XN000022-1997-03-19 — Page 16

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The Hong Kong Law Reform Commission carried out a first review of registered designs law as part and parcel of its reform exercise on the law relating to copyright, and published its Report on Reform of the Law Relating to Copyright in January 1994 after extensive consultation. The Law Reform Commission recommended that Hong Kong should establish its own designs registry with examination capability and that the novelty test for registrable designs should be local, i.e. the design must be "new" in Hong Kong. They proposed that the new system, including both the procedural and substantive aspects, should be modelled on the UK Registered Designs Act 1949 as amended.

On the procedural aspect, the current international trend is to provide a non- examination system for registered designs. Since the Law Reform Commission made its recommendations, the European Union (EU) has proposed a non-examination system as the norm for registration of designs. We believe that by 1999, the United Kingdom will be obliged to change over to the EU norm.

Experience in other countries suggests that even where search and examination are conducted, it is subjective and difficult for the Registrar to determine the novelty and registrability of a design. We also believe that the substantial investment in staff and other resources required to provide a full search and examination of registered designs before grant is not warranted.

We therefore take the view that, as a matter of procedure, a registered designs system with a formality examination is the best way forward. The registration system, in line with the rest of the new intellectual property system in Hong Kong, should be user-friendly and easy to administer. We have received support for our proposal during the consultation exercise held from December 1996 to January 1997, in particular from the legal profession and practitioners.

As regards the requirement of novelty, the Law Reform Commission recommended that the appropriate standard should be restricted to local novelty. However, it acknowledged that the international trend would seem to be to move away from a local novelty requirement, and the sub-committee appointed by the Law Reform Commission to conduct the review had indeed taken the view that the requirement should be worldwide novelty. We have considered these two views and recommend that we adopt the international norm of worldwide novelty as the standard. We have received support for our proposal during the consultation exercise.

The comprehensive Registered Designs Bill laid before Honourable Members is generally modelled on the UK Registered Designs Act 1949 as amended and the proposed EU design registration system with suitable modifications to cater for the special circumstances in Hong Kong. In preparing the Bill, we have incorporated as far as possible the comments received during the consultation. We have also included as necessary provisions to reflect the agreement reached in the Sino-British Joint Liaison Group on the localisation of the registered designs law.