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Q1. WHAT IS CONSIDERED A TRADEMARK UNDER THE TRADEMARK LAW OF THE HKSAR?
Trademark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of goods or their packaging, and any combination of the above signs posed. Can be expressed graphically by the tag, it can be registered as trademarks.
A trademark is a mark that is used to promote and identify the owner’s goods or services and to enable the public to distinguish them from the goods or services of other traders. It may be a logo or device, name, signature, word, letter, numeral, smell, figurative elements or a combination of colours and includes any combination of such signs and three-dimensional shapes, provided that it is represented in a form which can be recorded and published, such as by way of drawing or description.
Q2. WHAT ARE THE BENEFITS OF REGISTERING A TRADEMARK?
Trademark registration grants trademark owners the exclusive rights to use the registered mark and to obtain statutory protection for its use.
A trademark registered gives the owner the exclusive right to use it as a brand name, license or sell it within the region for the goods or services specified in the registration. He can stop other people from using the trademark as their brand name on the goods and service under registration. For unregistered trademarks, owners have to rely on common law for protection. It is more difficult to establish one’s case under common law.
Q3. WHAT TRADEMARKS CAN BE REGISTERED?
A trademark can be registered if it is:-
(1) The name of a company, individual or firm represented in a special manner;
(2) The signature (except in Chinese characters) of the applicant;
(3) An invented word;
(4) A word that is not either descriptive of the goods or services for which the trademark is used or is not a geographical name or is not a surname; or
(5) Any other distinctive mark.
Q4. WHO CAN REGISTER A TRADEMARK IN HONG KONG?
There is no restriction on the nationality or place of incorporation of the applicant.
Q5. HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK IN HONG KONG?
After filing the application and no objections to the trade mark then the whole application procedure takes about 8 months from application to registration.
Q6. WHAT IS THE VALIDITY PERIOD AND RENEWAL?
Registration is for a period of 10 years and can be renewed for a further period of 10 years. Late renewal within 6 months after expiry is still possible on the payment of a late renewal fee. Failure to renew within 6 months after expiry results in the mark being removed from the register.
Q7. WHAT DOCUMENTS WILL I RECEIVE AFTER MY TRADEMARK IS REGISTERED?
The Hong Kong Intellectual Property Department will issue a certificate after the mark is registered. The certificate serves as evidence that a trademark has been formally registered.
Q8. HOW LONG WILL MY RIGHTS BE PROTECTED FOR?
The protection period of a trademark when registered will last for a period of 10 years and can be renewed indefinitely for successive periods of 10 years.
Q9. WHAT IS THE PROCEDURE OF TRADEMARK REGISTRATION?
Generally there are 4 stages:
1. Pre-filing Trade Mark Search,
3. Publication and
- Pre-filing Search – It is important to conduct a search of the trade mark prior to application to see if your trade mark is already registered or has been applied for by another trader.
- Application – After filing the application to the Trade Marks Registry, the Registry will issue a response to the application within 2 months. If the application is approved, the mark will be published. However if the Registry raises any objection to the application, it is possible to raise counter objection persuading the Registry to withdraw their objection.
- Publication – Once the trade mark has been accepted by the Trade Marks Registry for registration, it will be published in the Hong Kong Intellectual Property Journal for 3 months. Within this 3 months period, anyone can view your trade mark and may lodge opposition to it. If no objection is raised within this 3 months period, then an application can be filed for registration certificate.
- Registration – Once the 3 months publication period is over and your trade mark has been accepted for registration, the details of your trade mark will be entered into the trade marks register and a certificate of registration will be issued. The registration of your trade mark will date back to the filing date of your application which means your rights take effect from the filing date of the application.
Q10. WHAT ARE THE REQUIRED INFORMATION FOR FILING?
1. Applicant’s name
2. Applicant’s address
3. Applicant’s nationality, or the country where the company is incorporated
4. Copy of the trademark
5. Classification of the trademark
Q11. MY COMPANY NAME HAS BEEN REGISTERED IN HONG KONG. CAN I USE THE COMPANY NAME AS A TRADEMARK? IS THE NAME AUTOMATICALLY PROTECTED AGAINST TRADEMARK INFRINGEMENT?
In Hong Kong limited company registration and trademark registration are all separate. Different laws, managed be different government departments, regulate them. The Companies Registry is responsible for the registration of local companies and outside companies incorporated with an established place of business in Hong Kong.
The Intellectual Property Department Trade Marks Registry is responsible for trademark registration. If your company name is listed in the Companies Registry this does not mean that you automatically have the right to exclusively use the company name as a trademark for promoting or trading in goods and services.
You must make a separate application to the Trade Marks Registry in order to obtain legal protection under the “Trade Marks Ordinance”.