### Registered Designs Ordinance 《註冊外觀設計條例》

52. Restriction on recovery of damages or profits for infringements occurring before transactions are registered
Where a person becomes the registered owner or one of the registered owners or an exclusive licensee of a registered design by virtue of a transaction, instrument or event to which section 34 applies, then unless—
(a) an application to register the prescribed particulars of the transaction, instrument or event is made before the end of the period of 6 months beginning with its date; or
(b) the court is satisfied that it was not practicable to make such an application before the end of that period and that an application was made as soon as practicable after the end of that period,
he is not entitled to damages or an account of profits in respect of any infringement occurring after the date of the transaction, instrument or event and before the prescribed particulars of the transaction, instrument or event are registered.

53. Order for delivery up
(1) Where a person has in his possession, custody or control in the course of a business—
(a) infringing articles; or
(b) anything specifically designed or adapted for the making of infringing articles, knowing or having reason to believe that the thing has been or is to be used to make infringing articles,
the registered owner of the design in question may apply to the court for an order that the articles or thing be delivered to him or to such other person as the court may direct.
(2) Where the court makes an order under subsection (1), it shall also make an order under section 54 unless it determines that there are grounds for not making such an order.
(3) No application may be made under subsection (1) after the end of the period of 6 years from the date the articles or thing concerned were made unless during the whole of that period the registered owner was under a disability or was prevented by fraud or concealment from discovering the facts entitling him to make the application, in which case the registered owner may make an application at any time before the end of the period of 6 years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.
(4) A person to whom any article or thing is delivered up under an order made under subsection (1) shall, if an order is not made under section 54 at the time of the making of the order under subsection (1), retain the article or thing pending the making of an order under section 54 or the decision of the court not to make such an order.

### Registered Designs Ordinance 《註冊外觀設計條例》

54. Order for disposal
(1) An application may be made to the court for an order that the articles or thing delivered up under section 53 shall be—
(a) forfeited to the registered owner;
(b) destroyed; or
(c) disposed of in such manner as the court specifies.
(2) In deciding what order or decision to make under subsection (1), if any, the court shall consider whether any other remedies available in proceedings for infringement would be adequate to compensate the registered owner and any licensee and protect their interests.
(3) Where there is more than one person interested in the articles or thing in question, the court may make such order under subsection (1) as it thinks just and it may, in particular, direct that the articles or thing delivered up under section 53 be disposed of and the proceeds be divided among them as the court directs.
(4) If the court decides that no order should be made under subsection (1), the person who had possession, custody or control of the articles or thing before they were delivered up under section 53 is entitled to their return.

55. Declaration as to non-infringement
Without prejudice to the court’s jurisdiction to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a registered design may be made by the court in any proceedings between the person doing or proposing to do the act and the registered owner, notwithstanding that no assertion to the contrary has been made by the registered owner, if it is shown that—
(a) that person has applied in writing to the registered owner for a written acknowledgement to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and
(b) the registered owner has refused or failed to give any such acknowledgement.

56. Certificate of contested validity of registration
(1) If in any proceedings before the court the validity of the registration of a design is contested and that registration is found by the court to be valid, the court may certify the finding and the fact that the validity of the registration was so contested.
(2) Where a certificate is granted under this section, then if, in any subsequent proceedings before the court for infringement of the registered design concerned or for revocation of the registration, a final order or judgment is made or given in favour of the party relying on the validity of the registration that party shall, unless the court otherwise directs, be entitled to his costs on the indemnity basis within the meaning of that term as appearing in Order 62, rule 28 of the Rules of the High Court (Cap. 4 sub. leg. A) (other than the costs of any appeal in the subsequent proceedings). (Amended 25 of 1998 s. 2; E.R. 1 of 2022)

### Registered Designs Ordinance 《註冊外觀設計條例》

57. Remedy for groundless threats of infringement proceedings
(1) Where a person (whether or not the registered owner of, or entitled to any right in, a registered design) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a registered design, any person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4), bring proceedings in the court against the person making the threats for any such relief as is mentioned in subsection (3).
(2) In any such proceedings the plaintiff shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless—
(a) the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute an infringement of a registered design; and
(b) the plaintiff fails to show that the registration of the design concerned is invalid.
(3) The relief is—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as have been sustained by the plaintiff by reason of the threats.
(4) Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of the making of an article for sale or hire or the importing of anything.
(5) For the purposes of this section a notification of the existence of a registered design does not of itself constitute a threat to institute proceedings.

58. Appeal from decisions or orders of Registrar
(1) Except as otherwise provided by the regulations, an appeal lies to the court from any decision or order of the Registrar under this Ordinance.
(2) Any appeal under this Ordinance which concerns an application for registration of a design shall be heard in private unless the court otherwise directs.
(3) In any appeal under this Ordinance—
(a) the Registrar shall be entitled to appear and be represented and be heard in support of his decision or order;
(b) the Registrar shall appear if so directed by the court.
(4) In any appeal under this Ordinance the court may exercise any power which could have been exercised by the Registrar in proceedings from which the appeal is brought.
(5) In this section, decision (決定) includes any act of the Registrar made in the exercise of a discretion vested in him by or under this Ordinance.