Consultation Paper on Unfair Competition and Intellectual Property Rights


CONSULTATION PAPER ON UNFAIR COMPETITON AND

INTELLECTUAL PROPERTY RIGHTS


General

  1. The Bar notes that Hong Kong’s present system complies with its
    obligations under the relevant international conventions in relation
    to the matters canvassed in the above paper.
  2. The Bar is also unaware of any expressions of public concern that
    the existing law with regard to those matters is inadequate.

  3. Imitation of get-up

  4. The get-up of a product can be protected not only by the law of
    registered trade marks and passing off, but also by that of copyright
    and registered designs. Copyright can subsist in any underlying
    original artistic and literary works, whether they are reproduced
    in the packaging of the product or in the product itself. Anyone
    copying the product or the packaging (or dealing in infringing copies)
    will be liable for infringement of copyright in those underlying
    copyright works. Further, features of shape, configuration, pattern
    or ornament applied to the product (but not the packaging) can be
    the subject of registered design protection, provided that they
    are new. Anyone making or dealing in products bearing such features
    will be liable for registered design infringement. The rights conferred
    by copyright and registered design are limited in time unlike (subject
    to continued use) those in registered trade marks and passing off.
  5. The Bar considers that these rights provide more than adequate
    protection for get-up, whether it be the packaging or the product
    itself. Further, the Bar sees no reason for protecting get-up by
    an action for passing off if the plaintiff fails either to establish
    the relevant reputation or goodwill or to prove confusion or deception.

  6. Right of commercial exploitation of personality

  7. The Bar believes that the existing laws of defamation, malicious
    falsehood and passing off provide adequate protection in this area.
    In particular, the law of passing off is a flexible tool to meet
    changing circumstances. There is no reason to believe that it cannot
    be adapted by the courts to address new situations as they arise.

  8. Geographical indications

  9. The Bar believes that geographical indications receive ample protection
    under Hong Kong’s present laws. The problems regarding wine experienced
    by Australia and New Zealand have no relevance for Hong Kong and
    the Bar sees no need for further legislation.

  10. Trade secrets

  11. As with the tort of passing off, the action for breach of confidence
    has been developed gradually by the courts. Although there is some
    uncertainty as to the scope of the cause of action, for example
    as to the circumstances in which someone not in a relationship with
    the owner of the information can nevertheless be subject to an obligation
    of confidence, the Bar believes that it is sufficiently flexible
    to be adapted and developed by the courts as necessary. The Bar
    sees no need to criminalise misuse of trade secrets in Hong Kong.

  12. Cyberspace

  13. Comparatively few cases have reached the Hong Kong courts. The
    Bar advises against implementing legislation until any shortcomings
    in the existing law have been clearly identified.

 

Dated 11th May 2001

Hong Kong Bar Association