TNAG-2890-FCO40-4162-Reform-and-localisation-of-the-Hong-Kong-Patent-System-1993 — Page 223

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design law could assist. An unregistered design right, such as the right introduced by the Copyright Designs and Patents Act 1988 in the United Kingdom, but not in Hong Kong, could also assist.

11.12.

In some cases, the idea underlying the original product may be taken, but the shape of the article is changed by the third party. In such a case, laws which protect only the outward shape of the original product will not help the owner.

11.13.

There may be cases where even though the outward shape of the original product has been changed, the third party has been compelled to incorporate into his product an element which functions only because it has a particular shape. Even if it cannot be seen from the outside, the shape of an element taken from the original product may be protected by the law of copyright in Hong Kong, and would also be protected by the unregistered design right in the UK. Such protection is fortuitous for the copyright owner, and is not the rule.

Copyright

11.14.

The law of copyright can be used to prevent a third party from copying the form of the original product. Under copyright law, protection is given to drawings as "artistic works" irrespective of artistic merit. Accordingly, industrial drawings may be protected by the law of copyright. Copyright in an industrial drawing may be infringed if the work is converted into three dimensional form and that form is copied, unless the object produced would not appear to non-experts to be a reproduction of the drawing. Copyright will even protect the shape of elements which are hidden from view if they are made from drawings.

11.15. The wide scope of copyright protection appears clearly from the British Leyland case: British Leyland Motor Corporation v Armstrong's Patents, [1986] 1 AC 577, where the House of Lords felt obliged to hold that exhaust pipes made to the plaintiff's design infringed the plaintiff's copyright even though the pipes were only functional objects and even though they were not capable of being protected by patent law. However, their Lordships found against the plaintiff because an owner should have the right to repair his goods without breaching copyright and this right extended to the supplier of spare parts.

11.16. Despite its wide scope, copyright law cannot be relied upon where, in taking the original product, the third party is not compelled to copy the shape of any of the elements in the original product, but takes only the underlying idea.

Registered designs

11.17.

Under the United Kingdom Designs (Protection) Ordinance, Cap. 44, the registration of a design in the United Kingdom is effective to protect the design in Hong Kong. The proprietor has certain exclusive rights over the design for a period of 25 years from the date of registration. Another article can infringe the protected article even if it is independently created.

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