The British administration and jurisdiction over Hong Kong, which began under the Convention of Chuenpi (signed January 20, 1841 following the "First Opium War"), will end in less than nine months. On July 1, 1997, Hong Kong will become a Special Administrative Region ("HKSAR") of the People's Republic of China ("PRC"). Nevertheless, it is not expected that the substance of current Hong Kong laws regarding intellectual property will change radically.
Intellectual Property Laws in Hong Kong. Presently, the statutory office of the Hong Kong Government's Intellectual Property Department, which was established in 1990 to take over the former Trademarks and Patents Registries, provides and administers an established system of trademark and patents registration. The department is also responsible for enhancing other forms of intellectual property protection, and is to serve as a focal point for the further development of Hong Kong's intellectual property regime. The current law in Hong Kong generally follows the English Law, and U.K. legislation may be applied to Hong Kong either directly, by order of Her Majesty-in-Council, or by ordinances passed by the Hong Kong legislature. In practise, there are three main international agreements on Intellectual Property that are applicable to Hong Kong:
The Paris Convention on the Protection of Industrial Property 1883, applicable to Hong Kong since 1977;
The Berne International Copyright Convention 1886, applicable to Hong Kong since 1972; and
The Universal Copyright Convention 1952, applicable to Hong Kong since 1973.
The transition to HKSAR should not affect Hong Kong's obligations under these and other international agreements related to intellectual property. Furthermore, it is expected that the HKSAR will be allowed to seek individual membership to conventions to which the PRC is not a signatory.
Trademarks. The Trademark Registry is a registry of original registration independent of the United Kingdom. Trademarks are registered under the Trademarks Ordinance (Cap. 43), the provisions of which are similar to the Trademarks Act 1938 in the United Kingdom. Since March 1992, it has been possible to register trademarks for services as well as goods. Every mark, even if it is already registered overseas, must first satisfy the requirements of the relevant ordinance before it may be accepted for registration. Once registered, the mark is protected for 7 years and may be renewed for another 14 years. Licensees may also file their interest in a mark. It is expected that the Hong Kong Trademarks Registry will continue to operate separately and independently of Beijing until at least the year 2047 and that Hong Kong will continue its first-to-use system while the PRC will continue its first-to-file system. Registration in Hong Kong will give no rights in the PRC and registration in the PRC will give no rights in Hong Kong.
The Intellectual Property (World Trade Organisation Amendments) Bill was published on October 6, 1995. The Bill is designed to amend existing legislation and rules to ensure that Hong Kong's trademark law complies with the requirements of the World Trade Organisation Agreement signed at Marrakesh in 1994, in particular the Agreement on Trade Related Aspects on Intellectual Property Rights (TRIPS).
Patents. Unlike trademarks, the Patents Registry is not a registry of original registration. Hong Kong reregisters patents that have been granted in the United Kingdom under the Patents Act 1977, and European patents that designate the United Kingdom as a country to which the patent extends. All primary registrations must be effected in London or Munich. There is no independent patent examination system. The Registration of Patents Ordinance provides that any grantee of a United Kingdom patent or European patent (United Kingdom) may, within five years from the date of grant, apply to have the patent registered in Hong Kong. Registration of a United Kingdom patent or European patent (United Kingdom) in Hong Kong confers on the grantee the same privileges and rights as if the patent had been granted in the United Kingdom with an extension to Hong Kong. Privileges of the patent run in Hong Kong from the commencement of the term of primary registration for as long as the patent remains in force. Protection is for 20 years from the date of filing in the United Kingdom or the European Patent Office.
A Patents Steering Committee was set up to advise the Government on what type of patent system should be adopted for Hong Kong's future needs. The Committee issued its report in January 1993. The main recommendation of the Committee was that Hong Kong retain its reregistration system but that it be extended to include patents first registered in the European Patent Office and the PRC. It also recommended that Hong Kong have its own patent legislation and not rely upon the United Kingdom Patents Act 1977. The system proposed by the Committee has the following main features:
1. A Hong Kong patent will be obtainable by reregistration of any patent granted by the European Patent Office regardless of the countries designated. Subject to transitional provisions, reregistration of United Kingdom national patents will be possible.
2. The resulting Hong Kong patent will be completely independent of the European patent. It will be subject to renewal fees in Hong Kong, may be amended in Hong Kong, may be challenged in Hong Kong, and may be subject to compulsory licensing in Hong Kong.
3. The Committee has also proposed that Hong Kong should introduce a "petty patent" or "utility model" system for which there will be no examination of applications other than for formalities, but applicants will be required to submit a patent search report from an "authorised agency," which may, for example, be a patent office or a commercial searching organisation. The maximum duration of a petty patent will be six years.
Copyright. Since 1972, U.K. legislation has been incorporated in Hong Kong by Copyright (Hong Kong) Order 1972 and by reference under the Copyright Ordinance. As a result, the copyright law of Hong Kong is to a great extent the same as the United Kingdom Copyright Act of1856 as amended by the United Kingdom Design Copyright Act of 1968, and the United Kingdom Copyright (Computer Software) Amendment Act of 1985. The copyright law protects literary, dramatic, musical and artistic works as well as mechanical rights in sound recording, films, TV and radio broadcasts and the typographical format of printed editions. The copyright law treats computer programs as literary works. There is no system for registration of copyright in Hong Kong. Copyright automatically arises upon creation. Protection is afforded to copyrighted works first published in Hong Kong, or in a member country, or where the author was domiciled or resident in a member country at the time the work came into existence. The prevention of illicit copying is of major concern for the entertainment, music and computer software industries, and is actively enforced by the Copyright Division of the Customs and Excise Department. In addition, the Copyright Ordinance was amended in March 1994 to protect the original layout-designs (topographics) of integrated circuits of qualified persons. Protection is automatic and there is no need to register or deposit the layout-design (topography) in Hong Kong. Satellite broadcasts originating in Hong Kong also have some protection.
During 1995 the Law Reform Commission released its detailed report on the reform of the law of copyright and designs. The Commission's Report recommended the enactment of a comprehensive Copyright Ordinance borrowing heavily from the United Kingdom Copyrights, Designs and Patents Act 1988. Amongst its recommendations, the Commission proposed the creation of a regime for the protection of artists' rights in performances in recognition of their creative contribution.
Design Registration Law. The protection of registered designs is governed by the United Kingdom Designs (Protection) Ordinance. Under this Ordinance the proprietor of any design registered in the United Kingdom acquires the same rights and privileges as does a proprietor in the United Kingdom who has been issued a Certificate of Registration with an express extension to Hong Kong. The extension of a design registration to Hong Kong is automatic (unlike patents, where an application has to be made). In general, a design registration remains in force in Hong Kong for as long as it remains in force in the United Kingdom. Registration lasts five years from the date of application, but may be renewed upon payment of a fee every five years thereafter, to a maximum of 25 years. In November 1993, the Law Reform Commission published its Report on Reform of the Law relating to Copyright, in which it recommended the abolition of the present system and the establishment of a separate and independent Designs Registry in Hong Kong. The Intellectual Property Department is considering the manner in which these recommendations are to be implemented.
Hong Kong has well-established laws and maintains a vigorous protection of intellectual property rights. These laws should not be changed by the transition to PRC control. In addition, modern administrative systems are being established, namely for computerised processing of applications for registration of trademarks, patents and designs, in both English and Chinese. As a result, enforcement and prosecution against copyright piracy and trademark counterfeiting should also not suffer, assuming that PRC officials have the political will to enforce these laws and use these systems.
