PP4D.5.1 For short-term patents, under section 69(1) of the Patents (General) Rules, apart from the
date of filing and the country in which the earlier application was made, the statement of
priority must also state the application number of any application specified in the
statement. This number will be published in the gazette together with the other requiredparticulars concerning the claim of priority.
Article 4E(1)
PP4E.1.0 Article 4E(1) relates to industrial designs.
Article 4E(2)
Furthermore, it is permissible to file a utility model in a country by virtue of a right of
priority based on the filing of a patent application, and vice versa.
_____________________________
PP4E.2.0 Hong Kong, China has two kinds of patents registration under the Patents Ordinance : the
standard patent and the short-term patent. In the case of a standard patent, the question of
priority would be determined by the practice of the designated patent office (see reply toArticle 4I, page 131 post). In the case of an application for a short-term patent in Hong
Kong, China, priority would be determined in accordance with Section 110(1)(a) of the
Patents Ordinance. It is not a bar to claim priority for a short-term patent or standard
patent if the Convention priority was based on an utility model.
Article 4F
No country of the Union may refuse a priority or a patent application on the ground
that the applicant claims multiple priorities, even  if they originate in different countries, or on
the ground that an application claiming one or more priorities contains one or more elements
that were not included in the application or applications whose priority is claimed, provided
that, in both cases, there is unity of inventio n within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose
priority is claimed, the filing of the subsequent application shall give rise to a right of priority
under ordinary conditions.
_____________________________
PP4F.0 Under section 98(4)(c) of the Patents Ordinance, multiple priorities may be claimed in
respect of a designated patent application on which a standard patent application is based.
PP4F.1 For short-term patents, this Article is implemented in section 111(2) to (4) of the
Ordinance.IP/N/1/HKG/2/Add.1
Page 99
Article 4G
(1) If the examination reveals that an application for a patent contains more than one
invention, the applicant may divide the appl ication into a certain number of divisional
applications and preserve as the date of each the date of the initial application and the
benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve
as the date of each divisional application the date of the initial application and the
benefit of the right of priority, if any. Each  country of the Union shall have the right to
determine the conditions under which such division shall be authorized.
_____________________________
PP4G.0 Section 22 of the Patents Ordinance provides for request to record in the event of a
divisional designated patent application. Where a request to record a divisional
designated patent application is filed under section 22, it is deemed to have been filed on
the date of filing of the earlier request to re cord and the application for a standard patent
has the benefit of any right of priority.
PP4G.1 Divisional short-term patent applications are provided for under section 116 of the
Patents Ordinance and section 74 of the Patents (General) Rules. The divisional short-
term application is treated as having been filed on the date of filing of the earlier short-
term patent application and has the benefit of any right of priority.
Article 4H
Priority may not be refused on the ground that certain elements of the invention for
which priority is claimed do not appear among the claims formulated in the application in thecountry of origin, provided that the application documents as a whole specifically disclose such
elements.
_____________________________
PP4H.0 In relation to standard patents, the claim to priority is provided for under the law of the
designated patent office.
PP4H.1 In respect of short-term patents, this Article is implemented in section 111(5) of the
Patents Ordinance which states that if certain elements of the invention for which priority
is claimed do not appear among the claims formulated in the previous application,
priority may nonetheless be granted if the documents of the previous application as a
whole specifically disclosed such elements.
Article 4I
I. (1) Applications for inventors’ certificates filed in a country in which applicants have
the right to apply at their own option either for a patent or for an inventor’scertificate shall give rise to the right of priority provided for by this Article, under
the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either
for a patent or for an inventor’s certi ficate, an applican t for an inventor’s
certificate shall, in accordance with the prov isions of this Article relating to patent
applications, enjoy a right of priority based on an application for a patent, a utility
model, or an inventor’s certificate.
_____________________________IP/N/1/HKG/2/Add.1
Page 100
PP4I.0 Section 98(1) of the Patents Ordinance accords priority for standard patents on the basis
of an earlier application in a Paris Convention Country for a patent or other protection.
PP4I.1 Section 110(1) of the Ordinance accords priority for short-term patents on the basis of an
earlier application in a Paris Convention Country for a patent or other protection.
Article 4bis
(1) Patents applied for in the various countries of the Union by nationals of countries of the
Union shall be independent of patents obtained for the same invention in other
countries, whether members of the Union or not.
(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the
sense that patents applied for during the period of priority are independent, both as
regards the grounds for nullity and forfeiture, and as regards their normal duration.
(3) The provision shall apply to all patents exis ting at the time when it comes into effect.
(4) Similarly, it shall apply, in the case of the accession of new countries, to patents in
existence on either side at the time of accession.
(5) Patents obtained with the benefit of priority shall, in the various countries of the Union,
have a duration equal to that which they would have, had they been applied for or
granted without the benefit of priority.
_____________________________
PP4bis.0 With the exception of post-grant opposition and revocation proceedings conducted in the
European Patent Office, or in the State Intellectual Property Office of the Peoples’
Republic of China, a standard patent, once granted in Hong Kong, China, has an
existence independent of the corresponding patent granted by the designated patent
office.
PP4bis.1 Section 36 of the Patents (General) Rules prescribes the post-grant opposition and
revocation proceedings in the EPO and the State Intellectual Property Office of the
Peoples’ Republic of China affecting the standard patent. Under section 43 of the Patents
Ordinance, where the corresponding designated patent is amended in the designated
patent office after the prescribed opposition or revocation proceedings, the standard
patent is treated as having been similarly amended. Under section 44 of the Ordinance,
where the corresponding designated patent has been revoked in the designated patentoffice after the prescribed opposition or revocation proceedings, the standard patent, by
order of the Registrar or the court, is treated as never having had effect. Under section 44
of the Ordinance, revocation is by order, it is not automatic.
PP4
bis.2 The validity of the short term patent is open to challenge in the courts of Hong Kong,
China only. A short-term patent can be revoked on the grounds in section 91 of the
Patent Ordinance.
PP4bis.3 Under section 39(1) of the Patents Ordinance the term of a standard patent is twenty
years, whether or not priority is accorded to the application. Under Section 126, the termof a short-term patent is 8 years beginning with the date of filing the application for the
patent.IP/N/1/HKG/2/Add.1
Page 101
Article 4ter
The inventor shall have the right to be mentioned as such in the patent.
_____________________________
PP4ter.0 This Article is implemented in section 45 of the Patents Ordinance, which provides that
the inventor or joint inventor of an invention has the right to be mentioned in any patent
granted.
PP4ter.1 In relation to standard patents, section 15(2)(b) of the Ordinance requires an applicant to
include in the application a statement identify ing the person the applicant believes to be
the inventor where the designated patent application does not contain the inventor’s
name. Under section 38 of the Patents (General) Rules a person claiming to be theinventor or a joint inventor can apply to the Registrar for a finding that he is entitled to
be mentioned in the patent.
PP4
ter.2 In relation to short-term patents, section 113(2)(b) of the Ordinance requires the
applicant to identify in the application the person or persons he believes to be theinventor or inventors and to specify the last known address of that person or persons.
Under section 38 of the Patents (General) Rules a person claiming to be the inventor or a
joint inventor can apply to the Registrar for a finding that he is entitled to be mentioned
in the patent.
Article 4
quater
The grant of a patent shall not be refused a nd a patent shall not be invalidated on the
ground that the sale of the patented product or of a product obtained by means of a patented
process is subject to restrictions or limi tations resulting from the domestic law.
_____________________________
PP4quater.0 No standard or short-term patent can be refused or invalidated on such grounds.
Article 5A(1)
Importation by the patentee into the country where the patent has been granted of
articles manufactured in any of the countries of the Union shall not entail forfeiture of the
patent.
_____________________________
PP5A.1.0 The Patents Ordinance contains no provisions for forfeiture on such grounds.
Article 5A(2)
Each country of the Union shall have the righ t to take legislative measures providing for
the grant of compulsory licenses to prevent th e abuses which might result from the exercise of
the exclusive rights conferred by the patent, for example, failure to work.
_____________________________
PP5A.2.0 The Patents Ordinance contains detailed provisions for compulsory licensing of standard
patents (sections 64 -67). The grounds on which a compulsory license can be granted arestated in section 64(2) of the Ordinance and include the situation where a patented
invention capable of being worked commercially in Hong Kong, China is not so worked,
or is not worked to the fullest extent which is reasonably practicable.IP/N/1/HKG/2/Add.1
Page 102
PP5A.2.1 The Patents Ordinance does not permit compulsory licensing of short-term patents.
Article 5A(3)
Forfeiture of the patent shall not be prov ided for except in ca ses where the grant of
compulsory licenses would not have been sufficie nt to prevent the said abuses. No proceedings
for the forfeiture or revocation of a patent may be instituted before the expiration of two years
from the grant of the first compulsory license.
_____________________________
PP5A.3.0 The Patents Ordinance allows the grant of a compulsory licence on the ground of failure
to work the standard patent. There are no provisions allowing forfeiture or revocation.
Article 5A(4)
A compulsory license may not be applied for on the ground of failure to work or
insufficient working before the expiration of a peri od of four years from the date of filing of the
patent application or three years from the date of the grant of the patent, whichever periodexpires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a
compulsory license shall be non-exclusive and shal l not be transferable, even in the form of the
grant of a sub-license, except with that part of the enterprise or goodwill which exploits such
license.
_____________________________
PP5A.4.0 Under section 64(1) of the Patents Ordinance, any person can apply to the court for a
compulsory licence after three years from the grant of a standard patent.
PP5A.4.1 Under section 66(2)(a) the court must take account of the measures already taken by the
proprietor or licensee to make full use of th e invention in determining whether to make
an order for a compulsory licence. The court must also take account of what is
reasonably practicable in working an invention (sections 64(2)(a), 64(4) of the Patents
Ordinance).
PP5A.4.2 Under section 64(7) of the Ordinance a compulsory licence is non-exclusive and non-
assignable except with that part of the enterp rise or goodwill which enjoys the use of the
patent under the licence.
Article 5A(5)
The foregoing provisions shall be applicable, mutatis mutandis , to utility models.
_____________________________
PP5A.5.0 Protection may be obtained under Hong Kong, China’s short-term patent system for
subject matter protected elsewhere as a utility model, provided the subject matter is an
invention and is novel and inventive. The term of a short-term patent is eight years. Ashort-term patent is not subject to a compulsory licence.
Article 5D
No indication or mention of the patent, of the utility model, of the registration of the
trademark, or of the deposit of the industrial design, shall be required upon the goods as a
condition of recognition of the right to protection.
_____________________________IP/N/1/HKG/2/Add.1
Page 103
PP5D.0 The Patents Ordinance imposes no requirement that there should be indication or
mention of the patent on the goods as a condition of the right to protection.
Article 5bis(1)
A period of grace of not less than six months  shall be allowed for the payment of the fees
prescribed for the maintenance of industrial property rights, subject, if the domestic legislation
so provides, to the payment of a surcharge.
_____________________________
PP5bis.1.0 For standard patents, this Article is implemented in section 39(4) of the Patents
Ordinance.
PP5bis.1.1 For short-term patents, this Article is implemented in section 126(5) of the Patents
Ordinance.
Article 5bis(2)
The countries of the Union shall have the righ t to provide for the restoration of patents
which have lapsed by reason of non-payment of fees.
_____________________________
PP5bis.2.0 As regards standard patents, this Article is implemented by section 40 of the Patents
Ordinance which allows an application for restoration to be made within 18 months after
lapse.
PP5bis.2.1 For short-term patents, this Article is implemented by section 127 and section 40 of the
Patents Ordinance.
Article 5ter
In any country of the Union the following shall not be considered as infringements of the
rights of a patentee:
1. the use on board vessels of other countries of the Union of devices forming the
subject of his patent in the body of the vessel, in the machinery, tackle, gear and
other accessories, when such vessels temporarily or accidentally enter the waters of
the said country, provided that such devi ces are used there exclusively for the needs
of the vessel;
2. the use of devices forming the subject of the patent in the construction or operation
of aircraft or land vehicles of other countries of the Union, or of accessories of such
aircraft or land vehicles, when those aircraft or land vehicles temporarily or
accidentally enter the said country.
_____________________________
PP5ter.0 These exceptions to infringement are implemented by section 75(d) and (e) of the Patents
Ordinance.
Article 5quater
When a product is imported into a country of the Union where there exists a patent
protecting a process of manufacture of the said product, the patentee shall have all the rights,IP/N/1/HKG/2/Add.1
Page 104
with regard to the imported product, that are ac corded to him by the legislation of the country
of importation, on the basis of the process patent , with respect to products manufactured in that
country.
_____________________________
PP5quater.0 Section 73(c) of the Patents Ordinance implements this article.
[Articles 6 to 10 have no bearing on patents]
Article 11(1)
The countries of the Union shall, in conformi ty with their domestic legislation, grant
temporary protection to patentable inventions, utility models, industrial designs, and
trademarks, in respect of goods exhibited at official or officially recognized international
exhibitions held in the territory of any of them.
_____________________________
PP11.1.0 For standard patents, this Article is implemented by section 95(1)(b) of the Patents
Ordinance and section 55 of the Patents (General) Rules. A disclosure of the invention
shall not be taken into consideration if it occurred no earlier than six months before the
deemed date of filing of the application and if it was due to, or in consequence of the fact
that the applicant or any proprietor of the invention for the time being has displayed the
invention at a prescribed exhibition or meeting. The prescribed exhibitions are set out insection 55 of the Patents (General) Rules.
PP11.1.1 For short-term patents, this Article is implemented in section 109 of the Ordinance. A
disclosure of the invention shall not be taken into consideration if it occurred no earlier
than six months before the filing of the short-term patent application and if it was due to,or in consequence of the fact that the applicant or his legal predecessor has displayed the
invention at an official, or officially recognised, international exhibition falling within
the terms of the Convention on International Exhibitions signed at Paris on
22 November 1928 as applicable to Hong Kong, China.
Article 11(2)
Such temporary protection shall not extend the periods provided by Article 4. If, later,
the right of priority is invoked, the authorities of any country may provide that the period shall
start from the date of introduction of the goods into the exhibition.
_____________________________
PP11.2.0 Under the Patents Ordinance the period of temporary protection is six months which does
not extend the period of twelve months stipulated by Article 4.
PP11.2.1 Hong Kong, China has not provided that the period of priority under Article 4 may,
without being extended, be counted as starting from the date of introduction of the goodsinto the exhibition.
Article 11(3)
Each country may require, as proof of the identity of the article exhibited and of the
date of its introduction, such document ary evidence as it considers necessary.
_____________________________IP/N/1/HKG/2/Add.1
Page 105
PP11.3.0 In relation to standard patents, section 15(2)(f) requires an applicant to state whether non-
prejudicial disclosure was claimed at the time of filing the designated patent application.
Section 10 of the Patents (General) Rules requires details of the previous disclosure of
the invention in the exhibition or meeting to be provided. The name and place of the
exhibition, the opening date of the exhibition and the date of first disclosure must be
provided. No documentary evidence is required.
PP11.3.1 In relation to short-term patents, section 109(b) requires an applicant to state, if
appropriate, that the invention has been displayed at an official or officially recognised
international exhibition. Under section 70 of the Patents (General) Rules documentary
evidence, which consists of a certificate issued by the competent authority responsible
for holding the exhibition, is required.
Article 12(1)
Each country of the Union undertakes to establish a special industrial property service
and a central office for the communication to the public of patents, utility models, industrial
designs, and trademarks.
_____________________________
PP12.1.0 The Patents Registry, established within the Intellectual Property Department of Hong
Kong, China, is responsible for the communication to the public of patents in respect of
Hong Kong, China.
Article 12(2)
This service shall publish an official period ical journal. It shall publish regularly:
(a) the names of the proprietors of patents granted, with a brief designation of the
inventions patented;
(b) the reproductions of registered trademarks.
_____________________________
PP12.2.0 In relation to granted standard patents, section 27(3) of the Patents Ordinance requires
the Registrar to publish the patent specification, the name of the proprietor and, if
different, the inventor. Publication must be made as soon as practicable after a standard
patent has been granted. Publication is in the gazette which is published regularly by the
Government of the Hong Kong Special Administrative Region.
PP12.2.1 In relation to short-term patents, section 118(2) of the Patents Ordinance requires the
Registrar to publish the patent specification, the name of the proprietor and, if different,
the inventor. Publication must be made as soon as practicable after a short-term patent
has been granted. Publication is in the gazette which is published regularly by the
Government of the Hong Kong Special Administrative Region.
Article 19
It is understood that the countries of the Union reserve the right to make separately
between themselves special agreements for the prot ection of industrial property, in so far as
these agreements do not contravene the provisions of this Convention.
_____________________________
PP19.0 Noted.IP/N/1/HKG/2/Add.1
Page 106
TRIPS AGREEMENT
Section 6 : Layout-Designs (Topog raphies) of Integrated Circuits5
Article 35
Members agree to provide protection to the layout-designs (topographies) of integrated
circuits (referred to in this Agreement as “la yout-designs”) in accordance with Articles 2
through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the
Treaty on Intellectual Property in Respect of Integrated Circuits and, in addition, to comply
with the following provisions.
_____________________________
35.0 This is implemented through the Layout-Design (Topography) of Integrated Circuits
Ordinance (“LDIO”).
Article 36
Subject to the provisions of paragraph 1 of Article 37, Members shall consider unlawful
the following acts if performed without the authorization of the right holder: importing, selling,
or otherwise distributing for commercial purposes a protected layout-design, an integrated
circuit in which a protected layout-design is in corporated, or an article incorporating such an
integrated circuit only in so far as it continues to contain an unlawfully reproduced layout-
design.
_____________________________
36.0 The scheme of the LDIO is to provide a “qualifi ed owner” with the exclusive right, in respect
of his protected layout-design (topography), to do the “acts” set forth in section 4(1)(a) and
4(1)(b), which rights are infringed by any one else doing them (section 4(2)). The acts so
protected are to reproduce, whether by incorporation into an integrated circuit or otherwise,
all or part of his protected layout-design (topography); or to commercially exploit his
protected layout-design (topography), or an integrated circuit in which his protected layout-design (topography) is incorporated, or an article that contains an integrated circuit in which
his protected layout-design (topography) is incorporated. Section 5(a) exempts from
infringement, reproduction or commercial exploitation done with the qualified owner’s
consent.
36.1 The expression “commercially exploit” is defined in section 2(1) as including, by way of
trade, to sell, let for hire or otherwise dispose of; to offer or expose for sale or hire orotherwise offer to dispose of or expose for the purpose of disposing of; or to import for the
purposes of sale, letting for hire or other disposition.
36.2 The expression “qualified owner” is defined in section 2. Such a person is synonymous with a
rights holder.
                                                     
5 Unless otherwise stated, references in this section to statutory provisions are to provisions in the
Layout-Design (Topography) of Integrated Circuits Ordinance ("LDIO").IP/N/1/HKG/2/Add.1
Page 107
Article 37(1)
Notwithstanding Article 36, no Member shall consider unlawful the performance of any
of the acts referred to in that Article in re spect of an integrated circuit incorporating an
unlawfully reproduced layout-design or any arti cle incorporating such an integrated circuit
where the person performing or ordering such acts did not know and had no reasonable groundto know, when acquiring the integrated circuit  or article incorporating such an integrated
circuit, that it incorporated an unlawfully reproduced layout-design. Members shall provide
that, after the time that such person has receiv ed sufficient notice that the layout-design was
unlawfully reproduced, that person may perform an y of the acts with respect to the stock on
hand or ordered before such time, but shall be li able to pay to the right holder a sum equivalent
to a reasonable royalty such as would be payable under a freely negotiated license in
respect of such a layout-design.
_____________________________
37.1.0 The first sentence of Article 37 is implemented by providing a defence, in section 10 of the
LDIO, in proceedings to enforce a qualified  owner’s rights, for a person who commercially
exploits a protected layout-design (topography), etc., to prove that he did not know, and had
no reasonable grounds to know, when he acquired the protected layout-design (topography)
etc., that it was protected.
37.1.1 The second sentence is implemented in section 10(2) and (3) of the LDIO.
Article 37(2)
The conditions set out in subparagraphs (a) through (k) of Article 31 shall apply mutatis
mutandis in the event of any non-voluntary licensing of a layout-design or of its use by or for the
government without the authorization of the right holder.
_____________________________
37.2.0 The condition precedent for any use of a protected layout-design (topography) by or for the
Government, without the authorisation of the right holder, is the declaration of a period of
“extreme urgency” as defined in section 18 of the LDIO.
37.2.1 The provisions of subparagraphs (a) through (k) of Article 31 are respected in sections 20
to 23 inclusive of the LDIO.
Article 38(1)
In Members requiring registration as a condition of protection, the term of protection of
layout-designs shall not end before the expiration of a period of 10 years counted from the date
of filing an application for registration or fr om the first commercial exploitation wherever in
the world it occurs.
_____________________________
38.1.0 Hong Kong, China does not require registration as a condition precedent to protection.
Article 38(2)
In Members not requiring registration as a condition for protection, layout-designs shall
be protected for a term of no less than 10 years from the date of the first commercial
exploitation wherever in the world it occurs.
_____________________________IP/N/1/HKG/2/Add.1
Page 108
38.2.0 This Article is implemented by section 6 of the LDIO, which provides that protection ceases
10 years after the end of the year in which it was first commercially exploited, with the
qualified owner’s consent; or where not so commercially exploited, within 15 years after the
year in which it was created.
Article 38(3)
Notwithstanding paragraphs 1 and 2, a Member may provide that protection shall lapse
15 years after the creation of the layout-design.
_____________________________
38.3.0 See paragraph 38.2.0.IP/N/1/HKG/2/Add.1
Page 109
Treaty on Intellectual Property in Respect of
Integrated Circuits (1989)
The following deals with Hong Kong, China’s compliance with the Treaty on Intellectual
Property in Respect of Integrated Circuits (1989). Hence the prefix T.
Article 2
For the purposes of this Treaty:
(i) “integrated circuit” means a product, in its final form or an intermediate form, in which
the elements, at least one of which is an active element, and some or all of the
interconnections are integrally formed in and/or on a piece of material and which is
intended to perform an electronic function,
(ii) “layout-design (topography)” means the three-dimensional disposition, however
expressed, of the elements, at least one of which is an active element, and of some or all
of the interconnections of an integrated ci rcuit, or such a three-dimensional disposition
prepared for an integrated circuit intended for manufacture,
(iii) “holder of the right” means the natural pers on who, or the legal  entity which, according
to the applicable law, is to be regarded as the beneficiary of the protection referred to in
Article 6,
(iv) “protected layout-design (topography)” means a layout-design (topography) in respect
of which the conditions of protection refe rred to in this Treaty are fulfilled,
(v) “Contracting Party” means a State, or an  Intergovernmental Organization meeting the
requirements of item (x), party to this Treaty,
(vi) “territory of a Contracting Party” means, where the Contracting Party is a State, the
territory of that State and, where the Contracting Party is an Intergovernmental
Organization, the territory in which the cons tituting treaty of that Intergovernmental
Organization applies,
(vii) “Union” means the Union referred to in Article 1,(viii) “Assembly” means the Assembly referred to in Article 9,(ix) “Director General” means the Director General of the World Intellectual Property
Organization,
(x) “Intergovernmental Organization” means an  organization constituted by, and composed
of, States of any region of the world, which has competence in respect of matters
governed by this Treaty, has its own legislation providing for intellectual propertyprotection in respect of layout-designs (topographies) and binding on all its member
States, and has been duly authorized, in accord ance with its internal  procedures, to sign,
ratify, accept, approve or accede to this Treaty.
_____________________________
T2.0 The definitions contained in Article 2 in respect of (i), (ii) and (iv) are found in section 2 of
the Layout-Design (Topography) of Integrated Circuits Ordinance (“LDIO”). The expression
“qualified person” is used in place of “holder of the right” in (iii), but otherwise the terms are
synonymous.IP/N/1/HKG/2/Add.1
Page 110
Article 3(1)
(a) Each Contracting Party shall have the obli gation to secure, throughout its territory,
intellectual property protection in resp ect of layout-designs (topographies) in
accordance with this Treaty. It  shall, in particular, secure adequate measures to ensure
the prevention of acts considered unlawful under Article 6 and appropriate legal
remedies where such acts have been committed.
(b) The right of the holder of the right in resp ect of an integrated circuit applies whether or
not the integrated circuit is incorporated in an article.
(c) Notwithstanding Article 2(i), any Contract ing Party whose law limits the protection of
layout-designs (topographies) to layout-designs (topographies) of semiconductor
integrated circuits shall be free to apply that limitation as long as its law contains such
limitation.
_____________________________
T3.1.0 Section 4 of the LDIO defines the protection, or the exclusive rights of the qualified person in
respect of his protected layout-design (topography). They apply whether or not the integrated
circuit is incorporated in an article.
T3.1.1 The appropriate remedies referred to in Article 3(1) are to be found in sections 7 to 9 and
section 17 of the LDIO.
T3.1.2 Hong Kong, China does not limit the protection of layout-design (topography) to
semiconductors.
Article 3(2)
(a) The obligation referred to in paragraph (1) (a) shall apply to layout-designs
(topographies) that are original in the sense that they are the result of their creators’
own intellectual effort and are not commonplace among creators of layout-designs(topographies) and manufacturers of integrated circuits at the time of their creation.
(b) A layout-design (topography) that consists of a combination of elements and
interconnections that are commonplace shall be protected only if the combination, taken
as a whole, fulfills the conditions referred to in subparagraph (a).
_____________________________
T3.2.0 Article 3(2) is implemented in section 3(1) of the LDIO.
Article 4
Each Contracting Party shall be free to implement its obligations under this Treaty
through a special law on layout-designs (topographi es) or its law on copyright, patents, utility
models, industrial designs, unfair competition or any other law or a combination of any of those
laws.
_____________________________
T4.0 Hong Kong, China has enacted specific legislation in its Layout-design (Topography) of
Integrated Circuits Ordinance (Cap. 445).IP/N/1/HKG/2/Add.1
Page 111
Article 5(1)
Subject to compliance with its obligation referred to Article 3(1) (a), each Contracting
Party shall, in respect of the intellectual pr operty protection of layout-designs (topographies),
accord, within its territory,
(i) to natural persons who are nationals of , or are domiciled in the territory of, any of the
other Contracting Parties, and
(ii) to legal entities which or natural persons who, in the territory of any of the other
Contracting Parties, have a real and effect ive establishment for the creation of layout-
designs (topographies) or the production of integrated circuits, the same treatment that
it accords to its own nationals.
_____________________________
T5.1.0 Article 5(1) is implemented in section 2 of the LDIO, which defines “qualified person”, and
section 24 which defines qualifying countries. These are listed in the Layout-design
(Topography) of Integrated Circuits (Designation of Qualifying Countries, Territories orAreas) Regulations.
Article 5(2)
Notwithstanding paragraph (1), any Contracting Party is free not to apply national
treatment as far as any obligations to appoint an agent or to designate an address for service are
concerned or as far as the special rules appl icable to foreigners in court proceedings are
concerned.
_____________________________
T5.2.0 No special provisions have been enacted pursuant to this Article. Rules of civil procedure
cover issues such as addresses for service.
Article 5(3)
Where the Contracting party is an Inter governmental Organization, “nationals” in
paragraph (1) means nationals of any of the States members of that Organization.
_____________________________
T5.3.0 This Article is not applicable to Hong Kong, China.
Article 6(1)
(a) Any contracting party shall consider unlawful the following acts if performed without
the authorization of the holder of the right:
(i) the act of reproducing, whether by inco rporation in an integrated circuit or
otherwise, a protected layout-design (topograp hy) in its entirety or any part thereof,
except the act of reproducing any part that  does not comply with the requirement of
originality referred to in article 3(2),
(ii) the act of importing, selling or otherw ise distributing for commercial purposes a
protected layout-design (topography) or an integrated circuit in which a protected
layout-design (topography) is incorporated.IP/N/1/HKG/2/Add.1
Page 112
(b) Any Contracting Party shall be free to cons ider unlawful also acts other than those
specified in subparagraph (a) if performed without the authorization of the holder of the
right.
_____________________________
T6.1.0 The act of reproduction is made unlawful by section 4(1)(a) of the LDIO and the acts referred
to in (ii), by section 4(1)(b) of the LDIO.
Article 6(2)
(a) Notwithstanding paragraph (1), no Contracting Party shall consider unlawful the
performance, without the authorization of  the holder of the right, of the act of
reproduction referred to in paragraph (1) (a)(i) where that act is performed by a third
party for private purposes or for the sole purpose of evaluation, analysis, research or
teaching.
(b) Where the third party referred to in subparagraph (a), on the basis of evaluation or
analysis of the protected layout-design  (topography) (“the first layout-design
(topography)”), creates a layout-design (top ography) complying with the requirement of
originality referred to in Article 3(2) (“ the second layout-design (topography)”), that
third party may incorporate the second layo ut-design (topography) in an integrated
circuit or perform any of the acts referred to  in paragraphs (1) in respect of the second
layout-design (topography) without being regarde d as infringing the rights of the holder
of the right in the first layout-design (topography).
(c) The holder of the right may not exercise his right in respect of an identical original
layout-design (topography) that was independently created by a third party.
_____________________________
T6.2.0 The provisions of Article 6(2)(a) are implemented in section 5 (b) and (c) of the LDIO.T6.2.1 The provisions of Article 6(2)(b) are implemented in section 5(d) of the LDIO.
T6.2.2 The provisions of Article 6(2)(c) are implemented in section 3(3) and section 5(e) of the
LDIO.
Article 6(4)
Notwithstanding paragraph (1) (a)(ii), no Contracting party shall be obliged to consider
unlawful the performance of any of the acts refe rred to in that paragraph in respect of an
integrated circuit incorporating an unlawfu lly reproduced layout-design (topography) where
the person performing or ordering such acts did not know and had no reasonable ground to
know, when acquiring the said integrated circuit,  that it incorporates an unlawfully reproduced
layout-design (topography).
_____________________________
T6.4.0 Article 6(4) is implemented in section 10 of the LDIO.
Article 6(5)
Notwithstanding paragraph (1) (a)(ii), any contracting Party may consider lawful the
performance, without the authorization of the hold er of the right, of any of the acts referred to
in that paragraph where the act is perfor med in respect of a protected layout-design
(topography), or in respect of an integrated ci rcuit in which such a layout-design (topography)IP/N/1/HKG/2/Add.1
Page 113
so incorporated, that has been put on the market by, or with the consent of, the holder of the
right.
_____________________________
T6.5.0 Article 6(5) is implemented in section 5(f) of the LDIO.
Article 7(1)
Any Contracting Party shall be free not to protect a layout-design (topography) until it
has been ordinarily commercially exploited, se parately or as incorporated in an integrated
circuit, somewhere in the world.
_____________________________
T7.1.0 Hong Kong, China has imposed no condition of commercial exploitation before protection is
given. To qualify for protection, the layout-design (topography) must be recorded in a
documentary form or incorporated into an in tegrated circuit (section 3(4) of the LDIO).
Article 7(2)
(a) Any contracting party shall be free not to protect a layout-design (topography) until the
layout-design (topography) has been the subject of an application for registration, filed
in due form with the competent public au thority, or of a registration with that
authority; it may be required that the applic ation be accompanied by the filing of a copy
or drawing of the layout-design (topography ) and, where the integrated circuit has been
commercially exploited, of a sample of that integrated the integrated circuit is intended
to perform; however, the applicant may exclude such parts of the copy or drawing that
relate to the manner of manufacture of the integrated circuit, provided that the parts
submitted are sufficient to allow the identi fication of the layout-design (topography).
(b) Where the filing of an application for registration according to subparagraph (a) is
required, the Contracting Party may required that such filing be effected within a
certain period of time form the date on which the holder of the right first exploits
ordinarily commercially anywhere in the world the layout-design(topography) of anintegrated circuit; such period shall not be  less than two years counted form the said
date.
(c) Registration under subparagraph (a) may be subject to the payment of a fee.
_____________________________
T7.2.0 Hong Kong, China does not require the formality of registration.
Article 12
This Treaty shall not affect the obligation that any Contracting party may have under
the Paris Convention for the Protection of Industrial Property or the Berne Convention for the
Protection of Literary and Artistic Works.
_____________________________
T12.0 Noted.IP/N/1/HKG/2/Add.1
Page 114
Article 16(3)
Any contracting party shall have the right no t to apply this Treaty to any layout-design
(topography) that exists at the time this Treaty enters into force in resp ect of that Contracting
Party, provided that this provision does not affect any protection that such layout-design
(topography) may, at that time, enjoy in the territory of that Contracting party by virtue ofinternational obligations other than  those resulting from this Treaty or the legislation of the said
Contracting Party.
_____________________________
T16.3.0 Article 16(3) is implemented in section 3(2) of the LDIO.IP/N/1/HKG/2/Add.1
Page 115
TRIPS AGREEMENT
Section 7:  Protection of Undisclosed Information
Article 39(1)
In the course of ensuring effective protecti on against unfair competition as provided in
Article 10 bis of the Paris Convention (1967), Members shall protect undisclosed information in
accordance with paragraph 2 and data submitted to governments or governmental agencies
in accordance with paragraph 3.
_____________________________
39.1.0 See commentary on Articles 39(2) and (3).
Article 39(2)
Natural and legal persons shall have the possibility of preventing information lawfully
within their control from being disclosed to, acquired by, or used by others without their
consent in a manner contrary to honest commercial practices so long as such information:
(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly
of its components, generally known among or readily accessible to persons within the
circles that normally deal with the kind of information in question;
(b) has commercial value because it is secret; and(c) has been subject to reasonable steps under the circumstances, by the person lawfully in
control of the information, to keep it secret.
_____________________________
39.2.0 There is no restriction placed, in any of the common law actions available for the protection
of undisclosed information, that the plaintiff must be a natural person, thus the protection isequally available to other legal entities.
39.2.1 The principal civil remedies available for unauthorized disclosure of information are the
actions for breach of contract (where the facts permit) and breach of confidence. In respect of
the latter action, this is not limited to cases where the parties are in a contractual relationship
(Saltman Engineering v Campbell Engineering (1948) 65 RPC 203); nor does it depend on
the finding of an implied contract. ( Seagar v Copydex (No.1 ) [1967] 2 All ER 415.)
39.2.2 The leading case on breach of confidence, which is good law in Hong Kong, China, is Coco v
A.N. Clark (Engineers) Ltd. [1969] RPC 41. That case is authority for the proposition that if
the plaintiff establishes that the information in question has the quality of confidentiality; was
imparted in circumstances importing an oblig ation of confidence; and was used without
authority, then the plaintiff is entitled to relief.
39.2.3 The law does not distinguish between different types of information, thus technological
secrets, test data, commercial records and personal information are equally protected.
Although information in the public domain is not generally regarded as secret, something that
has been constructed solely from such material may be held to be confidential if there has
been a sufficient application of thought, selection and application, ( Saltman, ibid ) particularly
if this information, obtained  in confidence, is used for activities detrimental to the personIP/N/1/HKG/2/Add.1
Page 116
providing it (Terrapin Ltd. v Builders’ Supply Co (Hayes) Ltd. [1967] RPC 375 otherwise
known as the “springboard effect”).
39.2.4 There is no binding obligation of confidence if the person in lawful control thereof, imparts it
in circumstances where no reasonable person would realise it was imparted in confidence.
Examples of a person failing to keep the informa tion secret would be imparting it in public, or
allowing others to access it at will. The obligation of confidence binds not only the recipient
but also third parties who receive that information in the knowledge that it is imparted to them
in breach of confidence ( Prince Albert v Strange (1849) 64 E.R. 293).
39.2.5 In Hong Kong, China the principle has been extended to information not only imparted in
confidence, but also to information improperly taken. ( Linda Chiu Ling Koo & another v Lam
Tai Hing (1993) 23IPR 607).
39.2.6 Criminal sanctions for theft of the undisclosed information, where it takes a physical form,
may also be available along with the tort of trespass. Specific legislation is also provided in
the Telecommunications Ordinance (Cap.106) for unauthorized access to, inter alia , data
stored on a computer by means of telecomm unication (“hacking”); and under the Crimes
Ordinance (Cap.200) section 161 for accessing a computer with criminal intent. The section
defines loss or gain in such a way that it would cover assimilation of information as well as
the theft thereof.
39.2.7 Section 17(2) of the Trade Descriptions Ordinance (Cap. 362) makes it an offence for any
person who discloses to any other person any information with respect to any manufacturing
process or trade secret obtained by him in any premises which he has entered by virtue of the
powers of entry contained in that ordinance or any other information obtained by him in
pursuance of the ordinance.
39.2.8 The law does not require the information to have commercial value.
39.2.9 Remedies available include injunctions, both interlocutory and permanent, damages, account
of profits and delivery up or destruction on oath.
Article 39(3)
Members, when requiring, as a condition of approving the marketing of pharmaceutical
or of agricultural chemical products which ut ilize new chemical entities, the submission of
undisclosed test or other data, the origination of which involves a considerable effort, shall
protect such data against disclosure, except wh ere necessary to protect the public, or unless
steps are taken to ensure that the data a re protected against unfair commercial use.
_____________________________
39.3.0 The approval of pharmaceutical products falls under the responsibility of the Department of
Health (Pharmacy and Poisons Ordinance (Cap. 138)). The approval of agricultural chemical
products falls under the responsibility of the Department of Agriculture, Fisheries andConservation (Pesticides Ordinance (Cap.133)).
39.3.1 Both departments invariably apply the principle that undisclosed test or other data submitted
to them are kept confidential indefinitely; will be viewed by a limited number of Government
officers on a need-to-know basis for approval; will never be used in other approvalapplications without express authority and will never be disclosed to the public.IP/N/1/HKG/2/Add.1
Page 117
TRIPS AGREEMENT
Section 8:  Control of Anti-Competitive Practices in Contractual
Licences
Article 40(1)
Members agree that some licensing practices or conditions pertaining to intellectual
property rights which restrain competition may have adverse effects on trade and may impede
the transfer and dissemination of technology.
_____________________________
40.1.0 Noted.
Article 40(2)
Nothing in this Agreement shall prevent Memb ers from specifying in their legislation
licensing practices or conditions that may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition in the relevant market. As provided
above, a Member may adopt, consistently with  the other provisions of this Agreement,
appropriate measures to prevent or control such practices, which may include for example
exclusive grant back conditions, conditions preventing challenges to validity and coercivepackage licensing, in the ligh t of the relevant laws and regulations of that Member.
_____________________________
40.2.0 Provisions have been enacted in the Patents Ordinance (Cap. 514) to render unenforceable
any contractual provision which would deprive an employee rights to his invention. Theseprovisions are to be found in Part VI of the Patents Ordinance.
40.2.1 Provisions have also been enacted in the Patents Ordinance for the avoidance of certain
restrictive terms or conditions in any contract for the supply of a patented product or of a
license to work a patented invention. These provisions can be found in Part VII of the PatentsOrdinance.
40.2.2 Provisions for the compulsory licensing of unworked patented products, three years after
grant, have been enacted for standard patents. The provisions may be found in Part VIII of the
Patents Ordinance.
40.2.3 Hong Kong, China also has the Unconscionab le Contracts Ordinance (Cap.458) dealing with
contracts for the sale of goods or supply of services in which one of the parties deals as a
consumer. The court may find the contract, or any part of the contract, unconscionable. The
court may refuse to enforce the contract, or enforce only part of the contract which is not
unconscionable. The Ordinance has a very wide ambit and applies to all kinds of contracts,
including contracts dealing with intellectual property elements.
Article 40(3)
Each Member shall enter, upon request, in to consultations with any other Member
which has cause to believe that an intellectua l property right owner that is a national or
domiciliary of the Member to which the reque st for consultations has been addressed is
undertaking practices in violation of the reque sting Member’s laws and regulations on the
subject matter of this Section, and which wish es to secure compliance with such legislation,
without prejudice to any action under the law and to the full freedom of an ultimate decision ofIP/N/1/HKG/2/Add.1
Page 118
either Member. The Member addressed shall accord  full and sympathetic consideration to, and
shall afford adequate opportunity for, consul tations with the requesting Member, and shall
cooperate through supply of publicly available non- confidential information of relevance to the
matter in question and of other information available to the Member, subject to domestic law
and to the conclusion of mutually satisfactory  agreements concerning with safeguarding of its
confidentiality by the requesting Member.
_____________________________
40.3.0 Hong Kong, China stands ready to enter into such consultations as appropriate.
Article 40(4)
A Member whose nationals or domiciliaries are subject to proceedings in another
Member concerning alleged violation of that other Member’s laws and regulations on the
subject matter of this Section shall, upon request, be granted an opportunity for consultations
by the other Member under the same condit ions as those foreseen in paragraph 3.
_____________________________
40.4.0 Noted.IP/N/1/HKG/2/Add.1
Page 119
TRIPS AGREEMENT
PART III
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
Section 1:  General Obligations
Article 41(1)
Members shall ensure that enforcement pro cedures as specified in this Part are
available under their law so as to permit effective action against any act of infringement ofintellectual property rights covered by this Agreement, including expeditious remedies to
prevent infringements and remedies which cons titute a deterrent to further infringements.
These procedures shall be applied in such a manner as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against their abuse.
_____________________________
41.1.0 Each of the intellectual property ordinances in force in Hong Kong, China make provision for
effective action against infringement, remedies to prevent infringement and remedies which
constitute a deterrent to further infringement. The detailed provisions governing the
enforcement procedures are to be found in the High Court Ordinance (Cap. 4); the DistrictCourt Ordinance (Cap. 336); the High Court Rule s; and the Hong Kong Court of Final Appeal
Ordinance (Cap. 484).
41.1.1 The empowering provisions of the Copyright Ordinance are sections 107 and 112.
41.1.2 The empowering provisions in the Trade Marks Ordinance are sections 27, 27A, 28, 28A, 36,
and 59.
41.1.3 Geographic indications are protected as detail ed in the commentary on Articles 22 through 24
hereof (pages 63-69).
41.1.4 The empowering provisions of the Registered  Designs Ordinance are sections 48, 49 and 50.
41.1.5 The empowering provisions of the Patents Ordinance are sections 80, 85 and 86.41.1.6 The empowering provisions of the Layout -Design (Topography) of Integrated Circuits
Ordinance are sections 7 and 16.
41.1.7 Undisclosed information is protected as detailed in the commentary on Article 39 (pages 115
and 116).
41.1.8 Control of anti-competitive practices in contractual licenses in respect of intellectual property
rights are protected as detailed in the commentary on Article 40 (pages 117 and 118).
41.1.9 The empowering provisions of the Plant Varieties Protection Ordinance are sections 25
and 27.
41.1.10 All the aforementioned procedures are judicial rather than administrative. They are already
applied in such a manner as to avoid the creation of barriers to legitimate trade or to provide
safeguards against their abuse.IP/N/1/HKG/2/Add.1
Page 120
Article 41(2)
Procedures concerning the enforcement of inte llectual property rights shall be fair and
equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-
limits or unwarranted delays.
_____________________________
41.2.0 The procedures available for the enforcement of intellectual property rights have developed
under the common law system of jurisprudence over a number of centuries, evolving into
rules and remedies which are fair and equitable, not unnecessarily complicated or costly, nor
do they entail unreasonable time-limits or unwarranted delays.
Article 41(3)
Decisions on the merits of a case shall prefer ably be in writing and reasoned. They shall
be made available at least to the parties to the proceeding without undue delay. Decisions on the
merits of a case shall be based only on evid ence in respect of which parties were offered the
opportunity to be heard.
_____________________________
41.3.0 Almost without exception, decisions on the merits of a case are recorded in writing by the
judicial officer and are available to the interested parties. Decisions considered by the editors
of law reports to be of importance and general significance are published and are available toany member of the public. Judicial officers take an oath of office to apply the law judicially,
which includes the duty to base decisions only on the evidence in respect of which parties are
offered the opportunity to be heard.
Article 41 (4)
Parties to a proceeding shall have an opportunity for review by a judicial authority of
final administrative decisions and, subject to jurisdictional provisions in a Member’s law
concerning the importance of a case, of at least th e legal aspects of initial judicial decisions on
the merits of a case. However, there shall be no  obligation to provide an opportunity for review
of acquittals in criminal cases.
_____________________________
41.4.0 A right of appeal to the Court of First Instance  from decisions of the Registrar of Trade Marks
is provided in the High Court Rules Order 100, rule 2. There is also the power to seek a
judicial review in the Court of First Instance of any decision made by a public officer
pursuant to section 21K of the High Court Ordina nce. A right of appeal to the Court of First
Instance also is given against any decision of the Registrar under the Registered Designs
Ordinance (section 58(1)). A similar right of appeal is also given under the Patents Ordinance
(section 130).
41.4.1 The Court of Appeal can hear appeals from the District Court and the Court of First Instance.
They are by way of a rehearing although it is also possible to appeal only a specified part of a
judgement or order (Order 59 rule 3, High C ourt Rules). The Court of Final Appeal will hear
appeals as of right when any judgement of the Court of Appeal involves a sum of
HK$1,000,000 or more. Otherwise it must first be satisfied that the question involved is one
of great general or public importance (Court of Final Appeal Ordinance section 22).
41.4.2 There is no provision to review an acquittal in a criminal case which affects the outcome
against the defendant.IP/N/1/HKG/2/Add.1
Page 121
Article 41 (5)
It is understood that this Part does not create any obligation to put in place a judicial
system for the enforcement of intellectual property  rights distinct from that for the enforcement
of law in general, nor does it affect the capa city of Members to enforce their law in general.
Nothing in this Part creates any obligation with  respect to the distribution of resources as
between enforcement of intellectual property rights and the enforcement of law in general.
_____________________________
41.5.0 No separate judicial system exists for intellectual property enforcement cases.IP/N/1/HKG/2/Add.1
Page 122
TRIPS AGREEMENT
Section 2:  Civil and Administrative Procedures and Remedies
Article 42
Members shall make available to right holders civil judicial procedures concerning the
enforcement of any intellectual property right covered by this Agreement. Defendants shall
have the right to written notice which is timely and contains sufficient detail, including the basis
of the claims. Parties shall be allowed to be  represented by independent legal counsel, and
procedures shall not impose overly burdensome requirements concerning mandatory personal
appearances. All parties to such procedures shall be duly entitled to substantiate their claimsand to present all relevant evidence. The pro cedure shall provide a means to identify and
protect confidential information, unless this would be contrary to existing constitutional
requirement.
_____________________________
42.0 With respect to the first sentence of this Article, see paragraph 41.1.0 (page 119). See also the
answer to question 2 in the Checklist of Issues on Enforcement.
42.1 Nothing in the legislation would prevent a “right holder” from being a federation or an
association having legal standing to hold such rights, in the case of rights created byregistration, or from asserting those rights. In copyright, it would be unusual for such bodies
to be the first owner of copyright as they are unl ikely to be the author, but they may assert the
rights on behalf of the owner or after assignment of the right to them.
42.2 With respect to the second sentence, all actions for enforcement must be commenced by
notice of motion or originating summons supported by a statement of claim. Even when
proceedings commence by way of an application for an interlocutory injunction, a date is
provided for the defendant to apply for the variation or discharge of any injunction granted.
This is usually set for 2 or 3 days later. See detailed commentary in the Checklist of Issues on
Enforcement, answer to question 12.
42.3 With respect to the third sentence, please see answer to question 2 in the Checklist of Issues
on Enforcement.
42.4 With respect to the fourth sentence, this is a fundamental right in any system of law based on
the adversarial system and is fully implem ented in the courts of Hong Kong, China.
42.5 With respect to the final sentence, see the answ er to question 4 in the Checklist of Issues on
Enforcement.
Article 43 (1)
The judicial authorities shall have the authority, where a party has presented
reasonably available evidence sufficient to support  its claims and has specified evidence relevant
to substantiation of its claims which lies in the control of the opposing party, to order that this
evidence be produced by the opposing party, s ubject in appropriate cases to conditions which
ensure the protection of confidential information.
_____________________________
43.1.0 In respect to this paragraph, see the commenta ry in answer to question 3 in the Checklist of
Issues on Enforcement. In addition to the disc overy process, there is also the interrogatoryIP/N/1/HKG/2/Add.1
Page 123
process pursuant to Order 26 of the High Court Rules. For a commentary on the protection of
confidential information, see the answer to question 4 in the Checklist of Issues on
Enforcement.
Article 43 (2)
In cases in which a party to a proceeding voluntarily and without good reason refuses
access to, or otherwise does not provide necessary information within a reasonable period, or
significantly impedes a procedure relating to an enforcement action, a Member may accord
judicial authorities the authority to make preliminary and final determinations, affirmative or
negative, on the basis of the information pres ented to them, including the complaint or the
allegation presented by the party adversely affected by the denial of access to information,
subject to providing the parties an opportunity to be heard on the allegations or evidence.
_____________________________
43.2.0 In the event of a party refusing, unreasonably, to provide access to, or otherwise not providing
necessary information within a reasonable period, the court may order that the action be
dismissed or the defence be struck out and j udgement be entered (Order 24 rule 16(1), High
Court Rules) The party in default is also liable for committal as a contempt of court (Order 24
rule 16(2)).
Article 44 (1)
The judicial authorities shall have the authority to order a party to desist from an
infringement, inter alia to prevent the entry into the channe ls of commerce in their jurisdiction
of imported goods that involve the infringement of an intellectual property right, immediately
after customs clearance of such goods. Members  are not obliged to accord such authority in
respect of protected subject matter acquired or ordered by a person prior to knowing or havingreasonable grounds to know that dealing in such subject matter would entail the infringement
of an intellectual property right.
_____________________________
44.1.0 The remedy of a prohibitory interlocutory injunction would satisfy the requirements of this
paragraph. For a full commentary on this form of relief see the answer to questions 5 and 10
in the Checklist of Issues on Enforcement.
Article 44 (2)
Notwithstanding the other provisions of this Part and provided that the provisions of
Part II specifically addressing use by govern ments, or by third parties authorized by a
government, without the authorization of the right holder are complied with, Members may
limit the remedies available against such use to  payment of remuneration in accordance with
subparagraph (h) of Article 31. In other cases, the remedies under this Part shall apply or,
where these remedies are inconsistent with a Member’s law, declaratory judgments and
adequate compensation shall be available.
_____________________________
44.2.0 The remedy for use by the government, or by third parties authorized by the government,
without the authorization of the right holder of registered designs and/or patents is limited to
payment of compensation. The relevant provisions are section 39 of the Registered DesignsOrdinance and section 71 of the Patents Ordinance.IP/N/1/HKG/2/Add.1
Page 124
Article 45 (1)
The judicial authorities shall have the author ity to order the infringer to pay the right
holder damages adequate to compensate for the injury the right holder has suffered because of
an infringement of that person’s intellectual property right by an infringer who knowingly, or
with reasonable grounds to know, engaged in infringing activity.
_____________________________
45.1.0 The authority to award damages to an injured right holder for infringement are discussed in
the answer to question 5 in the Checklist of Issues on Enforcement.
Article 45 (2)
The judicial authorities shall also have the authority to order the infringer to pay the
right holder expenses, which may include approp riate attorney’s fees. In appropriate cases,
Members may authorize the judicial  authorities to order recovery of profits and/or payment of
pre-established damages even where the infr inger did not knowingly, or with reasonable
grounds to know, engage in infringing activity.
_____________________________
45.2.0 The general rule relating to expenses is that the successful party is awarded costs by the
judicial authority, which if not agreed, will be set by a taxing master. Among the costs
allowable are solicitor and barrister costs. For a full discussion on recovery of profits see theanswer to question 5 in the Checklist of Issues on Enforcement.
Article 46
In order to create an effective deterrent to infringement, the judicial authorities shall
have the authority to order that goods that they have found to be infringing be, without
compensation of any sort, disposed of outside the channels of commerce in such a manner as to
avoid any harm caused to the right holder, or, unless this would be contrary to existing
constitutional requirements, destroyed. The judici al authorities shall also have the authority to
order that materials and implements the predom inant compensation of any sort, disposed of
outside the channels of comme rce in such a manner as to minimize the risks of further
infringements. In considering such requests,  the need for proportionality between the
seriousness of third parties shall be taken into account. In regard to counterfeit trademark
goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than
in exceptional cases, to permit release of  the goods into the channels of commerce.
_____________________________
46.0 The provisions authorising judicial authorities to make orders in forfeiture proceedings are
discussed in full in the answer to question 5 in the Checklist of Issues on Enforcement.
46.1 In addition, empowering provisions exist in th e Trade Descriptions Ordinance (section 30) in
relation to infringing copies of trade mark goods seized by the Commissioner of Customs &Excise, and in the Copyright Ordinance in respect of works infringing copyright. A fuller
discussion of these provisions may be found in the answer to question 24 in the Checklist of
Issues on Enforcement.
46.2 The specific provision implementing the final sentence of the Article is to be found in
Section 30(4)(d) of the Trade Descriptions Ordinance.IP/N/1/HKG/2/Add.1
Page 125
Article 47
Members may provide that the judicial auth orities shall have the authority, unless this
would be out of proportion to the seriousness of the infringement, to order the infringer to
inform the right holder of the identity of third persons involved in the production and
distribution of the infringing goods or servic es and of their channels of distribution.
_____________________________
47.0 In any ex parte application for an Anton Piller injunction, where the identity of third parties is
of interest to the right holder, such an order is usually sought and granted. (See Answer to
Question 10 in the Checklist of Issues on Enforcement.)
Article 48 (1)
The judicial authorities shall have the authority to order a party at whose request
measures were taken and who has abused enforcement procedures to provide to a party
wrongfully enjoined or restrained adequate co mpensation for the injury suffered because of
such abuse. The judicial authorities shall also have the authority to order the applicant to pay
the defendant expenses, which may include appropriate attorney’s fees.
_____________________________
48.1.0 The law which implements this Article is discussed fully in answer to question 7 in the
Checklist of Issues on Enforcement.
Article 48 (2)
In respect of the administration of any law pertaining to the protection or enforcement
of intellectual property rights, Members shall only exempt both public authorities and officialsfrom liability to appropriate remedial measures where actions are taken or intended in good
faith in the course of the administration of that law.
_____________________________
48.2.0 The law applicable to this Article is discussed in answer to question 7 in the Checklist of
Issues on Enforcement.
Article 49
To the extent that any civil remedy can be ordered as a result of administrative
procedures on the merits of a case, such procedures shall conform to principles equivalent in
substance to those set forth in this Section.
_____________________________
49.0 No civil remedies can be ordered as a result of administrative procedures in Hong Kong,
China.IP/N/1/HKG/2/Add.1
Page 126
TRIPS AGREEMENT
Section 3:  Provisional Measures
Article 50 (1)
The judicial authorities shall have the authority to order prompt and effective
provisional measures:
(a) to prevent an infringement of any intelle ctual property right from occurring, and in
particular to prevent the entry into the channels of commerce in their jurisdiction
of goods, including imported goods immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged infringement.
_____________________________
50.1.0 For a full discussion on the implementation of this Article see the answers given to
questions 5 and 10 in the Checklist of Issues on Enforcement.
Article 50 (2)
The judicial authorities shall have the authority to adopt provisional measures inaudita
altera parte where appropriate, in particular where any delay is likely to cause irreparable harm
to the right holder, or where there is a demonstrable risk of evidence being destroyed.
_____________________________
50.2.0 For a full discussion on the laws of Hong Kong, China which implement this Article see the
answer to questions 10 and 11 in the Checklist of Issues on Enforcement.
Article 50 (3)
The judicial authorities shall have the author ity to require the applicant to provide any
reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty
that the applicant is the right holder and that the applicant’s right is being infringed or that
such infringement is imminent, and to order th e applicant to provide a security or equivalent
assurance sufficient to protect the defendant and to prevent abuse.
_____________________________
50.3.0 For a full discussion on the laws of Hong Kong, China which implement this Article see the
answers to questions 5, 10 and 12 in the Checklist for Issues on Enforcement.
Article 50 (4)
Where provisional measures have been adopted inaudita altera parte , the parties affected
shall be given notice, without delay after the execution of the measures at the latest. A review,
including a right to be heard, shall take place upon request of the defendant with a view to
deciding, within a reasonable period after th e notification of the measures, whether these
measures shall be modified, revoked or confirmed.
_____________________________
50.4.0 For a full discussion on the laws of Hong Kong, China which implement this Article see the
answers to questions 5, 10, 11 and 12 in the Checklist of Issues on Enforcement.IP/N/1/HKG/2/Add.1
Page 127
Article 50 (5)
The applicant may be required to supply other information necessary for the
identification of the goods concerned by th e authority that will execute the provisional
measures.
_____________________________
50.5.0 It is a matter of common sense to co-operate with the authority executing any provisional
measure.
Article 50 (6)
Without prejudice to paragraph 4, provisional measures taken on the basis of
paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have
effect, if proceedings leading to a decision on th e merits of the case are not initiated within a
reasonable period, to be determined by the j udicial authority ordering the measures where a
Member’s law so permits or, in the absence of su ch a determination, not to exceed 20 working
days or 31 calendar days, whichever is the longer.
_____________________________
50.6.0 For a full discussion on the laws of Hong Kong, China which implement this Article see the
answers to questions 5 , 10 and 12 in the Checklist of Issues on Enforcement.
Article 50 (7)
Where the provisional measures are revoked  or where they lapse due to any act or
omission by the applicant, or where it is subsequently found that there has been no infringement
or threat of infringement of an intellectual proper ty right, the judicial authorities shall have the
authority to order the applicant, upon request of the defendant, to provide the defendant
appropriate compensation for any in jury caused by these measures.
_____________________________
50.7.0 For a full discussion on the laws of Hong Kong, China which implement this Article see the
answers to questions 5, 10 and in particular 12 in the Checklist of Issues on Enforcement.
Article 50 (8)
To the extent that any provisional measure can be ordered as a result of administrative
procedures, such procedures shall conform to pr inciples equivalent in substance to those set
forth in this Section.
_____________________________
50.8.0 None of the provisional measures can be orde red by way of administrative procedures, save
for the border measures described in the immediately succeeding section, and even these are
partially administrative and partially judicial.IP/N/1/HKG/2/Add.1
Page 128
TRIPS AGREEMENT
Section 4:  Special Requirements Related to Border Measures
Article 51
Members shall, in conformity with the prov isions set out below, adopt procedures to
enable a right holder, who has valid grounds for suspecting that the importation of counterfeit
trademark or pirated copyright goods may take pl ace, to lodge an application in writing with
competent authorities, administrative or judicial , for the suspension by the customs authorities
of the release into free circulation of such good s. Members may enable such an application to be
made in respect of goods which involve other in fringements of intellectual property rights,
provided that the requirements of this Section are met. Members may also provide for
corresponding procedures concerning the suspension  by the customs authorities of the release of
infringing goods destined for exportation from their territories.
_____________________________
51.0 The Intellectual Property (World Trade Organisation Amendments) Ordinance added, inter
alia, Part IIIA to the Trade Descriptions Ordinance (TDO) (Cap.362). Part IIIA enacted the
provisions relating to border measures introduced by this part of the TRIPS Agreement as
they relate to counterfeit trade marks.
51.1 Part IIIA of the TDO is structured around th e concept of “infringing goods”, which are
defined in section 30A of the TDO as goods to which a forged trade mark has been applied or
to which a trade mark or mark so nearly resembling a trade mark as to be calculated to
deceive has been falsely applied. Section 6 of the TDO defines “applied” broadly so that the
application of a counterfeit trade mark to the packaging is an application to the goodsthemselves. “Forging” a trade mark is defined in section 9(3) as applying that mark without
the assent of the trade mark proprietor.
51.2 The Copyright Ordinance (Cap.528) also contain provisions relating to border controls as they
relate to pirated copyright goods (sections 135 to 144).
51.3 Section 136 CO is also structured around the concept of “infringing goods” which are defined
in section 35 as goods the making of which constitute an infringement of the copyright in the
goods in question. Section 22(2) CO further defines infringement as the act of doing any of
the “restricted acts” (defined in section 22(1)) without the license of the copyright owner.
51.4 Neither of the ordinances referred to above apply in respect of goods in transit. Goods in
transit are defined as those which are brought into Hong Kong, China solely for the purpose
of taking them out of Hong Kong, China and remain at all times in or on the vessel or aircraft
in or on which they are brought into Hong Kong, China.
51.5 The procedure implementing Article 51 is explai ned in full in answer to question 16 in the
Checklist of Issues on Enforcement.
51.6 Hong Kong, China has not extended the border control measures to other infringements of
intellectual property rights, nor to exports from Hong Kong, China. However where pirated or
counterfeit goods are located, either by ex-officio action by Customs officers, or uponcomplaint made to them, such goods will be seized up to the point where they leave Hong
Kong, China’s territorial waters.IP/N/1/HKG/2/Add.1
Page 129
Article 52
Any right holder initiating the procedures under Article 51 shall be required to provide
adequate evidence to satisfy the competent au thorities that, under the laws of the country of
importation, there is prima facie an infringement of the right holder’s intellectual property right
and to supply a sufficiently detailed description of the goods to make them readily recognizableby the customs authorities. The competent auth orities shall inform the applicant within a
reasonable period whether they have accepted th e application and, where determined by the
competent authorities, the period for whic h the customs authorities will take action.
_____________________________
52.0 Where a “right holder” (trade mark proprietor under section 30B TDO; owner or exclusive
licensee of the copyright under section 135 CO) has reasonable grounds for suspecting that animportation of an article that constitutes an infringing copy of the work in which he is the
right holder may take place, he may apply, in writing, to the High Court for a Detention
Order. The application may be made ex parte but with previous notice to the Commissioner
of Customs & Excise. The competent authority from a judicial point of view, is the High
Court, whilst the competent authority from an administrative point of view is the Customs &Excise Department.
52.1 The application must be supported by an affidavit which sets out the standing of the applicant
in relation to the work; the fact that it is a protected work; annex an authorised copy of the
work; state the grounds for the application including the facts relied upon by the applicant toestablish that the article is prima facie an infringing one; give sufficient details to identify it
and state the expected mode of transport, date of arrival, and particulars of the importer
(section 30B(3) TDO; section 136(3) CO).
52.2 If the Court is satisfied at the hearing of the application that there is sufficient evidence of
prima facie infringement, the Court may make an Order directing the Commissioner to take
reasonable measures to seize or detain the article on or after its importation
(section 30C(1) TDO; section 137(1) CO). Such an  Order is to be served forthwith by the
right holder upon the Commissioner (section 30C(6) TDO; section 137(6) CO). The Order
lapses after 60 days unless a seizure is made before then (section 30C(7) TDO;section 137(7) CO).
Article 53 (1)
The competent authorities shall have the auth ority to require an applicant to provide a
security or equivalent assurance sufficient to protect the defendant and the competent
authorities and to prevent abuse. Such security  or equivalent assurance shall not unreasonably
deter recourse to these procedures.
_____________________________
53.1.0 The Court may require the right holder to provide security or an equivalent assurance in an
amount sufficient to protect the importer, cons ignee, and owner of the article, from any loss
or damage suffered by reason of wrongful detention or by the failure of the right holder to
bring an action for infringement within the prescribed period (section 30C(2) TDO;
section 137(2) CO).
53.1.1 Further security may be ordered by the Court if the period of detention is extended
(section 30D(8) TDO; section 138(8) CO).
53.1.2 Furthermore, upon serving the Commissioner with a copy of the Order, the right holder shall
deposit with the Commissioner an amount that is, in the opinion of the Commissioner,IP/N/1/HKG/2/Add.1
Page 130
sufficient to reimburse the Government for the costs likely to be incurred in connection with
the carrying out of the Detention Order (sec tion 30D(2)(b) TDO; section 138(2)(b) CO) and,
upon notification in writing of seizure, provide the Commissioner such storage space and
other facilities as he may require (section 30D(2)(c) TDO; section 138(2)(c) CO).
53.1.3 The courts would not order security in a sum which would deter an applicant from utilising
the procedures. Any sum ordered by the Commissioner would be subject to a judicial review
by the High Court if the applicant thought the sum too high.
Article 53 (2)
Where pursuant to an application under this Section the release of goods involving
industrial designs, patents, layout-designs or undisclosed information into free circulation hasbeen suspended by customs authorities on the ba sis of a decision other than by a judicial or
other independent authority, and the period provide for in Article 55 has expired without the
granting of provisional relief by the duly empowered authority, and provided that all other
conditions for importation have been complied with, the owner, importer, or consignee of such
goods shall be entitled to their release on the po sting of a security in an amount sufficient to
protect the right holder for any infringement. P ayment of such security shall not prejudice any
other remedy available to the right holder, it  being understood that the security shall be
released if the right holder fails to pursue the right of action within a reasonable period of time.
_____________________________
53.2.0 As the border provisions have not been extended to intellectual property rights other than
counterfeit trade mark goods, pirated copyright goods and the importation of an article that
constitutes an infringing fixation of a performance (pursuant to section 263 CO), this
paragraph is inapplicable to Hong Kong, China.
Article 54
The importer and the applicant shall be prom ptly notified of the suspension of the
release of goods according to Article 51.
_____________________________
54.0 This Article is implemented in secti on 30D(5) of TDO and section 138(5) CO.
Article 55
If, within a period not exceeding 10 working days after the applicant has been served
notice of the suspension, the customs authorities have not been informed that proceedings
leading to a decision on the merits of the case  have been initiated by a party other than the
defendant, or that the duly empowered authority has taken provisional measures prolonging the
suspension of the release of the goods, the good s shall be released, provided that all other
conditions for importation or exportation have b een complied with; in appropriate cases, this
time-limit may be extended by another 10 working days. If proceedings leading to a decision onthe merits of the case have been initiated, a review, including a right to be heard, shall take
place upon request of the defendant with a view to deciding, within a reasonable period,
whether these measures shall be modified, revok ed or confirmed. Notwithstanding the above,
where the suspension of the release of goods is carried out or continued in accordance with a
provisional judicial measure, the provisions of paragraph 6 of Article 50 shall apply.
_____________________________
55.0 The first sentence of this Article has been implemented in section 30D(6) and (7) TDO and
section 138(6) and (7) CO.IP/N/1/HKG/2/Add.1
Page 131
55.1 The second sentence of this Article has been implemented in section 30E TDO and
section 139 CO.
Article 56
Relevant authorities shall have the authority to order the applicant to pay the importer,
the consignee and the owner of the goods approp riate compensation for any injury caused to
them through the wrongful detention of goods or through the detention of goods released
pursuant to Article 55.
_____________________________
56.0 This Article is implemented in section 30J of the TDO and section 143 CO.
Article 57
Without prejudice to the protection of conf idential information, Members shall provide
the competent authorities the authority to give the right holder sufficient opportunity to haveany goods detained by the customs authorities in spected in order to substantiate the right
holder’s claims. The competent authorities shal l also have authority to give the importer an
equivalent opportunity to have any such goods inspected. Where a positive determination has
been made on the merits of a case, Members  may provide the competent authorities the
authority to inform the right holder of the name s and addresses of the consignor, the importer
and the consignee and of the quantity of the goods in question.
_____________________________
57.0 The first two sentences of this Article are implemented in section 30G TDO and in
section 141 of the CO.
57.1 The final sentence is implemented in section 30F TDO and in section 140 CO.
Article 58
Where Members require competen t authorities to act upon their own initiative and to
suspend the release of goods in resp ect of which they have acquired prima facie evidence that an
intellectual property right is being infringed:
(a) the competent authorities may at any time seek from the right holder any information
that may assist them to exercise these powers;
(b) the importer and the right holder shall be promptly notified of the suspension. Where
the importer has lodged an appeal agai nst the suspension with the competent
authorities, the suspen sion shall be subject to the conditions, mutatis mutandis , set out at
Article 55;
(c) members shall only exempt both public authorities and officials from liability to
appropriate remedial measures where actions are taken or intended in good faith.
_____________________________
58.0 There are no provisions requiring the Commissioner of Customs & Excise to act on his own
initiative in respect of the border measures.IP/N/1/HKG/2/Add.1
Page 132
58.1 The Commissioner has, however, a duty to enfo rce the criminal provisions of the Copyright
and the Trade Descriptions Ordinances. He will act in that capacity both on complaint being
made and on his own initiative with respect to any importation of infringing articles into
Hong Kong, China. The border measure provisions do not operate in these circumstances as
the goods are seized under general powers of search, seizure and detention until a forfeiture
application is decided by the appropriate court. See the detailed explanation given in reply toQuestion 22 in the Checklist of Issues on Enforcement.
58.2 There is specific protection provided in the border measure provisions exempting the
Commissioner and authorised officers from any loss or damage suffered as a result of any
action taken or omitted to be taken in good faith in connection with the carrying out of a
Detention Order under the TDO (section 30I TDO).
Article 59
Without prejudice to other rights of action open to the right holder and subject to the
right of the defendant to seek review by a ju dicial authority, competent authorities shall have
the authority to order the destruction or dispos al of infringing goods in accordance with the
principles set out in Article 46. In regard to counterfeit trademark goods, the authorities shall
not allow the re-exportation of the infringing g oods in an unaltered state or subject them to a
different customs procedure, other than in exceptional circumstances.
_____________________________
59.0 Because of the long established practice in Hong Kong, China for right holders to rely
predominantly on the criminal provisions for rights enforcement, a right holder, rather than
issuing civil proceedings after detention, will report to and satisfy the Commissioner that the
goods are infringing. The Commissioner will act upon that complaint and seize the goods
under the general powers of seizure and detention, and these goods will fall for finaldetermination by a court dealing with a forfeiture application. Section 30C(4) and (5) TDO
and section 137(4) and (5) CO are applicable.
59.1 A defendant has the right to seek a judicial review of the Commissioner’s decision to seize
and retain at any time.
59.2 A full discussion on the courts powers in dealing with forfeiture applications is to be found in
the reply to Question 24 in the Checklist of Issues on Enforcement.
59.3 For more details on the application to this Article, see the answer to question 5 in the
Checklist of Issues on Enforcement.
59.4 For the specific provision prohibiting the retu rn to the owner of goods from which a forged
trade mark has been obliterated, see section 30(4)(d) TDO.
Article 60
Members may exclude from the application of the above provisions small quantities of
goods of a non-commercial nature contained in travellers’ personal luggage or sent in small
consignments.
_____________________________
60.0 This Article is implemented in sect ion 30B(6) TDO and section 136(5) CO.IP/N/1/HKG/2/Add.1
Page 133
TRIPS AGREEMENT
Section 5:  Criminal Procedures
Article 61
Members shall provide for criminal procedures  and penalties to be applied at least in
cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale. Remedies
available shall include imprisonment and/or mone tary fines sufficient to provide a deterrent,
consistently with the level of penalties applied for crimes of a corresponding gravity. In
appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of
the infringing goods and of any materials and implements the predominant use of which has
been in the commission of the offence. Memb ers may provide for criminal procedures and
penalties in other cases of infringement of inte llectual property rights, in particular where they
are committed wilfully and on a commercial scale.
_____________________________
61.0 Hong Kong, China has a long established regime of criminal procedures and penalties. A
detailed examination of the offences, penalties and forfeiture proceedings may be found in the
answers to Questions 20 to 25 in the Checklist of Issues on Enforcement.IP/N/1/HKG/2/Add.1
Page 134
TRIPS AGREEMENT
PART IV
ACQUISITION AND MAINTENANCE OF INTELLECTUAL
PROPERTY RIGHTS AND RELATED INTER PARTES
PROCEDURES
Article 62(1)
Members may require, as a condition of the acquisition or maintenance of the
intellectual property rights provided for under Sections 2 through 6 of Part II, compliance withreasonable procedures and formalities. Such procedures and formalities shall be consistent with
the provisions of this Agreement.
_____________________________
62.1.0 The procedures and formalities relevant to the registration of trade marks, including
certification marks (geographical indications) designs and patents are laid out in the Rules
promulgated pursuant to the relevant ordinances. No procedural requirements or formalities
have been imposed in the area of layout-design (topographies) in integrated circuits.
Article 62(2)
Where the acquisition of an intellectual prop erty right is subject to the right being
granted or registered, Members shall ensure that  the procedures for grant or registration,
subject to compliance with the substantive conditions for acquisition of the right, permit the
granting or registration of the right within a reasonable period of time so as to avoidunwarranted curtailment of the period of protection.
_____________________________
62.2.0 Acquisition of an intellectual property right is subject to the right being granted or registered
in the case of trade marks (including certification marks), designs, patents and new plantvarieties. No system of registration or grant of a right occurs with copyright or layout-design
(topographies) in integrated circuits.
62.2.1 Time limits to comply which each step leading toward registration are set out in the Rules
promulgated under the respective principal ordinances. The time limits strike a balance
between the desire to expedite registration or grant, and the time needed to comply with each
step taking into account that the majority of applicants are not residents of Hong Kong, China.The Registrar’s discretion to extend time limits will be exercised only upon request and only
when the requesting party has offered a satisfactory explanation for the delay, and any
prejudice suffered by other party can be compensated by an award of costs.
62.2.2 Rights as to infringement will upon registration of a trade mark, patent or design date back to
the date of the application. Under the Plant Varieties Protection Ordinance, an applicant may
on or after the day an application has been made have the same rights to take proceedings as
if on that day a grant had been made to the applicant of the variety concerned (section 17(1)).
Article 62(3)
Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to service marks.
_____________________________IP/N/1/HKG/2/Add.1
Page 135
62.3.0 No distinction is drawn in the Trade Marks Or dinance between the right to register a service
mark or a trade mark.
62.3.1 The paragraphs commenting on Article 4 of the Paris Convention (Part II
Paragraphs PT4A.1.0 to PT4D.5.0 (pages 48-51) are also relevant.
Article 62(4)
Procedures concerning the acquisition or maintenance of intellectual property rights
and, where a Member’s law provides for such procedures, administrative revocation and inter
partes procedures such as opposition, revocation and cancellation, shall be governed by the
general principles set out in paragraphs 2 and 3 of Article 41.
_____________________________
62.4.0 Procedures concerning the acquisition, maintenance, administrative revocation and inter
partes procedures for opposition, revocation and cancellation are fair and equitable, not
unnecessarily complicated or costly, nor do they entail unreasonable time limits or
unwarranted delays (see also paragraphs 41.2.0 (page 120), and 62.2.1 (page 134).
62.4.1 All decisions regarding the merits of a case are in writing and delivered only after reasoned
reflection. They are made immediately available to the parties to the proceedings and are
based solely upon the evidence in respect of which parties were offered the opportunity to be
heard. See also paragraph 41.3.0 and hereof (page 120).
Article 62(5)
Final administrative decisions in any of the procedures referred to under paragraph 4
shall be subject to review by a judicial or qua si-judicial authority. However, there shall be no
obligation to provide an opportunity for such review of decisions in cases of unsuccessful
opposition or administrative revocation, provided that the grounds for such procedures can be
the subject of invalidation procedure.
_____________________________
62.5.0 A right to appeal to the Court of First Inst ance from a final administrative decision of the
Registrar is provided in Sections 13(5), 15(5), 24(3), 41(7), 41A(7), 50(3), 51(3), 62, 65(6)
and 69(3) of the Trade Marks Ordinance. A right of review is also provided in Section 78
thereof.
62.5.1 A general right of appeal to the Court of First Instance from a final administrative decision of
the Registrar is provided in Section 58(1) of the Registered Designs Ordinance (“RDO”).Section 66 RDO is also relevant. An option to ap ply to the Registrar or to a Court is provided
in Section 61(1) RDO. A right of reference to a Court is also provided in Sections 37(4),
39(5), Section 41(1), and 44(3) RDO.
62.5.2 A general right of appeal to Court of First Instance from any decision or order of the Registrar
is provided in Section 130(1) of the Patents Ordinance (“PO”). An option to apply to either
the Registrar or the Court is provided in Sections 13(1) and 55(1). A power of rectification is
preserved to the Court by Section 53(1). A right of reference to the Court of First Instance is
also provided in Section 72(1).
62.5.3 A right of appeal against a decision of the Registrar of the Plant Variety Rights is provided in
Section 6 and Part IV of the Plant Varieties Protection Ordinance.IP/N/1/HKG/2/Add.1
Page 136
TRIPS AGREEMENT
PART V
DISPUTE PREVENTION AND SETTLEMENT
Article 63(1)
Laws and regulations, and final judicial decisions and administrative rulings of general
application, made effective by a Member pertaining to the subject matter of this Agreement (the
availability, scope, acquisition, enforcement and p revention of the abuse of intellectual property
rights) shall be published, or where such public ation is not practicable made publicly available,
in a national language, in such a manner as to  enable governments and right holders to become
acquainted with them. Agreements concerning the subject matter of this Agreement which are
in force between the government or a governmental agency of a Member and the government or
a governmental agency of another Member shall also be published.
_____________________________
63.1.0 The Laws of Hong Kong are published by the Government Printer and are available to any
member of the public in hardcopy.
63.1.1 The Laws of Hong Kong are published in both Chinese and English, and both texts are
equally authentic.
63.1.2 In addition, the Laws of Hong Kong have been published on the INTERNET and may be
accessed by anyone, without charge, in either language, by accessing the home page of the
Department of Justice (www.justice.gov.hk). The electronic copy of the Laws of Hong Kongis updated regularly to keep it up to date.
63.1.3 Final judicial decisions, including those pertaining to the availability, scope, acquisition,
enforcement and prevention of abuse of intellectual property rights are available, in hard copy
form, from the Registry of the High Court upon payment of a modest copying fee.
63.1.4 Legal professionals have an additional source of unreported decisions through the High Court
library. Any decision of general importance will be reported in one or more of the law reports.
Practice directions issued by the Chief Justice, ar e also be reported in the law reports affecting
the administration of Courts and tribunals.
63.1.5 The decisions of the Registrar of Trade Marks can be searched at the Registry, and an index
thereof is available at the home page of the Intellectual Property Department.
(http://www.info.gov.hk/ipd/).
63.1.6 Administrative rulings of the Trade Marks, Patents and Design Registries, are issued to all
members of the legal profession and are also posted on the home page of the IntellectualProperty Department.
63.1.7 Final judicial decisions of the Registrar of Plant Variety Rights concerning the grant are to be
published in the Hong Kong Government Gazette pursuant to section 18(1)(a) and (b) and
rule 8(1)(a) Plant Varieties Protection Ordinance and Regulations.
63.1.8 There are no formal agreements falling under the definition of the last sentence of this Article.IP/N/1/HKG/2/Add.1
Page 137
Article 63(2)
Members shall notify the laws and regulations referred to in paragraph 1 to the Council
for TRIPS in order to assist that Council in its review of the operation of this Agreement. The
Council shall attempt to minimize the burden on  Members in carrying out this obligation and
may decide to waive the obligation to notify su ch laws and regulations directly to the Council if
consultations with WIPO on the establishment of  a common register containing these laws and
regulations are successful. The Council shall also consider in this connection any action
required regarding notifications pursuant to the obligations under this Agreement stemming
from the provisions of Article 6 ter of the Paris Convention (1967).
_____________________________
63.2.0 Noted.
Article 63(3)
Each Member shall be prepared to suppl y, in response to a written request from
another Member, information of the sort referred to in paragraph 1. A Member, having reasonto believe that a specific judicial decision or ad ministrative ruling or bilateral agreement in the
area of intellectual property rights affects its rights under this Agreement, may also request in
writing to be given access to or be informed in sufficient detail of such specific judicial decisions
or administrative rulings or bilateral agreements.
_____________________________
63.3.0 Hong Kong, China is prepared to supply, in response to a written request from another
Member, information of the sort referred to in Article 63(1).
63.3.1 Most of this information is freely available on the INTERNET, as described in
paragraphs 63.1.2, 63.1.5 and 63.1.6 (page 136).
Article 63(4)
Nothing in paragraphs 1, 2 and 3 shall require Members to disclose confidential
information which would impede law enforcement or otherwise be contrary to the public
interest or would prejudice the legitimate commercial interests of particular enterprises, public
or private.
_____________________________
63.4.0 Section 130(2) of the Patents Ordinance provides for appeals from a decision of the Registrar
to a Court, which concerns an unpublished patent application, to be heard in private.Similarly, section 58(2) of the Registered De signs Ordinance provides for appeals from the
Registrar to a Court concerning an application for registration of a design to be heard in
private. Confidential matters so disclosed w ill accordingly not form part of a written
judgment available to the public.
63.4.1 Other provisions make it an offence to disclose information acquired in the course of duty to
persons other than those named. See section 17(2) of the Trade Descriptions Ordinance and
section 130 of the Copyright Ordinance.
63.4.2 Conversely, specific provisions have been enacted for international co-operation on the
sharing of information from enforcement efforts. See section 16D of the Trade Descriptions
Ordinance and section 129 of the Copyright Ordinance.IP/N/1/HKG/2/Add.1
Page 138
Article 64(1)
The provisions of Articles XXII and XXIII of GATT 1994 as elaborated and applied by
the Dispute Settlement Understanding shall apply to consultations and the settlement of
disputes under this Agreement except as otherwise specifically provided herein.
_____________________________
64.1.0 Noted.
Article 64(2)
Subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 shall not apply to the
settlement of disputes under this Agreement for a period of five years from the date of entryinto force of the WTO Agreement.
_____________________________
64.2.0 Noted.
Article 64(3)
During the time period referred to in paragraph 2, the Council for TRIPS shall examine
the scope and modalities for complaints of the type provided for under subparagraphs 1(b) and
1(c) of Article XXIII of GATT 1994 made pursuant to this Agreement, and submit itsrecommendations to the Ministerial Conference fo r approval. Any decision of the Ministerial
Conference to approve such recommendations or to extend the period in paragraph 2 shall be
made only by consensus, and approved recomm endations shall be effective for all Members
without further formal acceptance process.
_____________________________
64.3.0 Noted.IP/N/1/HKG/2/Add.1
Page 139
TRIPS AGREEMENT
PART VI
TRANSITIONAL ARRANGEMENTS
Article 65(1)
Subject to the provisions of paragraphs 2, 3 and 4, no Member shall be obliged to apply
the provisions of this Agreement before the expiry  of a general period of one year following the
date of entry into force of the WTO Agreement.
_____________________________
65.1.0 The date relevant to this paragraph is 1 January 1996. By this date Hong Kong, China had
implemented Articles 3, 4, and 5.
Article 65(2)
A developing country Member is entitled to delay for a further period of four years the
date of application, as defined in paragraph 1, of the provisions of this Agreement other than
Articles 3, 4 and 5.
_____________________________
65.2.0 This Article applies to Hong Kong, China. It must implement, by 1 January 2000, all the
remaining Articles of the Agreement. This has been done.
Article 65(3)
Any other Member which is in the process of transformation from a centrally-planned
into a market, free-enterprise economy and wh ich is undertaking structural reform of its
intellectual property system and facing special problems in the preparation and implementation
of intellectual property laws and regulations, may also benefit from a period of delay as foreseenin paragraph 2.
_____________________________
65.3.0 This is not applicable to Hong Kong, China.
Article 65(4)
To the extent that a developing country Member is obliged by this Agreement to extend
product patent protection to areas of technology not so protectable in its territory on the general
date of application of this Agreement for that Member, as defined in paragraph 2, it may delay
the application of the provisions on product pa tents of Section 5 of Part II to such areas of
technology for an additional period of five years.
_____________________________
65.4.0 This is not applicable to Hong Kong China. Nonetheless, Hong Kong, China has fully
implemented Section 5 of Part II concerning the application of the provisions on product
patents.
65.4.1 For further discussion see paragraphs 27.1.0 et seq (page 82).IP/N/1/HKG/2/Add.1
Page 140
Article 65(5)
A Member availing itself of a transitional period under paragraphs 1, 2, 3 or 4 shall
ensure that any changes in its la ws, regulations and practice made during that period do not
result in a lesser degree of consistency with the provision of this Agreement.
_____________________________
65.5.0 No changes made to the laws of Hong Kong, China up to 1 January 2000 have resulted in a
lesser degree of consistency with the provisions of the Agreement.
Article 66(1)
In view of the special needs and requirements of least-developed country Members, their
economic, financial and administrative constraint s, and their need for flexibility to create a
viable technological base, such Members shall no t be required to apply the provisions of this
Agreement, other than Articles 3, 4 and 5, for a period of 10 years from the date of application
as defined under paragraph 1 of Article 65. The Council for TRIPS shall, upon duly motivated
request by a least-developed country Member, accord extensions of this period.
_____________________________
66.1.0 This Article does not apply to Hong Kong, China.
Article 66(2)
Developed country Members shall provide incen tives to enterprises and institutions in
their territories for the purpose of promoting and encouraging technology transfer to least-
developed country Members in order to enable them to create a sound and viable technological
base.
_____________________________
66.2.0 This Article does not apply to Hong Kong, China.
Article 67
In order to facilitate the implementation of this Agreement, developed country Members
shall provide, on request and on mutually agreed  terms and conditions, technical and financial
cooperation in favour of developing and least-developed country Members. Such cooperation
shall include assistance in the preparation of laws and regulations on the protection and
enforcement of intellectual property rights as well  as on the prevention of their abuse, and shall
include support regarding the establishment or reinforcement of domestic offices and agenciesrelevant to these matters, including the training of personnel.
_____________________________
67.0 This Article is not applicable to Hong Kong, China.
67.1 Hong Kong, China has nevertheless exchanged information with other Members in respect of
Hong Kong, China’s registered designs law.IP/N/1/HKG/2/Add.1
Page 141
PART VII
INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS
Article 68
The Council for TRIPS shall monitor the operation of this Agreement and, in particular,
Members’ compliance with their obligations here under, and shall afford Members the
opportunity of consulting on matters relating to the trade-related aspects of intellectual
property rights. It shall carry out such other res ponsibilities as assigned to it by the Members,
and it shall, in particular, provide any assistance requested by them in the context of dispute
settlement procedures. In carrying out its functions, the Council for TRIPS may consult withand seek information from any source it deems appropriate. In consultation with WIPO, the
Council shall seek to establish, within one year  of its first meeting, appropriate arrangements
for cooperation with bodies of that Organization.
_____________________________
68.0 Noted.
Article 69
Members agree to cooperate with each other with a view to eliminating international
trade in goods infringing intellectual property ri ghts. For this purpose, they shall establish and
notify contact points in their administrations a nd be ready to exchange information on trade in
fringing goods. They shall, in particular, prom ote the exchange of information and cooperation
between customs authorities with regard to tr ade in counterfeit trademark goods and pirated
copyright goods.
_____________________________
69.0 Hong Kong, China has established and notified its contact point for the exchange of
information on trade in infringing goods and the information is contained in WTO document
IP/N/3 and revisions thereto.
69.1 The Customs & Excise Department of Hong Kong, China undertakes exchanges of
information regularly with its regional coun terparts. These take the form of telephone
discussions, letters and fax, publications, meetings and seminars.
69.2 Hong Kong, China is also an active member of the World Customs Organisation.
69.3 The statutory powers to share information is found, in respect of counterfeit trade mark
goods, in section 16D of the Trade Descripti ons Ordinance, and in respect of pirated
copyright goods, in section 129 of the Copyright Ordinance.
Article 70(1)
This Agreement does not give rise to obligatio ns in respect of acts which occurred before
the date of application of the Agreement for the Member in question.
_____________________________
70.1.0 The relevant date for Hong Kong, China is set out in paragraph 65.2.0 hereof (page 139).IP/N/1/HKG/2/Add.1
Page 142
Article 70(2)
Except as otherwise provided for in this Agreement, this Agreement gives rise to
obligations in respect of all subject matter existing at the date of application of this Agreement
for the Member in question, and which is protected in that Member on the said date, or which
meets or comes subsequently to meet the criteria for protection under the terms of thisAgreement. In respect of this paragraph and paragraphs 3 and 4, copyright obligations with
respect to existing works shall be solely de termined under Article 18 of the Berne Convention
(1971), and obligations with respect to the rights of producers of phonograms and performers in
existing phonograms shall be determined solely under Article 18 of the Berne Convention (1971)
as made applicable under paragraph 6 of Article 14 of this Agreement.
_____________________________
70.2.0 Noted.
Article 70(3)
There shall be no obligation to restore protection to subject-matter which on the date of
application of this Agreement for the Member in question has fallen into the public domain.
_____________________________
70.3.0 Noted.
70.3.1 See also paragraph B18.2.0 hereof (page 39).
Article 70(4)
In respect of any acts in respect of specif ic objects embodying protected subject matter
which become infringing under the terms of legisl ation in conformity with this Agreement, and
which were commenced, or in respect of which a significant investment was made, before the
date of acceptance of the WTO Agreement by  that Member, any Member may provide for a
limitation of the remedies available to the right holder as to the continued performance of such
acts after the date of application of this Agr eement for that Member. In  such cases the Member
shall, however, at least provide for the payment of equitable remuneration.
_____________________________
70.4.0 Hong Kong, China has provided for a limitation of the remedies available to a right holder as
permitted by this Article in its legislation.
70.4.1 The limitations can be found in sections 4 and 14(3) of Schedule 2 and section 6 of
Schedule 3 of the Copyright Ordinance.
Article 70(5)
A Member is not obliged to apply the provisions of Article 11 and of paragraph 4 of
Article 14 with respect to originals or copies pu rchased prior to the date of application of this
Agreement for that Member.
_____________________________
70.5.0 The law implementing Article 11 came into force in Hong Kong, China on 27 June 1997.70.5.1 The law implementing paragraph 4 of Article 14 came into force in Hong Kong, China
on 27 June 1997.IP/N/1/HKG/2/Add.1
Page 143
70.5.2 In each case therefore, the provisions were applied before the application of this Agreement to
Hong Kong, China. A moratorium was however imposed by section 14(2) of Schedule 2 of
the CO in that copies of sound recordings and computer programs acquired before
10 May 1996 for the purpose of rental are not to be regarded as infringing copies.
Sections 4(3) et seq . of the aforesaid Schedule 2 are also relevant.
Article 70(6)
Members shall not be required to apply Article 31, or the requirement in paragraph 1 of
Article 27 that patent rights shall be enjoyable without discrimination as to the field of
technology, to use without the authorization of th e right holder where authorization for such use
was granted by the government before the date this Agreement became known.
_____________________________
70.6.0 The law implementing Article 31 came into force in Hong Kong, China on 20 December1996
with the enactment of Section 11 of the Intellectual Property (World Trade Organization
Amendments) Ordinance. The current provisions are to be found in the Patents Ordinance
(see paragraph 31.a.0. et seq (page 85)).
70.6.1 Article 27(1) was complied with before the application of this Agreement to Hong Kong,
China by way of the Registration of Patents Ordinance (Cap. 42) whereby UK patents and
European patents designating the UK could be re-registered in Hong Kong. The current law is
contained in the Patents Ordinance where rights are enjoyed without discrimination as to thefield of technology.
Article 70(7)
In the case of intellectual property righ ts for which protection is conditional upon
registration, applications for protection which are pending on the date of application of this
Agreement for the Member in question shall be pe rmitted to be amended to claim any enhanced
protection provided under the provisions of this  Agreement. Such amendments shall not include
new matter.
_____________________________
70.7.0 The existing Trade Marks Ordinance (Cap.43) was amended in 1996 to incorporate all
enhancements provided for in the Agreement. The amendment came into effect on the
10 May 1996. Accordingly no pending applications thereunder will be affected by the coming
into force of the Agreement on 1 January 2000.
70.7.1 All other legislation implementing the protection of intellectual property rights under this
Agreement by registration, came into effect prior to 1 July 1997 and accordingly no pending
applications thereunder will be effected by the coming into force of the Agreement
on 1 January 2000.
Article 70(8)
Where a Member does not make available as of the date of entry into force of the WTO
Agreement patent protection for pharmaceutical and agricultural chemical products
commensurate with its obligations under Article 27, that Member shall:
(a) notwithstanding the provisions of Part VI, pr ovide as from the date of entry into force of
the WTO Agreement a means by which applicat ions for patents for such inventions can
be filed;IP/N/1/HKG/2/Add.1
Page 144
(b) apply to these applications, as of the date of application of this Agreement, the criteria
for patentability as laid down in this Agr eement as if those criteria where being applied
on the date of filing in that Member or, where priority is available and claimed, the
priority date of the application; and
(c) provide patent protection in accordance wi th this Agreement as from the grant of the
patent and for the remainder of the patent term, counted from the filing date in
accordance with Article 33 of this Agreement,  for those of these applications that meet
the criteria for protection referred to in subparagraph (b).
_____________________________
70.8.0 Hong Kong, China did make available, as at 1 January 1995, patent protection for
pharmaceutical and agricultural chemical products commensurate with its obligations underArticle 27, and accordingly this paragraph has no application to Hong Kong, China.
Article 70(9)
Where a product is the subject of a patent application in a Member in accordance with
paragraph 8(a), exclusive marketing rights shall be granted, notwithstanding the
provisions of Part VI, for a period of five years after obtaining marketing approval in
that Member or until a product patent is granted or rejected in that Member, whichever
period is shorter, provided that, subseq uent to the entry into force of the WTO
Agreement, a patent application has been filed and a patent granted for that product inanother Member and marketing approval  obtained in such other Member.
_____________________________
70.9.0 See paragraph 70.8.0 above.
Article 71(1)
The Council for TRIPS shall review the impl ementation of this Agreement after the
expiration of the transitional period referred to in paragraph 2 of Article 65. The Council shall,
having regard to the experience gained in its impl ementation, review it two years after that date,
and at identical intervals thereafter. The Council may also undertake reviews in the light of any
relevant news developments which might wa rrant modification for amendment of this
Agreement.
_____________________________
71.1.0 Noted.
Article 71(2)
Amendments merely serving the purpose of adjusting to higher levels of protection of
intellectual property rights achieved, and in force, in other multilateral agreements and
accepted under those agreements by all Members of the WTO may be referred to theMinisterial Conference for action in accordan ce with paragraph 6 of Article X of the WTO
Agreement on the basis of a consensus proposal from the Council for TRIPS.
_____________________________
71.2.0 Noted.IP/N/1/HKG/2/Add.1
Page 145
Article 72
Reservations may not be entered in respect of any of the provisions of this Agreement
without the consent of the other Members.
_____________________________
72.0 Hong Kong, China has not enacted any reservations to the terms of this Agreement in its
implementing legislation.
Article 73
Nothing in this Agreement shall be construed:
(a) to require a Member to furnish any inform ation the disclosure of which it considers
contrary to its essential security interests; or
(b) to prevent a Member from taking any ac tion which it considers necessary for the
protection of its essential security interests;
(i) relating to fissionable materials or the materials from which they are derived;(ii) relating to the traffic in arms, ammuni tion and implements of war and to such
traffic in other goods and materials as is carried on directly or indirectly for thepurpose of supplying a military establishment;
(iii) taken in time of war or other em ergency in international relations; or
(c) to prevent a Member from taking any acti on in pursuance of its obligations under the
United Nations Charter for the maintenan ce of international peace and security.
_____________________________
73.0 Noted.IP/N/1/HKG/2/Add.1
Page 146
ANNEX
TRADE MARKS BILL 1999:
The Shape of Things to Come
Introduction
The Trade Marks Bill 1999 (the Bill) heralds a brave new world for all trade mark owners,
users and practitioners alike and marks the culmination of a reform process that was begun in 1993.
The main policy objectives are:
- The recognition that the rights of trad e mark owners should be strengthened  – there are
two aspects to this. Provided that they are di stinctive, marks operating as trade marks in the
marketplace should be registrable.  The opportunity has also been taken in the Bill to broaden
the powers of trade mark owners.
- The recognition that many of the practices rooted in the TMO are bureaucratic and
time-wasting, without much obvious gain  – TM practitioners will be all too painfully aware
of the delays these practices have contributed to, particularly in registering assignment and in
the conduct of opposition hearings.  One often wonders why the Registrar should "play
nanny" to the activities of commercial entities?
The good new is that the Bill promises to redress this all too common complaint.
More Marks Registrable/Broader Powers of Owners
The present position is that there is a finite group of registrable matters set out in the TMO,
which include, for example, invented words and signature marks.  Such registrable matters must also
be "visually perceptible" if they are to qualify for registration.  Finally, there is a "vexed" distinction
between Parts A and B of the register of trade marks, the tests for registrability of which are not the
same.  In practice, it had become increasingly difficult to make sense of the case law distinguishingthe different tests for Part  A and Part B.
The Bill will abolish the distinction between Part A and Part B.  In future there will be only
one kind of registration and the single test will be whether such a mark "is capable of distinguishing
the goods or services of one undertaking from those of other undertakings".
The present test that a mark has to be "visually perceptible" has also been abandoned and the
Bill's approach is now broadened to include "any sign, or any combination of signs …".  Though the
word "sign" is not defined, it is meant to embrace anything that can function as a trade mark whether
visually perceptible or not.  This approach will, of course, lead to the much-awaited registration of
sound or smell marks, though in reality it will be necessary to represent these marks graphically in
such a way that people can understand what the mark is.  In many cases evidence will be required toprove that such marks are in fact distinctive features of the goods or services applied for.
Another revolutionary change to the existing law is that under the Bill, a mark is effectively
presumed registrable unless it falls foul of the "absolute grounds" and the "relative grounds".  The
term "absolute grounds" means there is an inherent fl aw in the mark itself, for example, signs that are
devoid of distinctive character or signs that designate the kind or quality of goods.  The term "relative
grounds", on the other hand, essentially deals with conflicts with other marks and questions of
priority.IP/N/1/HKG/2/Add.1
Page 147
Although the concept that an application for regist ration is to be refused if the subject mark is
inherently flawed or if it conflicts with a prior registered mark already existing under the TMO, novel
features have been introduced in the Bill which are similar to the regimes in the UK and EU and
which will doubtless be welcomed by owners of well known brands.  Thus, an application for a trade
mark may be rejected even if it conflicts with an identical or similar mark for dissimilar goods if the
earlier trade mark has a reputation in Hong Kong, China and "the use of the later trade mark withoutdue cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of
the earlier trade mark". Hitherto, this protection has been guaranteed by the common law right of
passing off.  Under the terms of the Bill, a trade mark owner will have a statutory right to bring an
action in respect of the use of a mark on dissimilar goods or services.
Working Smart
As mentioned earlier, the Bill contains various measures targeted at cutting "red tape" and
includes the following:
Associated Trade Marks
Associated marks are essentially marks held by the same proprietor which are identical or
nearly resembling each other and are used in respect of the same goods or services or goods or
services of the same description.  At present, the Registrar of Trade Marks may require such marks to
be associated and the net effect is that associated marks may not be assigned separately.
Unsurprisingly, this requirement does not always sit happily with the best commercial arrangementsand endless correspondence does ensue in an effort to wriggle out of the association condition.
Fortunately, the notion of association of trade marks has been dispensed with under the new Bill.
Multiple Class Applications
At present, one application for a trade mark may be made for one class of goods or services
only.  The catch is that there are altogether 42 classes of goods and services.  If an applicant wishes to
have a mark registered in, say, four classes, he or she has to make four separate applications.  Under
the Bill, an applicant will be able to make one application in respect of all four classes.
Registered Users/Licences
The use of a mark may be licensed and provision exists to deal with registration of an
authorised user.  However, the Registrar may only register the user if he is satisfied that the use of the
trade mark "would not be contrary to the public intere st".  It is recognised that this guardian-of-the-
peace role can lead to bizarre results and in practice is quite unnecessary.  Under the Bill, the
licensing of a mark will be quite rightly regarded as a commercial matter between the licensor andlicensee.  Although the parties will still be encouraged to register the licence documentation with the
Trade Marks Registry, the Registrar will be relieved of the duty to vet its terms to determine whether
it is "in the public interest".
Allied to this is the concept of "trafficking" in a trade mark.  Under the existing law, the
Registrar "shall refuse" registration of a user if it appears to him that the registration would "facilitate
trafficking in a trade mark".  "Trafficking" is something of a misnomer – it involves, innocently
enough, the extensive licensing of a trade mark so th at it becomes a commodity in its own right.  It is
not easy to see why this should be impugned, and in any case, putting a stopper on registered users
likely poses an undesirable restriction on character merchandising.  In the event, the Bill does awaywith the concept of trafficking in a trade mark.IP/N/1/HKG/2/Add.1
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Disclaimers
A disclaimer is a condition normally imposed by the Registrar in respect of that part of a mark
containing matter common to the trade or of a non-distinctive character.  The imposition of a
disclaimer often results in long drawn out discussion between the Registry and the private sector.
Under the Bill, it will be for the applicant for registration to offer a disclaimer and the Registrar willno longer have the power to demand one.
Opposition Proceedings
The procedures relating to the conduct of opposition proceedings have been tightened.  Under
the existing Trade Marks Rules, the Registrar has the power to order extensions of time (Rule 91),
which in turn has led to an enormous number of requests from applicants for extensions of time forfiling simple documents such as Notices of Opposit ion and Counter-Statements.  The Bill will impose
non-extendible time limits for filing certain items, which will appear in the new Trade Marks Rules.
Miscellaneous Items
In the light of recent developments with respect to standards and norms, the Bill also deals
with a number of miscellaneous items including exhaustion of rights, well-known trade marks,
bilingualism and groundless threats.
Well-known Trade Marks
Under the existing law, well-known marks have  been protected largely by way of opposition
proceedings.  Outside of opposition proceedings, the common law tort of passing off provides a potent
weapon against unauthorised use of a well-known mark.
The Bill contains express provisions for the protection of a well-known mark.  It enables the
owner of such a mark to restrain by injunction the use of an identical or similar mark for identical or
similar goods where confusion is likely to be caused to the public.  In its present form, the Bill does
not define "well-known", which will be a matter for the courts to decide, but bear in mind that
elsewhere the World Intellectual Property Organization has reached a consensus as to an appropriatedefinition.
Comparative Advertising
This is a commendable change from the existing law under which use of a Part A mark in
comparative advertising is arguably an act of infringement even tough the use is completely honest
and there is no likelihood of confusion or deception.  A tug has always existed between the interestsof brand owners and the consumers' legitimate right to information. The new law espouses
comparative advertising except where it is "contrary to honest practices in industrial or commercial
matters" and where it "without due cause, takes unfair advantage of, or is detrimental to, the
distinctive character or repute of the trade mark".  It is important to note that we are not in uncharted
waters with this wording;  there is a steady stream of case law being decided under the equivalentprovision in the UK Act.
Bilingualism
Under the Basic Law, both Chinese and English are official languages.  The TMO does not
provide for bilingualism although the Trade Marks Registry does recognise it in practice.  Under the
Bill, the language (i.e. Chinese or English) in which an application is filed shall be used as the
language in all proceedings before the Registrar.  However, the new Trade Marks Rules will provide
for a party to use a language other than the language of proceedings (upon terms as to interpretationIP/N/1/HKG/2/Add.1
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and to expenses to be borne).  It will also be possible to file documents not in an official language or
the language of proceedings provided there is a translation into the language of proceedings.
Groundless Threats
The Bill will provide a remedy to anyone threatened with an action for the infringement of
intellectual property rights if the basis for the action is without grounds.  The defendant, i.e. the trade
mark owner, shall have to show that the conduct of  the plaintiff constituted infringement.  This is a
new remedy, which will enable the person "aggrieved" to ask for a declaration that the threats are
unjustified, an injunction against the continuance of the threats, and damages.
The "groundless threats" action is no stranger to IP litigation practitioners.  This is intended to
protect not the primary infringer, but those wh o, knowingly or unknowingly, become embroiled in
another's infringing activities, such as trade outlets at which the spurious goods are sold.  It will be
made clear in the new law what does not amount to  a "threat" and the circumstances under which the
cause of action for threats is extinguished.
Trade Mark Counterfeiting
Unlike its UK counterpart, the Bill does not introduce new criminal provisions addressing
trade mark counterfeiting.  It has been suggested that the existing criminal provisions in the Trade
Descriptions Ordinance (Cap. 362) are regularly invoked in the laying of charges by the Intellectual
Property Investigation Branch of Customs & Excise, with more than satisfactory results.  In any case,s 92 of the UK Trade Marks Act 1994, though entitled "unauthorised use of a trade mark", is targeted
at those who make and sell counterfeit goods.  With that in mind, there appears no good reason to
introduce what in effect is a duplication of the trade descriptions offences in a different guise.
Conclusion
The Bill is a much-welcomed piece of IP-cum-consumer legislation.  Its provisions make
commercial sense but also reflect the needs of the consumer.  It also seeks to strike the right balance
between the grant of private property rights and the elimination of opportunities for abuse.
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