Consultation Paper on Unfair Competition and Intellectual Property Rights
CONSULTATION PAPER ON UNFAIR COMPETITON AND
INTELLECTUAL PROPERTY RIGHTS
- 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.
- The Bar is also unaware of any expressions of public concern that
the existing law with regard to those matters is inadequate.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
Imitation of get-up
Right of commercial exploitation of personality
Dated 11th May 2001
Hong Kong Bar Association