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Trademark in Hongkong

Introduction

The accompanying newsletter will provide you with information on trademark registration in Hong Kong and the most recent changes to the legislation governing trademarks in both Hong Kong and Mainland China.

Trademarks

    The trademark registration process in Hong Kong offers geographical protection. Trademarks in Hong Kong must be registered under in order to receive protection as registered trademarks.
  • The Trade Marks Rules (Chapter 559A) and
  • The Trade Marks Ordinance (Chapter 559) are both legal documents.
  • A trademark is defined in Sections 3(1) and (2) of the TMO as
    "[...] any sign that can distinguish the products or services of one business from those of other businesses and that can be expressed graphically." Indications, designs, letters, characters, digits, figurative components, colours, sounds, smells, the shape of items or their packaging, and any combination of these signals can all be used as trademarks.

    Among the trademarks mentioned in the TMO
    Additionally, there are defence trademarks, collective markings, and certification marks.

The duration of the trademark's protection

The time frame for trademark protection varies from nation to nation. The protection period in Hong Kong is 10 years (Section 49 (1) TMO), although it is 7 years in Macau and 15 years in Canada. In Hong Kong, the protection term begins on the application filing date, whereas in China, for instance, the protection period starts on the day of actual registration.

(Sec. 49 (2) TMO) In Hong Kong, trademark protection is revocable. The renewal application has an additional six months to be submitted once the registration expires, but it must be submitted before that time. Therefore, it is theoretically possible to apply for renewed trademark protection without any restrictions, offering protection that would last forever. This is a key distinction between trademark protection and other intellectual property rights, such as patents.

Why register a trademark, fourth?

There are three primary justifications for trademark registration-

  • Avoiding lock-up circumstances- If a company's trademark is not registered in a jurisdiction, a third party, such as a rival vying for the same market, may do so. This would make it illegal for anybody (even the true trademark owner) to use the trademark and grow their business under that name in that area (lock-up situation). The firm name and trademark may be changed as a remedy, but this would require extensive marketing efforts and substantial costs. In most circumstances, it is not practicable to develop a new trademark despite the expenses and efforts involved because European investors frequently enter foreign markets with well-known brands that have competitive advantages.
  • Trademark protection- When a trademark is registered, it grants the owner the sole right to use the mark in connection with the products and services covered by the registration. Certification of a trademark serves as initial ownership evidence. People who use the trademark in commerce or trade may be held accountable for trademark infringement. They are subject to the threat of legal action. However, depending on the strength of the legal system in each nation, registering a trademark may not provide the protection that is typically associated with it. For instance, in China, it may already be challenging to identify trademark infringers and pursue legal action. Even unregistered trademarks, for instance, may be protected in Hong Kong, a Common Law jurisdiction, by the Common Law action of "passing off": The original owner of an unregistered trademark must demonstrate its reputation and that the other party's misuse of the trademark will harm the original owner. However, bringing a lawsuit for "passing off" is typically more challenging than doing so for violation of a registered trademark.
  • Trademarks as assets- Thirdly, registration may affect how valuable a company is perceived by (potential) investors who look at the company's registered trademarks. Registration may also be a requirement for doing business, as is the case, for instance, in China when attempting to conduct business on the "Taobao" online marketplace.

Considerations before making an application

The following considerations must be made before submitting an application to the Trademark Office (Trade Marks Registry):

  • Courses to apply for- On the one hand, choosing the class(es) of products and/or services to apply for is a necessary step. Based on the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks into 45 Trademark Classes, dated 15 June 1987 (34 classes of Goods, 11 classes of Services - "Nice Classification"), used in Hong Kong as of 1 January 2015, various goods and services have been classified. More than 80 nations have adopted The Nice Classification. But the issue still exists because each country has its own interpretation of the Nice Classification, particularly with regard to the classes. It may be feasible to restrict the classes to the main products in order to keep the registration fees low. Applications for additional classes typically result in higher charges. However, trademarks will only be protected in the applied classes, therefore filing for more classes will provide a greater level of protection. If an application is submitted in Hong Kong for registration in numerous classes, there is a chance that it will be challenged on the basis of unfair competition. Additionally, it should be kept in mind before applying that a future business expansion may call for different or additional protection.
  • The trademark's distinctiveness- On the other hand, the trademark's distinctiveness is quite important. The absence of any distinguishing character is one of the absolute grounds for rejecting the registration of trademarks, as stated in Sec. 11 (1b) TMO. Therefore, it is important to determine whether the trademark is distinctive enough before applying. For instance, a trademark that merely defines goods and services or displays the nature, intent, scope, or cost of them is probably not going to be deemed distinctive. Significant signs of difference include-
    • Whether a trademark stands out from the competition and distinguishes its goods and services from those of rivals;
    • Developed terms that have no connection to the industry it represents;
    • Whether words are paired with images.
    • Things to be avoided include-
    • the use of terms connected with the products and/or services;
    • the use of terms or statements that are well-known in the relevant industry.
When a trademark is devoid of distinguishing characters, it is difficult to draw a line. But the experience demonstrates that the Hong Kong Trade Marks Registry is especially picky about what qualifies as distinctive and what doesn't. Therefore, it is important to carefully analyse the aforementioned points.

Registration of trademarks

The application procedure
The application procedure is as follows in Hong Kong:

  • Trademark Lookup- Search for trademarks is optional. It checks to see if any trademarks are already registered in the selected class (es).
  • Implementation- According to Section 38 TMO and Rule 6 et seq. TMR, the Registrar must receive the application for the registration of a trademark.
  • Weaknesses Check- Following the application, the Trade Marks Registry will examine the information to see if it is accurate and comprehensive, including the applicant's name, address, the mark's representation, and a list of the goods and services. The filing date will ultimately serve as the date of registration if the registration is properly filed.
  • Search & Analysis- In order to determine if the same or a similar trademark has already been registered or applied for by another person in respect of the same or comparable class(es) of goods or services, the Trade Marks Registry will first perform a search of the trademark records. The Trade Marks Registry will also determine if the trademark fits the TMO's registration requirements, particularly whether it is unique. The Trade Marks Registry will object to the application and provide advice on how to override the objection if the registration conditions are not met. The applicant has three further months from the date of the further issued opinion to comply with the registration requirements or to request a hearing if the Registry's requirements are not met and the objection is still present. Evidence in support of and against the trademark registration will be taken into account during the hearing. At the conclusion of the hearing, the hearing officer will make a decision.
  • Oppositional Publication (3 months)- The trademark will be published in the Hong Kong Intellectual Property Journal if there are no objections or if the suggestions were taken into consideration. Within three months, an opposition notice may be submitted. In Hong Kong, 95 percent of publications are published without opposition, primarily because doing so is expensive.
  • Registration- The details of the trademark will be entered into the trademark register by the Registrar of Trade Marks, who will also issue a certificate of registration and publish notice of the registration in the Hong Kong Intellectual Property Journal. As previously stated, the filing date of the application will serve as the starting point for the trademark registration.
  • Invalidation and Revocation
    There are several ways to delete a trademark from the trademark register once it has been registered-
  • According to Section 52 (2a) TMO, it is possible to ask to have a registered trademark completely or partially withdrawn from the register due to "non-use": This necessitates, among other things, that the trademark has been inactive for at least three years. In this regard, it is the party requesting removal that bears the onus of proof. Experience has shown us that providing proof that a trademark hasn't been used is all but impossible. verify that
  • On the basis that a trademark should not have been registered in the first place, it is also feasible to file for "invalidation." Particularly, this is the situation when Sec. 53 TMO conditions are satisfied, such as when an earlier trademark application that ought to have been registered sooner existed.

Charges

  • The cost for one product category is HK$5,600. The classes in the Nice Classification of Goods and Services specify the product categories.
  • The price includes everything. Regarding publication, registration, and issuing of the trademark certificate, neither the Registry nor we impose any fees. We don't even charge for any other expenses.
  • Each additional product category costs only HK$2,800 all-inclusive if necessary.
  • The complex application will be abandoned and the client will be given another chance to apply using a new mark at an official fee only in the rare event of any major objection by the examiner during substantive examination or in the rare event of any resistance by third party after publishing.

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