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

39. Compensation for loss of profit
(1) Where Government use is made of a registered design, the Government shall pay—
(a) to the registered owner; or
(b) if there is an exclusive licence in force in respect of the design, to the exclusive licensee,
compensation for any loss resulting from his not being awarded a contract to supply articles to which the design is applied.
(2) Compensation is payable only to the extent that a contract could have been fulfilled from the registered owner’s or exclusive licensee’s existing manufacturing or other capacity but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.
(3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing or other capacity was underused.
(4) No compensation is payable in respect of any failure to secure contracts to supply articles which are not intended for Government use.
(5) The amount payable shall, if not agreed between the registered owner or exclusive licensee and the Government, be determined by the court on a reference under section 40, and is in addition to any amount payable under section 37 or 38.

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

41. Determination of rights after registration
(1) After a design is registered, any person having or claiming a proprietary interest in or under the design may refer to the court the question—
(a) who is or are the true owner or owners of the design;
(b) whether the design should have been registered in the name of the person or persons in whose name or names it was registered; or
(c) whether any right in or under the design should be transferred or granted to any other person or persons,
and the court shall determine the question and make such order as it thinks fit to give effect to the determination.
(2) Without prejudice to the generality of subsection (1), an order under that subsection may contain provision—
(a) directing that the name of the person by whom the reference is made shall be entered in the Register as the owner or one of the owners of the design (whether or not to the exclusion of any other person);
(b) directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the design;
(c) granting any licence or other right in or under the design; or
(d) directing any person registered as the owner of the design or any person having any right in or under the design to do anything specified in the order as necessary to carry out the other provisions of the order.
(3) If any person to whom directions have been given under subsection (2)(d) fails to do anything necessary for carrying out any such directions within 14 days after the date of the order containing the directions, the court may, on application made to it by any person in whose favour or on whose reference the order was made, authorize him to do that thing on behalf of the person to whom the directions were given.
(4) If a reference under this section is made after the end of the period of 2 years beginning with the date of registration of the design to which the reference relates, no order shall be made under subsection (1) transferring any right in or under the design from the person registered as the owner of the design to any other person on the ground that the person so registered was not entitled to be registered as the owner unless it is shown that he knew at the time of the registration or, as the case may be, of the transfer of the design to him, that he was not entitled to be registered as the owner.
(5) Where a question is referred to the court under this section, no order shall be made by virtue of subsection (2) or under subsection (4) unless notice of the reference is given to all persons registered as owner of the design or as having a right in or under the registered design except those who are parties to the reference.

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

42. Effect of transfer of registered design under section 41
(1) Where an order is made under section 41 that a registered design shall be transferred from any person or persons (the old owner or owners) to one or more persons (whether or not including an old owner), then, except in a case falling within subsection (2), any licences or other rights granted or created by the old owner or owners shall, subject to section 32 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the design is ordered to be transferred (the new owner or owners).
(2) Where an order is so made that a registered design shall be transferred from the old owner or owners to one or more persons none of whom was an old owner (on the ground that the design was registered in the name of a person not entitled to be registered as an owner), any licences or other rights in or under the design shall, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new owner or owners of the design. (Amended E.R. 1 of 2022)
(3) Where an order is so made that a registered design shall be transferred as mentioned in subsection (2) and, before particulars of the reference resulting in the making of the order are entered in the Register, the old owner or owners or a licensee—
(a) does in good faith an act which would have constituted an infringement of the design if particulars of the reference had been registered at the time the act is done; or
(b) makes in good faith effective and serious preparations to do such an act,
the old owner or owners or the licensee shall on making a request to the new owner or owners within the prescribed period be entitled to be granted a licence (but not an exclusive licence) to continue to do the act or, as the case may be, to do the act.
(4) Any such licence shall be granted for a reasonable period and on reasonable terms.
(5) The new owner or owners of the registered design or any person claiming that he is entitled to be granted any such licence may refer to the court the question whether that person is so entitled and whether any such period is, or any such terms are, reasonable, and the court shall determine the question and may, if it considers it appropriate, order the grant of such a licence.

43. Licences granted by order of court
Any order made under section 41(2) or 42(5) for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the owner of the registered design and all other necessary parties, granting a licence in accordance with the order.