Trademarks
1) The definition of a trademark has been expanded to include "any sign that is visually perceptible and capable of being represented graphically." Under this definition, certain shapes (but probably not sounds or smells), if capable of being represented graphically, may now be registrable.
2) The definition of infringement of a trademark has been expanded, so that a registration may be infringed by use of an identical or confusingly similar mark, not only in relation to goods or services covered by the registration (as was the case under the former Ordinance), but also in relation to goods or services of the same description, where such use would result in a likelihood of confusion. As the phrase "of the same description" covers only goods or services provided in the same business, this provision is not as broad as it should be under Article 16 of GATT-TRIPS.
3) Trademark owners may now apply to the High Court for an order directing the Commissioner of Customs and Excise to take appropriate steps to seize and detain infringing goods imported into Hong Kong. The application may be made ex parte, with notice to the Commissioner, and must be supported by an affidavit giving grounds sufficient to make out a prima facie case.
4) Under the transitional provisions, only infringements, which first occurred after May 10, 1996, will be affected by the new Ordinance. Pending trademarks that were not advertised prior to May 10, 1996, may be converted into applications under the new Ordinance and be examined thereunder, provided notice is given to the Registrar and payment of an official fee is made by November 9, 1996.
2) The definition of infringement of a trademark has been expanded, so that a registration may be infringed by use of an identical or confusingly similar mark, not only in relation to goods or services covered by the registration (as was the case under the former Ordinance), but also in relation to goods or services of the same description, where such use would result in a likelihood of confusion. As the phrase "of the same description" covers only goods or services provided in the same business, this provision is not as broad as it should be under Article 16 of GATT-TRIPS.
3) Trademark owners may now apply to the High Court for an order directing the Commissioner of Customs and Excise to take appropriate steps to seize and detain infringing goods imported into Hong Kong. The application may be made ex parte, with notice to the Commissioner, and must be supported by an affidavit giving grounds sufficient to make out a prima facie case.
4) Under the transitional provisions, only infringements, which first occurred after May 10, 1996, will be affected by the new Ordinance. Pending trademarks that were not advertised prior to May 10, 1996, may be converted into applications under the new Ordinance and be examined thereunder, provided notice is given to the Registrar and payment of an official fee is made by November 9, 1996.
Copyright
1) The Ordinance provides for new copyright protection for performers of musical, dramatic and literary works. Performers of such works may now take steps to prevent certain unauthorized recordings, subsequent re-recordings, broadcasts of performances or any public showing or playing of certain unauthorized recordings or broadcasts. The term of protection is 50 years from the end of the calendar year in which a work is performed and extends to performances anywhere in the world by persons domiciled or resident in Hong Kong.
2) Copyright owners may prevent the rental of certain computer programs and sound recordings without their consent. Under the transitional provisions, only infringements occurring on or after May 10, 1996, are subject to the new Ordinance.
3) Criminal penalties, including fines and imprisonment, may be imposed for offenses committed outside Hong Kong that constitute, aid, abet or procure copyright infringement in Hong Kong. These offenses include the manufacture of infringing goods for import into Hong Kong, the manufacture of articles intended to be used in Hong Kong to make infringing goods, the manufacture of articles for use outside Hong Kong in making infringing goods for import into Hong Kong, as well as export from Hong Kong of articles for use in making infringing goods for import into Hong Kong. However, the manufacture of goods with the consent of a foreign copyright owner will not constitute an offense under the Ordinance.
4) The Ordinance enables copyright owners to apply to the High Court for an order directing the Customs authorities to seize and detain suspected infringing goods on or after importation to Hong Kong under the same conditions as outlined above for trademarks.
2) Copyright owners may prevent the rental of certain computer programs and sound recordings without their consent. Under the transitional provisions, only infringements occurring on or after May 10, 1996, are subject to the new Ordinance.
3) Criminal penalties, including fines and imprisonment, may be imposed for offenses committed outside Hong Kong that constitute, aid, abet or procure copyright infringement in Hong Kong. These offenses include the manufacture of infringing goods for import into Hong Kong, the manufacture of articles intended to be used in Hong Kong to make infringing goods, the manufacture of articles for use outside Hong Kong in making infringing goods for import into Hong Kong, as well as export from Hong Kong of articles for use in making infringing goods for import into Hong Kong. However, the manufacture of goods with the consent of a foreign copyright owner will not constitute an offense under the Ordinance.
4) The Ordinance enables copyright owners to apply to the High Court for an order directing the Customs authorities to seize and detain suspected infringing goods on or after importation to Hong Kong under the same conditions as outlined above for trademarks.
Editor's Note: See our subsequent report in our July 1997 Newsletter.
