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.
Foreign company or individual can apply to register their marks in Hong Kong without nationality restriction or residency requirement.
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 ® 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 register a 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.
Fees
Our fee is HK$5,600
for 1 product category. The product categories are defined
by the classes in the Nice
Classification of Goods and Services.
The fee is all-inclusive. Neither the Registry nor us charge any fee on publication, registration and issuance of the trademark certificate. Nor do we charge any miscellaneous disbursement.
If additional product category is needed, each is only HK$2,800 all-inclusive.
For break-down of the official fee and our fee, please refer to our Fee
Schedule .
In the minority event of any serious objection by the examiner during substantive examination, or in the rare event of any opposition by third party after publication, the complicated application will be abandoned, and the client will be given another chance to apply using a new mark at official fee only.
Distinctiveness
Only distinctive mark can be registered.
Indistinctive mark includes :
(1) marks consists solely of signs used in commerce to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services;
(2) marks consists solely of the shape of the goods themselves, the shape of goods that is necessary to obtain a technical result, or the shape that gives substantial value to the goods.
However, indistinctive mark with "surplus" features or with long and extentive prior usage in Hong Kong may be registrable on an individual case basis.
Marks with distinctiveness (successfully registered) :
Marks without sufficient inherent distinctiveness (failed to reach publication stage) :
Search
We usually conduct a free-of-charge search before filing. The purpose is to rule out
any rejection due to presence of prior identical mark or obvious similar
mark.
If such free search reveals
any similar mark that cannot be obviously ruled out, the client has
a choice of instructing us to obtain an official search by the Trade
Marks Registry as to whether in its opinion there is any conflicting
prior mark. The fee for official search is HK$1,500 per mark for the first class and HK$500 for each subsequent class included in the same request. The time needed is 1 to 3 weeks.
The opinion will be given by an examiner on the official letterhead
of the Intellectual Property Department of the Hong Kong Government.
If the result of the
official search is positive and the follow-on application is rejected
by the examiner contrary to the official search opinion, the official search fee and the application fee will all be refunded.
Not sufficiently in conflict with prior mark (successfully registered) :
In conflict with prior mark (failed to reach publication stage) :
Timeframe
Hong Kong trademark application usually takes 5 to 10 months to complete :-
| Filing receipt and Application number |
1 day |
| Application searchable in official website |
2 days |
| Formality examination |
within 6 months |
| Substantive examination |
within 3 months |
| Opposition
period after publication |
3
months |
| Issuance
of trademark certificate |
3
weeks |
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.
For details on renewing registered trademark, please refer to HK Trademark Renewal .
Hong Kong trademark certificate samples :
When
application details have been verified and fee received,
we will digitally sign and file the application, and followed with our e-mail Filing Report enclosing a copy of the official filing receipt.
Two days after filing, the application will be updated into the Registry's database and anyone can independently
check the received application free-of-charge through the Registry
's internet search website https://esearch.ipd.gov.hk.
Classification
of Goods
Hong Kong adopts
the Nice Classification of Goods and Services. Multiple
classes or product categories 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
(ie. description 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 to cover the class or product category applying for
in one exercise, since the specification can only be narrowed and
not extended after filing. Upon registration, the scope of the exclusive
right granted by the registration is limited by the ambit of the specified
goods and services.
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 can be specifically claimed in words to improve the distinctiveness of the mark.
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 of 4 series marks.
Details
Required
| 1. |
Applicant’s full name and address. |
|
| 2. |
Description of goods and services. |
|
| 3. |
Logo or stylized mark in .jpg format. |
|
No power of attorney is needed from the Applicant.
Other Regions
China Trademark Application for Registration
Macau Trademark Application for Registration
Taiwan Trademark Application for Registration
US Federal Trademark Application for Registration
European Union Trademark Application for Registration
Germany Trademark Application for Registration
Russia Trademark Application for Registration
Australia Trademark Application for Registration
Japan Trademark Application for Registration
South Korea Trademark Application for Registration
Malaysia Trademark Application for Registration
Singapore Trademark Application for Registration
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