Controversial reforms to trade mark and copyright protection are set to be implemented in Hong Kong.
According to a new draft copyright law, businesses in Hong Kong will be criminally liable for using pirate copies of computer programs, movies, television shows and musical recordings. And the Trade Marks Ordinance will be enforced from April 4, almost three years after the territory's Legislative Council (Legco) enacted it.
If Legco approves the Copyright (Amendment) Bill 2003, it will make permanent the provisions of the Copyright (Suspensions of Amendments) Ordinance, which was introduced in 2001 after business people and educators were heavily critical of the government's plans to criminalize all forms of copyright infringement in a business context. This would have included the photocopying of newspaper articles.
The new copyright legislation was published in the Government Gazette on February 7 and presented to Legco five days later. The proposed law also contains protection for the employees of businesses where they might be required to use infringing copies of copyright works. It excludes from liability anyone who, for business purposes, uses copyright works which are parallel imports.
The Bill is a result of public consultation and talks between the government and rights owners since June 2001, when the Ordinance was passed by LegCo. This legislation set aside, until July 2002, the criminalization of copyright infringement in business, except in the cases of computer programs, movies, television shows and musical recordings. The suspension was retained for another year until July 2003 to allow the discussions to continue. The intention of the government's new measures is to make the suspension permanent.
The Trade Marks Ordinance will come into force on the same day as the introduction of the Trade Mark Rules, which will set out how the ordinance will be implemented. The Ordinance was passed by Legco on May 31 2000, but has been held up by the need to upgrade the Intellectual Property Department's computer systems to cope with the expected increased workload. A new law was discussed for the first time almost a decade ago.
The government's Commerce, Industry and Technology Bureau has set the date for the commencement of the legislation even though LegCo has yet to approve the Trade Mark Rules. The Rules were introduced at the council's meeting on February 12, having been the subject of consultations before Christmas between the Intellectual Property Department and the department's users. They were published in the Government Gazette after four draft versions had been issued. The legislators have less than two months to resolve any problems with them before they come into force.
"The date has been announced on the assumption that there won't be any problem with the Legislative Council and the Bureau's trade marks panel," says CK Kwong, president of the Hong Kong chapter of the Asian Patent Attorneys' Association. "We are confident that all issues will be resolved in time," says John Wong, a senior examiner at the territory's Intellectual Property Department.
While the changes to the copyright legislation angered the public, the Trade Mark Ordinance and Rules have caused more than a little unhappiness with the territory's trade mark attorneys. Contentious issues include time limits on filings, meaning that an application will lapse if it has not proceeded to registration within a set time, even if this is the fault of the Trade Marks Registry. An applicant will have to pay the fees again if he chooses to re-file the application. The need for a Notice of Opposition when both parties are continuing to negotiate is something else which attorneys have objected to.
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Sandra Gibbons |
In the version of the Rules presented to Legco, objections to an application will have to be dealt with no later than six months from the date of the first official action. Applicants can have a three-month extension and if the mark is rejected, they must call for a hearing within three months of the rejection. While this may be better than the situation in the fourth draft of the Rules, where applicants only had one month after a rejection to call for a hearing, it is still not ideal, according to Hong Kong's trade mark attorneys.
"The Hong Kong Institute of Trademark Practitioners believes that further extensions should be available if there is a good and valid reason," says Sandra Gibbons, the Institute's vice-president. "No trade mark owner should be denied registration solely for failure to comply with a time limit."
The improvements to the Intellectual Property Department's computer system will mean users will be able to search and apply for trade marks online by the end of this year.
