Trademark registration in Hong Kong. Trademark in Hong Kong is regulated by Trademark Ordinance (TMO) and Trademark Rules (TMR)
What is trademark in Hong Kong
Under the Sec.3 (1) and (2) TMO, trademark is defined as a sign with function of identifying the goods or services of different owner of such mark.
And a trademark can be “words, indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of goods or their packaging (3D marks)” orany combination of such signs.
- In Hong Kong, the marks that shall be considered as non-distinctive such as:
- an ordinary names for the goods or services (“flower” for Daisy)
- descriptive words of goods or services (“Sweet” or Yummy” for bread);
- common words used in the industry (“telecom” for phone)
- Eulogistic words or slogans (“Natural cosmetic” or “Best for all skin types” for face mask).
Types of trademark in Hong Kong
Trademark in Hong Kong can be divided into traditional and non-traditional marks. Traditional marks which are: certification marks; collective marks; defensive trademarks, associated trademark, ordinary trademark
- Certification mark is used to certify goods/services that satisfy requirements in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic. The owner of such mark is not allowed to carry on a trade in goods/services bearing the mark.
- Collective mark is registered by a group of person or association with purpose of distinguish the using such mark between members of such association and ones of other association
- Defensive mark is considered as a method to prevent the use of another mark which is identical or similar with a well-known sign that has been widely known by consumer and registers for unrelated products/services to the goods / services used by the well-known trademark owner.
- Well-known mark is considered well-known in Hong Kong as long as the owner gives evidence of the degree of knowledge or recognition of the trademark in the relevant sectors of the public, the duration and extent or geographical area of any use of the trademark.
- Associated marks are two or more alike or similar marks registered by a proprietor for the same or similar products/services
The non-traditional ones are marks contain uncommon elements as: sounds, smells and 3-dimensional marks which satisfy specific conditions for registration.
Trademark registration Rule
Beside the regulations of trademark registration, Hong Kong has another filling system called Fist-to-use. It can be understood when an unregistered mark being used as a trademark then the rights shall be vested to the first business to use the mark in association with the sale of goods or services on the market.
In this principle, as long as you can proof the actual use, then you have the right to register a trademark base on the first use of the mark in commerce, regardless of if (or when) an application to register the trademark was filed.
Required documents of trademark registration in Hong Kong
Generally, an application to register a trademark in Hong Kong will include:
- An application form for the trademark registration; (Form T2) (written in English or Chinese)
- Personal details of the applicant, such as the name and address; (Form T2)
- Specifications of the goods or services
- A description of the trademark;
- Additional documents as can be requested.
- For Corporation Applicant: Business Registration Certificate / Certificate of Incorporation
- For Individual Applicant: Identity documents and address proof
- Trademark image
Trademark registration in Hong Hong – procedure
Trademark registration in Hong Kong will be undertaken 4 stages to be protected, which are
- Step 1: Deficiency trademark search
- Step 2: Search and examination
- Step 3: Publication for opposition
- Step 4: Issuance of trademark registration certificate
Step 1 Deficiency trademark search
After filling a registration application, the Registry will check if all the application forms or any documents are fulfilled or any missing information which has not been filled or incorrect (it may be the name and address of applicant, the representation of the mark or the goods and/or services). And the applicant will have a period of two months from the date of notice to remedy deficiency. If all the requirements are met, the application will proceed to the next stage.
Noted: Some changes shall be allowed if it does not affect the filing date of the application like the amendments of class number of the applied for goods. Other amendments such as the representation of the trademark will not be accepted
Search and examination
In this stage, the trademarks records will be put in comparison with other registered marks or trademark registration application in Hong Kong by another owner in respect of identical or relative goods/services. Moreover, The Registry will also examine the trademark conditions set forth in the Trade Marks Ordinance and Trade Marks Rules.
An trademark registration can be rejected on absolute grounds or relative grounds
- The basis of absolute grounds are
- Fails to satisfy the statutory definition of a trademark
- Is indistinctive.
- Is descriptive of the applicant’s goods or services.
- Has become customary in the current language or in the honest and established practices of the applicant’s trade.
- Consists exclusively of a shape that results from the goods themselves, is necessary to obtain a technical result or that gives substantial value to the goods.
- Is contrary to accepted principles of morality or likely to deceive the public.
- Is filed in bad faith or its use is prohibited under any Hong Kong law.
- Consists of the Chinese national flag or emblem or the Hong Kong regional flag or emblem.
- The basis of absolute grounds are
- Identical to an earlier trade mark covering identical goods or services.
- Identical to an earlier trade mark covering similar goods or services which is likely to cause confusion.
- Similar to an earlier trade mark covering identical or similar services which is likely to cause confusion.
- Identical or similar to an earlier registered well-known trade mark protected under the WIPO Paris Convention for the Protection of Industrial Property 1883 and the use of which without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier registered trade mark.
- Contrary to law protecting an unregistered trade mark (in particular, the tort of passing off), or an earlier right subsisting in a copyright or registered design.
If the trademark registration in Hong Kong fails into one of the above cases, the Registry will issue a notice. In reply, the applicant has 6 months to amend the application (if requested by the Register) or response the notice. After 6 months, the applicant still fails to overcome the objection. The Register shall issue a further notice of its opinion and the trademark owner has another 3 months to satisfy the registration requirements or call for a hearing. In such case, all proof for and against the trademark will be presented in the hearing for final decision.
Publication for opposition
After having been accepted in the examination process, the trademark application in Hong Kong will be published in the Hong Kong Intellectual Property Journal. From that time, within three months, any interested party can raise an opposition notice. In response, the applicant may fill a counter-statement. There will be a hearing taken place before a hearing officer for decision upon the evidence provided by both parties.
Issuance of trademark registration in Hong Kong certificate
If the application is granted, the trademark application in Hong Kong will be recorded in the register of trademark and the applicant will be issued with a certificate of registration. The relevant notice of registration will be published in the Hong Kong Intellectual Property Journal.
In the case where no deficiencies or objections to the trademark in the above process, it takes as little as 6 months for a trademark to be granted protection.
Fee of trademark registration in Hong Kong
|Request for search of records||$400||$200 per additional class|
|Request for preliminary advice on registrability||$400|
|Application for registration of a trademark (including certification mark and collective mark)||$2,000||$1,000 per additional class|
|Application for registration of a series of trademark||$2,000||$1,000 per additional class|
|Application for registration of a defensive trademark||$2,300||$1,150 per additional class|
|Request to divide application for registration (divide the specification of goods/services)||$650|
|Request to divide application for registration (divide a series of marks)||$650||$2,000 for the first class and $1,000 for each additional class in respect of each additional application|
|Request to amend application||$1,000 per additional class for amendment of specification|
|Notice of opposition/objection Application for revocation, declaration of invalidity, variation of a trademark registration or rectification of an error or omission in the register Application for intervention in proceedings for revocation, declaration of invalidity, variation or rectification||$800|
|Request for renewal of a trademark registration||$2,670||$1,340 per additional class|
|Late renewal charge||$500|
|Request for restoration and renewal of a trademark registration||$4,000||$1,340 per additional class|
|Application or notice to register a licence||$800|
|Notice of attendance at hearing||$1,700
(Nil for extension of time hearing)
|Request for statement of reasons||$1,500|
|Request for extension of time||$200|
|Request for copy||$6 per page|
|Request for certified copy||$150 per certified copy|
|Request for certificate under section 79(2)||$200 per copy|
Trademark search in Hong Kong
Trademark registration in Hong Kong, preliminary search of trademark before submitting an application will be conducted by the Trade Marks Register with a corresponding fee. The purpose of this process is to tell whether your trademark is possible for registration and exclude the cases of unregistrable trademark. The fee is HK$400 plus HK$200 per each additional class of goods or services.
However, this process is optional and you can check the registered
On the other hand, it is provided with an online website Trade Mark Search system (esearch.ipd.gov.hk) for checking the trademark by your own.
Priority right of trademark registration in Hong Kong
A Priority right is claimed in Hong Kong under the Paris Convention. Which means an application that has been filed in a Paris Convention country or a WTO member country, territory or area within 6 months from that day register such mark in the Hong Kong SAR, then the date of the first application shall be considered as a priority date. The priority date is the date for establishing which rights take precedence and a third party cannot acquire rights in the mark by use between the priority date and the date of application in the Hong Kong.
The advantage of the applicant is when the application is in examination for relative or identical marks, among the valid application that have the possibility of protection, only the one which has earlier application date will be granted protection. In other words, any marks filed by another party between the earlier filing date and the actual filing date of the present application will not be cited against the present application
Valid of certificate of trademark registration in Hong Kong
A registered trademark in Hong Kong is valid for ten years from the date of application and can be renewable for successive periods of ten years each.
Frequently Asked Questions of trademark registration in Hong Kong
Who can file an application trademark in Hong Kong?
Any individuals or organizations have the right to file an application Hong Kong.
Is multi-classes application accepted in Hong Kong?
Under Hong Kong Trade Marks Ordinance, applicant is allowed to apply for one or more classes of goods/services in their application
How are good/services classified?
You must list out in your application form all the goods and/or services you want to register your trademark with. The goods and services must be classified according to the NICE Classification.
Can the applicant change the information of application after filing?
During the deficiency and examination process, if the application does not satisfy the requirements, the applicant have right to file a response and amend the application.
Protection of well-known trademark in Hong Kong
In Hong Kong, a well-known trade mark can be protected by registration. And the regulation of defensive trade mark is also a regime to protect well-known mark. Moreover, well-known marks do not need to be used in the Hong Kong to be granted protection. However, protection by registration (defensive registration) must be sustained by use.