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 ® 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.
Fees
Our fee is HK$4,500
for the first product category, and half price for each subsequent
product category of the same mark. The product categories are defined
in terms of the classes in the Nice
Classification of Goods and Services.
The fee is inclusive
of both the official filing fee and our professional fee. Neither the Registry not us charge any
fee on the follow-on publication, registration and issuance of the trademark
certificate.
For break-down of the official fee and our fee, please refer to our Fee
Schedule .
HK or China SMEs can also consider the Offer from Hong Kong Trademark Centre.
Unless the application
encounters objection or opposition, there will not be any extra-charge.
The chance of objection or opposition can be reduced by choosing an
invented word as the mark, or adding a distinctive logo to the mark.
Marks with distinctiveness (successfully registered) :
Marks without sufficient inherent distinctiveness (failed to reach publication stage) :
In the event of any objection
or suggested amendment by the examiner, the client has the choice
of (1) continue to pursue for registration at additional fee according
to the complication, or (2) abandon the pending application at no
extra-cost.
In the event of any opposition
by third party, apart from the respective agent's additional fees,
the applicant or the opponent who abandons or loses will be liable
to pay the reasonable fees of the other side.
Examiner objection till registrability hearing : actual case 1 actual case 2 actual case 3
Opposition procedure actual case 1 actual case 2 actual case 3
Search
Before filing
application, we usually will conduct a free-of-charge search on a
without responsibility basis. The free search is meant to rule out
any rejection due to presence of prior identical mark or obvious similar
mark, and to maintain our high rate of application success of over
90%.
If the 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$1,200 per mark for any
of the product categories specified. 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 application
fee of HK$4,500 will be refunded.
Not sufficiently in conflict with prior mark (successfully registered) :
In conflict with prior mark (failed to reach publication stage) :
Timeframe
The application
for trademark registration in Hong Kong usually takes between 6 to
9 months to complete :-
| Filing
receipt and filing number |
1
week |
| Examination
report |
1
- 3 months |
| Opposition
period |
3
months |
| Issuance
of trademark certificate |
4
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.
When
the needed information has been given to us, we will summarize the
Details & Specification for final checking by our client and at
the same time issue our fee note. After the payment has been received,
the application will be filed and our Filing Report will be issued
within a few days of filing, enclosing a copy of the official filing
receipt.
When the client
receives our Filing Report, the data will already have been entered
into the Registry's computer system and the client can independently
check the existence of the received application through the Registry
's internet search website http://ipsearch.ipd.gov.hk.
Classification
of Goods
Hong Kong adopts
the Nice Classification of Goods and Services (9th edition). 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
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.
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 words.
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. |
Full name and address of the trademark owner. |
|
| 2. |
Detailed
specification of goods and services, and the applicant's
website
(if any). |
|
| 3. |
Clear
copy of logo or stylized word-mark e-mailed to us in .jpg
file format. |
|
China Regions
China Mainland Trademark Application for Registration
Macau Trademark Application for Registration
Taiwan Trademark Application for Registration
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