Hong Kong Trademark Registration Guide

Introduction

Trademarks are protected in Hong Kong by the Trade Marks Ordinance and by the Common law doctrine of passing off.

The protection by passing off alone is the last resort. Enforcement by way of passing off entails copious proof of establishment of goodwill. Unregistered mark also leaves the trademark register wide open for third party to register an identical or similar mark to it.

Trademark application in Hong Kong can be based on intent to use basis. No proof of use is required for the issuance of the trademark certificate or for renewal. Nevertheless, if a registered trademark is not used in Hong Kong for any continuous period of 3 years, any interested person can apply for its removal on the ground of non-use.

What counts as use include use in Hong Kong by the owner, its licensee or any person with the owner's consent. Registration of licensee is not mandatory but is advisable from the point of view of the licensee.

Benefits of Reg Trademark

• Registration ensures that you can safely use your trademark without worrying about any unintentional infringement on third party's trademark.
  

• Trademark certificate is the best proof of your claim on the mark.
  

• Registration enables lawful use of R next to your trademark.
  

• Registration blocks other people from registering an identical mark on your specified goods.
  

• Registration gives you a good ground to oppose any attempt by your competitors to registera confusingly similar mark.
  

• Registration empowers you to take legal action against counterfeiters.
  

• Registered trademark is a corporate asset which is useful when making valuation of your company in M&A or IPO situations.
  

• Registration in an important city and trading centre like Hong Kong is essential for export or global marketing plans.

Timeframe

The application for trademark registration in Hong Kong takes between 7 to 9 months to complete :-

Upon registration, a registered trademark is first valid for 10 years and is renewable indefinitely for further periods of 10 years each by paying the renewal fee.

Classification of Goods

Hong Kong adopts the International Classification of goods and services (8th edition). Multiple classes of the same mark can be included in one application. Existing marks registered under the old per mark per class system can also be merged into a single registration so as to save on renewal fee.

Specification of goods and services can either base on actual use or an honest intention to use the mark in Hong Kong. Unlike countries such as the USA or Canada, commencement of use is not a pre-condition for the issuance of trademark certificate.

All types of goods and services on which the mark is currently used or honestly intended to be used should be listed as broadly as possible in the specification, since the specification can only be narrowed and not extended after filing.

Convention Priority

If the client has filed an application in another WTO or Paris Convention country within the last half year, then there is a choice of treating the effective filing date in Hong Kong to be the same as the date of the earlier application.

Priority claim is usually made when the Hong Kong application is part of a coordinated world-wide filing exercise, or when a search reveals that a recent application of a third party may be surpassed by the priority claim, or if the client is concerned about possible competing third party application in Hong Kong at around the same time.

Series Marks

If coloured mark is used, both the colour mark and its black and white version can be filed as a series of marks in the same application at no extra-cost. The colour need to be specifically claimed in word s.

The traditional and simplified versions of Chinese characters, or the closely similar fonts or type faces of English words can usually be filed as a series of marks in the same application at no extra-cost.

One application can have maximum 4 series marks.

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