Protection of Graphical User Interfaces as Registered Design Rights or Design Patents in Hong Kong

• For 1 design for articles not forming a set of articles (for each article to which the design is to be applied), the official fee is HKD235 (e-filing) or HKD312 (paper filing).
• For 1 design for 1 set of articles, the official fee is HKD470 (e-filing) or HKD630 (paper filing).
• For 2 or more designs for articles not forming a set of articles (only applicable to same class of articles), the official fee for the first article to which the first design is to be applied is HKD235 (e-filing) or HKD315 (paper filing); the official fee for each other articles to which any of the designs is to be applied is HKD175 (e-filing) or HKD235 (paper filing).
• For 2 or more designs for articles forming a set of articles (only applicable to same class of articles), the official fee for the first design is HKD470 (e-filing) or HKD630 (paper filing); the official fee for each other design is HKD355 (e-filing) or HKD470 (paper filing).
• For advertisement in the official journal of the registration of a design (per design), the official fee is HKD62.

• In Hong Kong, registered designs are initially protected for five years from the filing date. To maintain the design registration, renewal fees is to be paid every five years, up to a maximum of 25 years.
• The official fee for the 1^st five year extension (covering year 6 to year 10) is HKD475.
• The official fee for the 2^nd five year extension (covering year 11 to year 15) is HKD835.
• The official fee for the 3^rd five year extension (covering year 16 to year 20) is HKD1,410.
• The official fee for the 4^th five year extension (covering year 21 to year 25) is HKD2,420.
• The official fee for late payment of renewal fee is HKD390.

Presuming it is a straightforward application with no complications/objections from the Designs Registry, subject to the workload of the Designs Registry, it would usually take 3 months from the filing date to the grant of a registered design right in Hong Kong.

• In Hong Kong, there is no unqualified self-disclosure period.
• It is only in limited circumstances (set out in Section 9 of the Registered Designs Ordinance) that prior disclosure of a design does not destroy the novelty of the design. Such circumstances include (1) disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design, or the communication of the design by the proprietor to a government department or to any person authorised by the government department to consider the merits of the design, or if anything done in consequence of such a communication; and (2) disclosure by way of displaying at the official exhibition which is open within 6 months prior to the application for registration.

There is no provision for deferring publication of a registered design application in Hong Kong. Once registered, the design is published.

No Power of Attorney is required for filing an application for registration in Hong Kong. The application must include particulars of the applicant, title of article, the Locarno classification of the design, clear representations of the design, description of the views (such as respective view, front view etc.) and a statement of novelty.

• Where priority is claimed, the applicant is required to file a copy of certificate issued by the competent authority of the relevant Paris Convention country or WTO member verifying, (1) the country, territory of filing; (2) the filing date and number; (3) the representation of the design; and (4) the articles covered by the previous application.
• If any copy of certificates or other document relating to the previous application is in a language other than English or Chinese, the applicant needs to file a translation into English which states the translator and his official capacity (if any).
• The certificate(s) is to be filed together with the application, or at the latest within 3 months of the filing date of the application.
• WIPO DAS codes are not currently accepted.

In Hong Kong, application for registration of design is subject to formalities examination only. There is no substantive examination.

No.

There is examination for formalities of the priority claims only. There is no substantive examination of the priority claimed.

• No. There is no opposition period/procedure before registration is granted for design in Hong Kong.
• Third parties may challenge the validity of a design registration after registration has been granted.

• There is no strict limit of the number of representations.
• Representation must be clear and be attached to the application form. Only one side of the paper should be used and each sheet should show the total number of sheets in the set (e.g. 1/3, 2/3 and 3/3).
• Representations should be labelled with short designations for each view. The views should include one perspective view.
• Representations should show all details of the article clearly and should be capable of being reproduced clearly.
• Representations should not contain any words that are merely descriptive and not intended for protection as part of the design.
• Where a design is to be applied to a set of articles, the representations should show the design as applied to each different article included in the set.
• For multiple applications, representations should be labelled M001, M002 etc. The representation for each of the multiple designs shall be affixed to separate sheets.
• Drawings or photographs should be not more than A4 size.

As a starting point, registered design protection in Hong Kong is intended for the physical appearance of tangible articles, rather than for purely digital or virtual items. As such, only when GUI is shown as being applied to a specific product (for example, a mobile phone, tablet, or computer screen), and the design application clearly illustrates the GUI as part of the appearance of that product, it is registrable as registered design under Hong Kong laws.  For this reason, a sequence or animations cannot be protected within a single design application for a GUI, and instead each static image as shown on the relevant device will need to be applied for registration. For same reasons, video uploads are not permitted.

Written disclaimers are generally not accepted. The scope of protection is determined by the representations (drawings or photographs) and the statement of novelty.

• Hong Kong recognizes various drawing conventions for GUI design applications, including line drawings, colour drawings, photographs, and shading. Multiple types of dotted lines are permitted to represent different aspects of the design, provided they are used consistently and clearly explained in the application.
• The lines of drawings must be even and boldly drawn.
• Photographs must be clear originals. The articles should be shown against a neutral plain background without shadows or reflections. Photographs must not be instant type photographs. Photographs should be firmly affixed to the backing sheets by double-side adhesive tape and glue must not be used.

• GUIs may also be protected under copyright law in Hong Kong, if it falls under one of categories of copyright work under Copyright Ordinance (Cap 528), for example, graphic work and is the author’s own intellectual creation. However, the functional aspects of the GUI are not protected under copyright law.
• GUIs may also be protected as a registered trademarks through the registration of certain elements in the GUIs such as the screen display, icons, brands or logos, and might be appropriate if GUIs (or certain elements thereof) do serve as a badge of origin.

They can co-exist as the scope of protection as well as the duration of the protections are different.

Unlike in UK and EU where practice and jurisprudence with respect to GUIs have been developed, the practice in this regard in Hong Kong is less developed. This, coupled with the fact that under the Registered Designs Ordinance only those in relation to tangible objects can be protected as registered designs, presents challenges and difficulties if one would like to apply for registration of GUIs as a registered design in Hong Kong. This is particular so in terms of capturing the “interface” part – a sequence or animation component of GUIs.

Applicants should file an application for registration before any public disclosure, provide comprehensive representations (including all relevant views and states), and clearly indicate the novel aspects of the GUI in the statement of novelty.

Applications must be filed directly with the Designs Registry in Hong Kong.

There are no publicly announced legislative changes specifically concerning GUI design protection in Hong Kong at this time. However, applicants should monitor for updates, as IP law is subject to periodic review.