Definition of a design and what it protects: A design in Hong Kong is defined as "a shape, contour, pattern or decorative feature applied to an article by industrial law that is visually appealing in the finished article". Designs do not include shapes that depend solely on function or designs that are not visible in the finished product. On the other hand, Japan's Design Law defines design as ``the shape, pattern, and color (including combinations) of articles (including parts of articles), buildings (including parts of buildings), or images that create a sense of beauty through the visual sense,'' and partial designs of articles (partial designs) and designs of buildings and images are also subject to protection. Hong Kong does not have a partial design system and it is not possible to register only part of a product independently. On the other hand, in Japan, a partial design system has been established, and it is possible to register a design for a part of a product, such as its shape. In addition, recent legal reforms in Japan have expanded the scope of protection to include the exterior and interior of buildings and the image design on screens. In Hong Kong, buildings themselves are not considered "goods" and are not subject to protection, and image designs alone are not subject to protection.
Novelty and originality requirements: In both countries Novelty is required for design registration. In Hong Kong, a design must be new and not published anywhere in the world as of the date of the registration application, and it must be substantially different from the earlier design except in details. Designs with only slight conventional changes will not be recognized as "new" and will not be registered. In Japan as well, the requirement is that the design be globally novel (absolute novelty), but in addition, it is also required that the design be difficult to create (not easily devised by a person skilled in the art). In other words, in Japan, the creative inventive step of a design relative to a prior design is also examined, and registration of a design that can be easily created from a similar existing design is refused. Although Hong Kong law does not have a written provision regarding ease of creation, it has a substantially similar effect in that designs that are only conventional transformations are excluded when determining novelty.
Designs that cannot be registered and reasons for refusal: In commonDesigns that are contrary to public order and morals cannot be registered. As mentioned above, in Hong Kong, designs whose shape is determined purely by function or whose parts are not normally visible are not eligible for protection, and even if an application is filed, the design will be rejected. In addition, filing an application for another person's design without permission (misappropriated application) is also a ground for invalidation. In Japan, a pure functional shape that does not create a sense of beauty is not a design, and an application that plagiarizes someone else's creation is a ground for refusal (fraudulent design). Furthermore, in Japan, there is a first-to-file rule that prohibits registration of designs that are similar to the earlier application of one's own or others (designs that are similar to the design of the earlier application) (in Hong Kong, designs that are the same or substantially the same as the design of the earlier application are judged to lack novelty). Generally speaking, the reasons for refusal and invalidation in both countries are lack of novelty, violation of public order and morals, risk of infringement of the rights of others, etc., but the difference is that in Japan these are checked through substantive examination, while in Hong Kong they are dealt with only through basic formalities examination and subsequent invalidation proceedings.
Examination method: Japanese design applications go through formality examination and substantive examination (examination of novelty and originality), and are registered only if they meet the requirements. On the other hand, in Hong Kong, only formality examination is carried out, and examination ofsubstantive requirements is not carried out. As long as the application documents meet the formal requirements, the application will be registered without examining novelty, etc. (However, if it is clearly determined that the application is not eligible for registration, the examiner has the authority to refuse). Therefore, in Hong Kong, registration is quick, but there is a system in which a third party can file an opposition (equivalent to an invalidation trial) within two months after registration. In Japan, it takes time to examine the process from application to registration, but the difference is that rights are highly stable, and there are many cases where registrations are unregistered before being challenged in an invalidation trial.
Exception to loss of novelty (grace period): Both countries have remedies if you disclose your own design before filing. In Hong Kong, under certain circumstances, such as when the design right holder (applicant) discloses the design to a third party without malicious intent or in the case of unauthorized disclosure by a third party, the application will not be deemed to have lost novelty if the application is filed within six months of the disclosure. In particular, it is stipulated that designs published at official international exhibitions will not be disadvantaged if they are filed within six months. In Japan, according to Article 4 of the Design Act, an exception to the loss of novelty can be applied if the application is filed within 1 year of publication by the creator (extended from 6 months to 1 year with the 2018 amendment). Therefore, even if you have published your information at a company exhibition or on the website, you can apply without any disadvantage by following the prescribed procedures within one year in Japan and six months in Hong Kong.
≪Main differences in registration requirements≫
| Item | Hong Kong: Registered Design System | Japan: Design system |
|---|---|---|
| Protected object | Exterior design of goods (no partial design system) *Functional shapes and invisible parts are not covered | Includes product design + part of the product, architectural/image design (expanded in recent years) |
| Novelty requirement | Absolute novelty: Must not have been published in the world at the time of filing *Differences in customary details alone are not considered novel | Absolute novelty + difficulty in creation: Something that has not been published in the world and cannot be easily created from a conventional design |
| Examination mechanism | Formal examination only. Novelty etc. will not be examined (post-check for objections/invalidity) | There is a substantive examination. Examiner examines novelty, originality, conflict with prior application, etc. |
| Partial design | Not possible (Only the entire item can be registered) | Available (Partial shapes of articles, etc. can also be registered) |
| Related designs | No system (identical or similar designs are valid only for those who applied first) | Related design system available (similar designs can also be protected with a separate application) |
| Lack of novelty exception | Within 6 months after disclosure (exhibition exhibition, etc.) | Within one year after disclosure (whether self-published or by a third party) |
Filing Jurisdiction/Language: In Hong Kong, the place of filing is the Design Registration Office within the Knowledge Property Office of the Government of the Hong Kong Special Administrative Region. Applications can be completed in English or Chinese, and applications can be submitted in any of the official languages. In Japan, it is a general rule to file an application with the Patent Office in Japanese (if you file in a foreign language, you will need to submit a separate Japanese translation). In practice, Japanese companies generally file electronically through a patent attorney. Hong Kong also has anelectronic filing system, which allows you to complete the application process online. Both countries allow representation procedures by an agent (patent attorney/patent agent), but in Hong Kong it is normal for foreign companies to designate a local agent.
Required documents/information: For Hong Kong design applications, the following information must be included in the prescribed format (Form D1):
(1) Name of the design, (2) Images (photos and drawings) *Multiple images such as 6-view drawings, (3) Locarno Classification (International Classification of Designs) items, (4) Name and address of the applicant, (5) Details and certificate (with English or Chinese translation) if Paris priority is claimed, (6) Certificate of assignment if the applicant has inherited the rights from the creator.
Even in Japanese design applications, the application must include (1) the name of the design (name of the product), (2) drawings or photographs (six views, etc.), (3) applicant/creator information, and (4) priority documents as necessary (in Japan, it is not mandatory to attach a certificate when claiming priority, but it can be submitted at a later date), etc.
In Japan, design classification is assigned by the Patent Office, but in Hong Kong, it is necessary to indicate the Locarno classification at the time of filing. In addition, in Hong Kong, it is possible to include multiple designs in one application (but only if they all belong to the same Locarno classification).For example, multiple products with different designs within the same classification can be filed together. In Japan, the principle is One application for one design, and it is not possible to register multiple similar designs at once (they must be linked by filing separate applications under the related design system).
Set articles/dynamic designs: In Hong Kong, design registration of sets is allowed, and a single set of articles (eg cutlery set, etc.) can be filed as one design. Furthermore, it is possible to register variations of dynamic designs, which can be applied to designs that include changes in the shape of the product or moving parts. In Japan, movable shape changes often require a separate design application for each state, and knitted designs are not recognized (an application is required for each article, and series designs with a sense of unity are protected as related designs). This point is also a procedural difference.
Examination system and period: As mentioned above, there is no substantive examination in Hong Kong, so if there are no problems with the formal requirements, registration can be achieved in a relatively short period of time. The registration certificate will be issued approximately 6 months to 1 year after the application and will be published in the official gazette. If there are any formal deficiencies, a correction order will be issued and the applicant must respond within3 months. If you are dissatisfied with the registrar's decision, you can appeal to the court (similar to filing an objection to the examiner's decision). In Japan, after an application is filed, an examiner conducts a substantive examination at the Patent Office, so the standard examination period is approximately 6 to 12 months before the initial examination result (notification of reasons for refusal or decision to register) is issued. Even if everything goes well, it typically takes a little over a year from application to registration, after going through the process of writing opinions on reasons for refusal and responding to amendments. Although Hong Kong has the advantage of speedy rights acquisition, Japan's substantive examination also has the advantage of ensuring the stability and reliability of rights.
Official fees: In terms of fees, Hong Kong hasrelatively low fees for filing. According to the fee schedule of the Hong Kong Intellectual Property Office, the basic design application fee is approximately HK$735 (discount available for electronic filing) and the publication fee of HK$68 is payable at the time of filing. There is no examination request fee as there is no substantive examination. There is no registration fee, and no additional government fees are required until the registration certificate is issued. Instead, a renewal fee is charged at the time of extension of the term, and the renewal fee increases every five years (e.g. HK$790 for the first renewal and HK$2,690 for the fourth renewal). On the other hand, the Japanese Patent Office fees are application fee 16,000 yen (for electronic filing), which is paid at the time of filing, andregistration fee is paid at the time of registration. In Japan, the registration fee is paid in one lump sum for the first few years.Currently, the registration fee for the first to third years is 8,500 yen per year x 3 years = 25,500 yen (*Additional payments are made annually from the 4th year onward). Therefore, from application to registration, a total of approximately 40,000 yen in government fees is required (*There is no separate examination request fee. The design will be examined at the same time as the application). In Hong Kong, the government fees for registration are low, and maintenance costs are incurred later in life, while in Japan, a certain amount of expenses are incurred from application to registration, and a pension is paid every year thereafter.
≪Main differences in application procedures≫
| Item | Hong Kong | Japan |
|---|---|---|
| Language/method | E-filing available in English or Chinese | Filing in Japanese, electronic filing supported |
| Required documents | Application (design name, drawing/photo, applicant information, Locarno classification, etc.) *Certificate must be submitted if priority is claimed | Application (product name, drawings, etc., applicant information) *Priority claims must be declared within 6 months (can be submitted after the certificate is submitted) |
| One application scope | Multiple designs can be registered in one case if they are in the same category. Set designs and motion designs can also be registered | One application, one design (Related designs must be filed separately) Separate applications are required for set articles and dynamic changes |
| Review | Formal examination only (rapid registration) | Substantive examination (novelty examination) |
| Application to registration period | Register in about 6 months to 1 year | About 1 year ~ (depending on review status) |
| Application/registration fee | Application fee approximately HK$735 + Publication fee HK$68Renewal fee: Increase every 5 years (up to HK$2,690) | Application fee: 16,000 yen Registration fee: 25,500 yen for the first 3 years Pension: Paid annually (gradual increase each year) |
Initial Duration: The duration of a registered design right in Hong Kong isfor the first five years from the date of application for registration (priority date). A 5-year rights period is automatically granted at the time of registration. Due to recent revisions, the duration of a design right in Japan is set at 25 years from the filing date (previously it was 20 years from the registration date, but it was extended in the 2020 revision). In Japan, the term is not granted all at once at the time of registration, but can last for up to 25 years starting from the filing date. Therefore, if the examination takes a long time, it will expire in 25 years, including that period, but in Hong Kong, the deadline is 5 years after registration, so early registration = early counting starts (however, in Hong Kong, the starting point is the filing date, so the maximum 25 years based on the filing date is the same).
Renewal/Extension System: In Hong Kong, rights can be extended in increments of 5 years by completing the prescribed renewal procedures before the expiration of the initial 5 years. It can beupdated up to fourtimes and lastup to 25 years (5 years x 5 periods). Renewal procedures are carried out by submitting a renewal notification (Form D11) to the Intellectual Property Office before the expiration and paying the renewal fee. Renewal fees are set higher each time (e.g. 1st HK$790, 2nd HK$1,200...4th HK$2,690). If the right is not renewed by the deadline, the right will expire, but in Hong Kong, it is possible to apply for an extension with an additional fee within six months of expiry as a grace period (*It is assumed that this is the same remedy as for patents). On the other hand, there is no renewal system for Japanese design rights, and there is no need to go through the process of extending rights. Design rights automatically expire 25 years after the filing date. Instead, in Japan, annual payment of pension (registration fee) is required.ng> system, and you can maintain your rights by paying a prescribed registration fee every year. For example, when you register, you pay for years 1 to 3 in one lump sum, and from the 4th year onward, you make additional payments each year. If you fail to pay your pension, it will expire after the grace period (6 months) has passed. In other words, although there is no formal "renewal application" in Japan, it is similar in that the rights are maintained every year by paying a pension.
Maximum Duration and Recent Trends: Both systemsAs a result, the maximum duration of a design right is the same at25 years. In Japan, the period has been extended to 25 years due to the trend of international harmonization in recent years, and Hong Kong has also consistently adopted a period of 25 years, following the former British law. Furthermore, in Japan, there are cases in which old designs from before the Design Act was revised (for example, those filed before 2019) expire in 20 years from the date of registration, but under the current system, new applications have a flat period of 25 years. On the other hand, in Hong Kong, before the handover to China in 1997, Hong Kong protection was granted on the condition that it was registered in the UK, but since the current Design Ordinance came into effect in 2012 and has transitioned to an independent system, the term has always been 5 years x 5 = 25 years. There is no system in any country/region to extend design rights beyond 25 years, and after the protection period expires, the design becomes public domain.
Contents of rights (exclusive rights): The registered design right holder has the right to exclusively implement (use) the product to which the design belongs. A registered design in Hong Kong provides exclusive rights for the design owner to do the following with respect tothe registered article and any article to which the design (or a design that is not substantially different) is applied:
Manufacture: Manufacture of goods bearing the design within Hong Kong
Import: Importing the designed article into Hong Kong for the purpose of sale or rental
Sale, etc.: Selling, renting, offering to sell or renting, or displaying the designed article in Hong Kong
Japanese design rights are essentially the same, and provide an exclusive right to apply a registered design or a design similar to it to a registered product (or similar product) and carry out the following actions as a business. In other words, exclusive rights include requests for manufacture (use), transfer (sale), leasing, import, transfer, etc. For example, in Japan, manufacturing and selling products with the same or similar design to a registered design without permission from the design owner constitutes infringement. The difference between the two systems is that in Hong Kong, the scope of rights is not limited to the types of goods. This interpretation is that even if a design that is substantially the same as a registered design is applied to a product in a different category, it may constitute an infringement. On the other hand, in Japan, the effect of design rights is limited to registered products and products similar to them. For example, in Japan, the design right for a chair only extends to chairs (similar scope includes furniture, etc.), and even if the same design is used for products in completely different fields, it will not immediately become an infringement (unless the design falls within the similar scope). In Hong Kong, the law does not explicitly exclude other fields, and in practice, it is highly likely that the same design will be protected regardless of the product field, and the scope of rights is broader than in Japan.
Requirements and determination of infringement: The basic requirement for infringement isthat a third party carries out the monopolistic acts mentioned abovewithout the permission of the right holder. In Hong Kong, if a product has a design that is ``same or substantially different'' from the registered design, it is considered an infringement. In Japan, infringement also occurs when a registered design or a design similar to it is applied to a target product (same or similar product). In both countries, the determination of whether or not they are "similar" depends on observation of overall aesthetics, but in Japan there is a wealth of similar judgments under the Design Law and examination standards, and in Hong Kong, under the influence of old British law, the standard of "same or different impression by visual observation" is used (substantially no difference = difference that cannot be distinguished visually). In any case, regardless of whether it is an imitation or an original creation, the common point is that if the design is close to the copyrighted design, it will be considered an infringement.
Exceptions to acts of infringement: In both countries, private persons' personal, non-commercial use or implementation for experimental and research purposes are not included in the scope of rights and do not constitute infringement (clearly defined in both the Hong Kong Design Ordinance and the Japanese Design Act). In addition, in Japan, there are remedies to prevent mutually infringing designs that are similar to a registered design (related designs or "single design similar designs" which is an exception to the one-design-one-application rule), but in Hong Kong, it is necessary to be careful as registering a similar design in a separate case may cause a novelty conflict with the earlier application.
Civil proceedings and remedies: Remedies for infringement of design rights include civil proceedings. In Hong Kong, it is common practice to file a lawsuit with the High Court to seek an injunction and damages. In Japan, we also file lawsuits in local courts (specialized divisions in Tokyo and Osaka) and seek civil remedies (such as requests for injunctions and claims for damages). **Remedies (civil)** are almost the same in both countries, and rights holders can request the following remedies:
Injunction: A court order ordering the defendant to stop the infringement and prevent it from happening again. This includes injunctions on manufacturing and sales and prohibitions on future infringement.
Damages: Compensation for business losses incurred due to infringement. In Japan, there are specific provisions regarding the calculation of lost profits and the amount equivalent to royalty fees (Article 39 of the Design Act, etc.), but in Hong Kong, the standard for compensation is basically the reduced profits of the right holder and the unjust enrichment of the infringer.
Discharge of profits (account): Under Hong Kong law, the infringer can also demand the return of profits obtained from the infringing act (restitution of unjust enrichment). In Japan, as a form of claim for damages, it is permitted to consider the profits earned by the infringer as the amount of compensation.
Seizure/Destruction: Hong Kong also provides for an order for delivery of infringing goods (deposit) as a remedy. In Japan, it is also possible to request the destruction of infringing goods and manufacturing equipment in civil litigation, and the court will order the destruction of infringing goods as necessary (Article 37 of the Design Law).
Hong Kong's unique systemincludes remedies forwarning frivolous infringement suits. If a third party is unfairly warned that ``you are infringing a design right,'' there is a provision in place that allows the party receiving the warning to file a countersuit for an injunction or compensation for damages (the so-called Groundless Threat relief system). Japan clearly does not have such a system for contesting the act of warning itself, but it should be noted that in Hong Kong, rights holders can be prosecuted if they issue excessively threatening warnings. However, warnings to manufacturers and importers are considered legal, and there is no problem as long as they are within the scope of legitimate exercise of rights.
Administrative/Criminal Measures: In Japan, intentional infringement of design rights can be subject to criminal penalties (Article 69 of the Design Act provides penalties, and infringers can be sentenced to prison or fines if prosecuted). However, in practice, there are only a few cases where criminal charges are filed for design infringement, and most cases are resolved civilly. In Hong Kong, there is no criminal penalty per se forinfringement of design rights. Unlike trademarks and copyrights, products that infringe on designs are not subject to injunctions by Hong Kong Customs (Customs actively cracks down on counterfeit trademarks and pirated copies, but does not get involved in products that infringe on patents or designs). Therefore, in disputes with Hong Kong companies, private redress through civil litigation is the only recourse available. In this regard, in Japan, customs has a border control system for trademarks and copyrights, but the border injunction system for designs is not clear (many cases are effectively dealt with using trademark rights, etc.), and in both countries, countermeasures against design infringements are centered on civil litigation.
Hague International Design Registration: Japan is a member country of the Hague Agreement (a party to the Geneva Act), and from 2015 onwards, it is possible to designate Japan when applying for international design registration. Additionally, Japanese companies can use the Hague system to file design applications in multiple countries with a single application. In contrast, Hong Kong is not covered by the Hague Agreement. China acceded to the Hague Agreement in 2022, with the express reservation that the Agreement does not apply to Hong Kong and Macau, and Hong Kong cannot be directly designated in international registration applications. In other words, in order for a Japanese company to obtain a design right in Hong Kong, it mustfile an application directly in Hong Kong. This means that registrations in mainland China or the UK do not automatically extend to Hong Kong (as with trademarks, Hong Kong is its own IP jurisdiction). Before the handover, there was a re-registration system that allowed UK design registrations to be extended to Hong Kong, but there is currently no re-registration system. Therefore, in order to protect their product designs, Japanese companies must apply directly to Hong Kong to obtain rights. Conversely, when a Hong Kong company obtains design protection in Japan or other countries, the Hague cannot be used, so it is common to apply directly in each country using Paris priority.
Priority under the Paris Convention: Both regions aremembers of the Paris Convention (Hong Kong is subject to the application of the Chinese Convention), so priority can be claimed if the application is filed within 6 months of the foreign application. For example, if you apply for a design in Japan and file it in Hong Kong within six months, the novelty of the design will be determined based on the filing date in Japan. Priority documents (certificate and translation issued by the Japan Patent Office) must be submitted at the time of filing in Hong Kong (can be submitted at a later date). Similarly, in Japan, you can claim priority by filing within 6 months of the earlier application in Hong Kong. The priority period is 6 months for industrial designs, and this is universal. Therefore, Japanese companies with overseas expansion in mind should consider filing in major markets (including Hong Kong) within six months of filing domestically. In Japan, the Paris priority period for trademarks and designs is 6 months, but for patents (inventions) it is 12 months, so be careful not to confuse them.
Other international collaboration: There is cooperation between the Hong Kong Intellectual Property Office and the Japan Patent Office in the field of patents, such as the examination highway, but in the field of designs, there is no such framework as examination itself is not located in Hong Kong. However, since Hong Kong operates in English and application documents (applications and drawings) can be prepared in English, the procedural hurdles for Japanese companies are relatively low. Japan uses the International Classification of Designs (Locarno Classification) as reference information, but it is not mandatory and has used its own classification. Hong Kong, on the other hand, relies entirely on the Locarno classification. Because of this difference, it has been pointed out that when specifying Japan in an international application (Hague), there are requirements unique to Japan (for example, the method of submitting documents for images and the requirements for describing the application), and it is necessary to be careful. However, in recent years Japan has also been striving to harmonize its systems, and consistency with foreign applications is increasing. Overall, for Japanese companies, the procedures for design protection in Hong Kong are simple, except for the fact that the Hague cannot be used, and while English is the official language and there is no examination system, it is easier to obtain rights, but when exercising rights, it is necessary to be more careful than in Japan (risk of invalidation, how to issue warnings, etc.). Hong Kong has been introduced as an important market for Japanese companies in manuals for countering counterfeit products, etc., and it is desirable to understand the above-mentioned system differences and use it strategically.
≪Comparison of international application systems≫
| Item | Hong Kong | Japan |
|---|---|---|
| Access to the Hague Agreement | Not joined (cannot be specified in international application) *Chinese accession does not apply to Hong Kong | Participating countries (from 2015). Can be specified in Hague application |
| Foreign priority | Paris priority granted for 6 months | Same as left (6 months Paris priority) |
| Re-registration system | None (separate application required for mainland China and the UK) | None (needs to apply for each design in each country) |
| Language/Format | English or Chinese. Locarno classification required | Japanese. Drawing requirements and application items are unique (be careful when applying internationally) |
| Examination cooperation | (Nothing in particular as there is no review) | It is possible to specify other countries via The Hague. Examination highways, etc. are undeveloped for designs |
Hong Kong Intellectual Property Department (HK) official website
Japan Patent Office “Hong Kong Intellectual Property Protection Manual” (edited by JETRO Hong Kong Office Intellectual Property Department) 2021 revised edition
Japan Patent Attorneys Association Patent Magazine “Design Protection of Industrial Products in Hong Kong: Copyright and Registered Designs” Andrea Fong (2014)
INPIT overseas intellectual property production database “Overview of the design system in Hong Kong” “Comparison of examination systems for design applications in Japan and Hong Kong”
JETRO "Hong Kong - Technology and Intellectual Property Rights System" related page
Hong Kong Community Law Information Center (CLIC) Design Q&A
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).