Trade and Service Marks

– Trade Marks Ordinance (Cap. 559), in force as of April 4, 2003.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, with effect from July 1, 1997.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since April 25, 1965. (Note: This Convention continues to apply only to the territory of the Special Administrative Region of Hong Kong after July 1, 1997. The Apostille Service Office of the Judiciary of the Hong Kong SAR has computerized the Apostille system with effect from March 20, 2006.)
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, since February 27, 2013.

Filing

Applicant: any person or entity having the capacity to hold property may apply to register a trademark, but an address for service in Hong Kong must be given in a trademark application.

Foreign applicant: must appoint a local representative.

Service marks: registrable.

Classification: International Classification (10th Edition). Multiple class application is available.

Series of marks: if certain conditions are met, the trademarks may be registered as a series in one registration.

Priority: any person who has filed an application for the registration of a trademark in or in respect of, a Paris Convention country or WTO member, or his successor in title, is entitled to claim priority in an application in Hong Kong, provided that the priority claim is made within six months from the date of application in the Paris Convention country or WTO member.

Definition: a trademark may consist of words (including personal names), geographical indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of goods or their packaging and any combination of such signs.

Absolute grounds for refusal of registration: marks not being capable of distinguishing the goods or services of one undertaking from those of the other undertakings; marks not capable of being represented graphically; marks which are devoid of any distinctive character; marks consisting exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services; marks consisting exclusively of signs which have become customary in the current language or in the honest and established practices of the trade. If the mark has acquired distinctiveness by way of substantial prior use, it may become registrable.

Relative grounds for refusal of registration: a trademark applied for must not conflict with an earlier mark (either registered or pending in the Register); it may be refused registration if a person claiming to have an earlier right of unregistered mark or well-known mark lodges an opposition.

Certification marks: a sign indicating that the goods or services in connection with which it is used are certified by the owner of the sign in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. A certification mark is not registrable if the owner carries on a trade or business involving the supply of goods or services of the kind certified.

Defensive marks: a trademark consisting of an invented word or words, or a device or devices, or a combination of them, which has become sufficiently well-known may be registered as a defensive trademark. The Registrar after considering the extent of use will decide whether defensive registration will be permitted.

Collective marks: a sign distinguishing the goods or services of members of the association, which is the owner of the sign from those of other undertakings.

Filing requirements for an application (to be sent to resident agent):
1. Graphical representation of the mark;
2. Priority document (not normally required unless the applicant faces a potential citation of an earlier mark).

Note: the full particulars of the applicant should be given, i.e. name, nationality and full address.

Electronic filing: available, no reduced fees.

Procedure

Deficiencies checking (formal examination): the filing particulars of an application will be checked before it proceeds to the examination stage.

Examination: each application is examined and an official search is made to ascertain whether the mark is registrable and whether it is identical with or confusingly similar to a pending application or trademark already on the Register. Applicants are given a six-month period in which to respond to official actions. A three-month extension can be sought if necessary.

Disclaimers: available.

Letters of consent: accepted by the Register in order to overcome an objection based on an earlier registration.

Publication: on acceptance, the application is published in the HK Intellectual Property Journal.

Opposition: any person may file notice of opposition within three months.

Protection

Effect of registration: the fact that a person is registered as proprietor of a trademark will be deemed prima facie evidence of the validity of the original registration and of all subsequent assignments and transmissions.

Duration: a trademark is registered for a period of ten years beginning on its date of registration.

Renewal: at the end of the period, the registration may be renewed successively for further periods of ten years each. If the renewal fee has not been paid by the date of expiry of the registration, the Registrar may remove the mark from the Register. Upon payment of the renewal fee, together with a restoration fee, the Registrar may restore the mark to the Register. 

Documents for renewal: no document is required for trademark renewal. Evidence of use is not required for renewal.

Use: compulsory unless there are valid reasons for non-use such as import restrictions or other governmental requirements. The lack of use of a registered trademark for a continuous period of three years or more is liable to be attacked by any person. The initial period of non-use starts from the date of issuance of the registration certificate. The following forms of use are accepted: use of a trademark in a form which does not alter its distinctive character registered; applying a trademark to goods or to the packaging of goods in Hong Kong solely for export purposes; or use of a service trademark in relation to the services provided or to be provided outside Hong Kong.

Modification of Protection after Registration

Rights of prior user: a registered trademark is not infringed by the use by any person in the course of trade or business in Hong Kong of an unregistered trademark or other sign in relation to goods or services if the unregistered trademark or other sign has been so used in Hong Kong or a predecessor in title continuously from a date preceding the earlier of (a) the date of first use in Hong Kong of the trademark which is registered; and (b) the date of registration in Hong Kong of that registered mark.

Assignment: can be registered with or without goodwill of the business. If the assignment is not registered within six months from the date of the transaction, the assignee may lose his right to claim damages or an account of profit by the assignee in respect of any infringement until the assignment is registered. 

Documents required for recordal: no supporting document is needed if particular forms duly signed by appropriate parties have been filed.

Licenses: grant of a license is a registrable transaction and should be registered immediately. 

Licensee: a person other than the proprietor of a trademark can be recorded as an exclusive or non-exclusive licensee. A license to use a registered mark may be general or limited. Besides, it may authorize a licensee to grant a sub-license.

Revocation of registration: any person may make an application to the Registrar or the court for revocation of the registration of a trademark on the grounds that (a) the trademark has not been genuinely used in Hong Kong for a continuous period of at least three years; (b) the trademark consists of a sign that, in consequences of the acts or inactivity of the owner, (i) has become the common name in the trade for goods or services for which it is registered, or (ii) has become generally accepted within the trade as the sign that describes goods or services for which it is registered; (c) the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services; or (d) there has been a contravention of or a failure to observe any condition entered in the Register in relation to its registration.

Declaration of invalidity of registration: an application for a declaration of invalidity of the registration of a trademark may be made either to the Registrar or the court.

Status of unregistered trademark: no action may be instituted for infringement of an unregistered mark. Common law action for passing off is available.

Well-known trademark: the owner of a well-known trademark is entitled to restrain by injunction the use in Hong Kong of a trademark which, or the essential part of which, is identical or similar to his trademark, in relation to identical or similar goods or services.