Hong Kong Trademarks
Hong Kong trademarks and definitions
A trademark is a sign that distinguishes the goods and services of one trader from those of others. This sign must be capable of being represented graphically in order for it to be registered as a trademark. Registering gives you the exclusive right to use that trademark in relation to goods and services for which the mark is registered. Failing to register a trademark makes it possible for another business to use your name for its goods or services even if you have already registered it under that name.
Trademarks are classified into three types. Certification marks are registered by non-trading organizations to certify the quality of their goods or services. Collective marks are registered for goods or services provided by members of a trade association. Finally, defensive marks are registered to protect marks that have become exceptionally well-known in Hong Kong.
A business that is getting incorporated in Hong Kong will also have to register any trademarks that they have for use in Hong Kong. This is because there are separate Hong Kong laws governing business incorporation and trademark registration. Hong Kong has also provided for independent entities to handle the processes of incorporation and trademark registration. While the Hong Kong Company Registry handles business incorporation, trademarks are handled by Hong Kong Trademark Registry particularly its Intellectual Property Department. So, after you register the name of your business under the Company Registry, you should submit a trademark application to the Intellectual Property Department to determine that it meets the requirements of the Trademarks Ordinance and Rules.
The Trademark Registry has made its own classification systemHYPERLINK “http://www.ipd.gov.hk/eng/intellectual_property/trademarks/how_to_classify.htm” of the different kinds of goods and services that can be trademarked. You have to identify in your application which class the goods and services fall under. Fortunately, you can file one application for multiple classes of goods or services. Additional fees of HK$ 650 apply for any additional class of goods or services.
Hong Kong trademark requirements
You do not necessarily have to live in Hong Kong or be physically present to register a trademark. However, there are still requirements you need to meet that are only applicable to Hong Kong. You need to have an address of service in Hong Kong where the Registry can send letters to. This has to be a residential or business address, P.O. boxes are not allowed. You will also have to pay fees via bank drafts in Hong Kong dollars, made payable to the Special Administrative Region of Hong Kong and crossed.
Starting Hong Kong trademark registration
To register for a trademark, the applicant must make a search in existing trademarks to check if they are already in use and then file Forms T2 and T2A. You can get the forms online, however, the Registry does not receive applications electronically. If you cannot physically deliver your application, it can be mailed to this mailing address:
Trade Marks Registry
Intellectual Property Department
24/F, Wu Chung House
213 Queen’s Road East
The Trademarks Registry offers its own Search and Preliminary Advice Service to check if a trademark has already been registered. The registry can also propose similar signs that can be used in lieu of trademarks already in use. You can avail of the Registry services by filing Form T1 with the service fee of HK$ 200. Alternately, you can search the online Registry records yourself.
When we receive the form, the first thing we do is check for deficiencies. Any errors or omissions in filling out the form will be pointed out and sent back to the applicant for correction. Simple errors, such as putting the incorrect date, will not delay your application as much as greater ones such as failing to provide an image for a registered trademark.
Trademark registration search and examination stage
For the search and examination stage, the Registry examiner uses several criteria to determine if a proposed trademark follows the Trademarks Ordinance. For one, it should not have already been registered by another entity. The examiner makes a search for identical trademarks that have already been registered. If similar trademarks are found, the applicant’s may be rejected. The trademark should not include descriptive words like “quality”, “new” or “fresh”. Finally, the trademark application should provide ‘evidence of distinctiveness’ – proof that it has acquired a distinctive character as a result of your use of it for the goods and services you seek to register it for.
When the examiner is finished reviewing the application, he or she will issue an opinion in writing explaining if there are any objections. You will have six months from then to meet the requirements to overcoming the objection. At the end of this period, it is possible that you met these requirements but the trademark remains unacceptable. You are given the option to resolve any further issues for another three months.
You can ask for a time extension yourself but it will only be granted based on provisions of the Trademarks Rules. If you call for a hearing, all the information for or against the application of your trademark will be gathered, and a hearing officer will render a decision. If you wish to dispute the decision of the Trademark Registry, it will be brought to the Hong Kong High Courts.
Trademark publication and registration stage
If your trademark gets past the examination stage, it will be published in the Hong Kong Intellectual Property Journal. This allows other entities with similar trademarks to file an opposition notice to it within three months of the date it was published. You can choose to drop your claim. Bear in mind that this may lead to you paying the other claimant damages. If you decide to fight for your claim instead, you can provide a counter statement and your case will be brought to a hearing officer for them to render a decision.
If your trademark finally does get accepted for registration, it will be entered into the register by the Registrar of Trademarks. You will be issued a Certificate of Registration and a Notice will be published in the Hong Kong Intellectual Property Journal. The date you first filed your application is considered the date your trademark has been registered, and so this becomes the date when your rights first take effect.