Hong Kong Intellectual Property Department (HKIPD)
Nil
(1)
Registration principles. Hong Kong Trade Mark Ordinance protects registered trademarks, Article 10 of Trade Mark Ordinance stipulates that “A registered trade mark is a property right obtained by the registration of the trade mark under this Ordinance. The owner of a registered trade mark has the rights and is entitled to the remedies provided by this Ordinance.” If the registered trademark is used by someone without authorization/license, the trademark owner can rely on his right to the trademark and sue the other party for trademark infringement.
(2)
First-to-use principles and first-to-file principles. According to Article 19 of Trade Mark Ordinance, a registered trade mark is not infringed by the use by any person of an unregistered trade mark if this mark has been so used in Hong Kong continuously from a date preceding the earlier of the date of first use or the date of registration in Hong Kong of that trade mark. It shows that Hong Kong also protects the right to use of the unregistered trademark. Article 13 of the Trade Mark Ordinance justifies the honest concurrent use of the trademark and other earlier right. It also provides that when it is proper for the trade mark to be registered under other special circumstances, the registration shall be subject to limitations and conditions as the Registrar or the court thinks fit to impose.
(3)
Common law protects trademark that has been in continuous use but has not been registered. For trademark that is not registered, the owner can only rely on the common law action of “passing off” to protect his mark against imitation or unauthorised use. This remedy, however, requires the owner of the mark to prove his reputation and goodwill, and the use of the infringe mark may cause confusion or misleading to the public.
In Hong Kong, a trademark is a sign that distinguishes the goods and services of one trader from those of others. Typically, a trademark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of these. In addition, certification trademark and group trademark are also protected by Hong Kong Trade Mark Ordinance.
(1)
Applicant’s name, address and nationality/ Company’s name, registered address and country;
(2)
A clear graphical representation of the trademark;
(3)
An applicant’s Hong Kong service address;
(4)
A Pronunciation and translation of the trademark (if the trademark contains foreign language);
(5)
Priority documents (when priority is claimed).
If an application goes smoothly, it takes around 6-9 months from filing the application to registration. Among the whole process, it takes around 3-6 months for examination and if there is no objection raised by HKIPD, the trademark will then be published for 3 months. If no opposition is filed, a registration certificate will be issued within 2 weeks after the end of publication.
The trademark registration in Hong Kong is valid for 10 years from the date of application, which can be renewed every 10 years. If the registrant would like to extend the trademark protection period, a request for renewal shall be made within 6 months before the expiry date. Where no request has been filed within the said period, a grace period of 6 months may be allowed. Where no application for renewal has been filed after the grace period, HKIPD shall cancel the trademark. In such case, the request for restoration shall be made within 6 months from the date of cancelation to restore the trademark.
If a registered trademark has not been formally used in Hong Kong by the owner or licensee on the goods/services for which it is registered for a continuous period of at leas3 years, any third party shall have the right to apply for cancellation of a registered trademark.
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