A business owner should consider trademark registration in Hong Kong in order to distinguish his specific products and services from those of other producers. The trademark can be a sign or any other design that is used by the company to represent itself.
When deciding to register a trademark the individual applying for it must make sure that the selected design does not conflict with any others already registered in Hong Kong. Before you apply, a consultant at our law firm in Hong Kong can tell you more about the Trade Marks Ordinance and how this field is regulated in the city.
We invite you to watch this video containing information about the trademark registration procedure in Hong Kong:
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Why should you register your trademark in Hong Kong?
Once the trademark registration process is complete you will have exclusive usage rights over the selected design or sign. If other businesses will use the same trademark for their own purposes you have the right to accuse them of infringement and you can take legal action with help from our lawyers in Hong Kong. However, you lose any rights if you do not register your trademark with the Hong Kong authorities.
Before you can apply for registration you should make sure that the same trademark is not already registered by another business. This can be done online using the special portal from the Hong Kong Intellectual Property Department or you can request specialized services from our lawyers.
The items that can be subject to trademark registration in Hong Kong include:
- words and combination of words;
- characters and numerals;
- colors, sounds, shapes or a combination of these.
The trademark needs to be distinctive and it is ideal to be relevant for the business field in which you operate.
It is important to keep in mind that trademark registration in Hong Kong takes place according to a several factors that have to do with the mark itself. We list some of the most important characteristics of the trademark below:
- Distinctiveness: a trademark should be different from those that are already in use by other companies; moreover, a chosen work or combination of words should also be distinctive for the business (for example, an invented word);
- Descriptiveness: the trademark should not clearly describe the goods or services, nor their quality, quantity or purpose; geographical names cannot be used;
- Terms in use: if the proposed mark is a term or a representation that is already in use in the business field, then it is likely to be rejected;
- Similarity: if another trademark that is similar has already been registered by another party, then it will not be accepted (it cannot look or sound the same as al already registered one).
Making sure that all of the abovementioned points are observed is important when applying for trademark registration in Hong Kong. This is why we suggest that interested entrepreneurs start by conducting a trade mark search with the Trade Marks Registry. This is the Search and Preliminary Advice Service offered by the Registry and it is available. A simple search can reveal if there are any other registered trademarks that are similar to the proposed one in the same class of goods and services (or in similar classes).
Our team of lawyers in Hong Kong can offer you more details about this search and the conditions set forth by the Trade Marks Registry, the Intellectual Property Department.
What are the steps for trademark registration in Hong Kong?
Once the mark has been decided upon based on the preliminary research, the applicant can submit the application to the Trade Marks Registry.
Applications for trademark registrations and those for patents and designs registration can be filed online using the Interactive Service System belonging to the Intellectual Property Department. Special forms exist both for the preliminary search for an existing trademark and the application for registration.
The registration process includes the following stages:
- Application: the initial stage in which the applicant provides the mark and the application form;
- Checking deficiencies: the Registry checks if the application includes all of the needed forms and if they are filled in accordingly;
- Searching and examining: this is the actual examination phase for the trademark; it is evaluated against other existing ones in order to check for similarities;
- Registration: if all goes well, the trademark is published in the Hong Kong Intellectual Property Journal and then the applicant receives a certificate if registration.
Applicants should take the needed time to properly fill in the trademark application forms. This is important because once submitted, no significant changes can be implemented. The errors that can be corrected are minor, clerical ones. What’s more, the application fee cannot be refunded.
If the trademark registration in Hong Kong proposal does not meet all of the criteria, then it will be objected. In this case, the applicant has 6 months to meet the requirements (this period can be extended by another 3 months under certain conditions).
The applicant has the right to call for a hearing after the objection was made and in this case a hearing officer will issue a decision. One of our lawyers in Hong Kong can provide you with detailed information about the hearing process.
Individuals interested in requesting these services must pay a certain fee and in some cases an additional fee. These include:
- 2,000 HKD: the application fee for the registration of a single trademark in Hong Kong;
- 1,000 HKD: the fee applicable to each additional class of goods or services, when/if applicable;
- 400 HKD: the service fee for using the Search and Preliminary Advice services offered by the Hong Kong Trade Marks Registry;
- 200 HKD: for each additional class of goods or services that is verified, if applicable.
Please note that the fees presented above for using the Trade Marks Registry were valid at the time this article was written. If you are interested in trademark registration in Hong Kong and need updated information, please feel free to reach out to our lawyer.
What are the rights of a trademark owner in Hong Kong?
Trademark registration in Hong Kong offers the advantage of personally owning the said trademark. This means that the owner has exclusive rights and may take legal action against another party that uses the same mark or a very similar one, without consent. One situation in which consent can be awarded is for franchises. In this case, the one who acquires the rights will also have the right to use the trademark, according to the franchise agreement. If this is a topic of interest, our team of lawyers in Hong Kong can give you more information,
As a trademark owner in Hong Kong you have a set of rights. These include, but are not limited to the following:
- you may apply for and be granted a court order in order to stop another company or individual from using (infringing) your trademark;
- you can be compensated (monetarily) when such as infringement has taken place and someone has illegally used your trademark;
- you can extend the use of your trademark to another party, in exchange for royalties or as otherwise described in the license granting agreement;
- you can sell your trademark and you can choose to gift the trademark or leave it as inheritance (this can be indicated in one’s will).
Understanding these rights is important and our team can help all those interested know more about how they can benefit from trademark registration in Hong Kong. What’s more, our lawyers can help those who are interested in applying for an injunction – the court order that helps stop another company from using/infringing an existing trademark.
Those who are interested in starting an international business, or who wish to expand a Hong Kong company to another market, for example Europe or the United States, should know that trademark registration in other locations is done as per the rules and regulations in force in that jurisdiction. This means that the application for registration made in Hong Kong does not extend, not even for usage in Mainland China. A different application is required in each country where a company owner wishes to seek trademark protection. Likewise, each country imposes its own laws as to trademark classes and the general registration process.
Trademark classes in Hong Kong
An important issue that needs to be taken into consideration is the selection of the trademark class. When making the submission, the applicant needs to indicate the class of goods and services with which the trademark will be associated. These classes are defined in the Nice Agreement for the International Classification of Goods and Services for the Purposes of the registration of Marks.
The main classes are covered below by our attorneys in Hong Kong:
- Goods: class 1 thru 34 include chemicals, paints, non-medical cosmetics, industrial oils, pharmaceuticals, common metals, machines, hand tools, different types of apparatus and instruments, surgical, medical, dental and veterinary apparatus and instruments as well as those for cooking, heating or cooling, vehicles, firearms, precious metals, musical instruments, paper and cardboard, packing and insulating materials, leather and imitations thereof, non-metal materials for construction, furniture, household or kitchen utensils, ropes and string, textiles, carpets, games and toys, foodstuffs, coffee, tea and cocoa, alcoholic and non-alcoholic beverages, tobacco and its substitutes;
- Services: class 35 thru 45: advertising, business management, insurance, financial and monetary affairs, real estate affairs, constriction services, mining, oil and gas drilling, telecommunications services, transport, packaging and the storage of goods, food and drink preservation, scientific and technological services, industrial services, food and drink services, temporary accommodation, medical and veterinary services, legal services and security services.
Those interested in trademark registration in Hong Kong should keep in mind that the list presented above is not exhaustive. Our lawyers can give you more details about the Nice Classification.
Trademark opposition in Hong Kong
The Hong Kong Intellectual Property Journal is available for public inspection, thus any third party can lodge an opposition to a published trademark. This can take place within three months from the new trademarks’ publication date.
Individuals can respond to a third party opposition by either withdrawing their application or submitting a counter-statement. Our team of lawyers in Hong Kong can assist you if you wish to oppose an objection, however, it is useful to know that if the applicant loses the opposition proceedings, he may need to cover the costs incurred by the other party.
Each of the parties are offered time to provide sufficient evidence to support their case. The data is presented during a hearing that takes place in front of a hearing officer. He is the one to decide the outcome of the opposition and it is not uncommon for the winning party to be entitled to an award of costs.
Intellectual protection in Hong Kong
The Trade Marks Ordinance and the Trade Marks Rules are two important legislative documents that govern the acceptance and registration of trademarks on the territory of Hong Kong. Some of the most important criteria included in the Ordinance demand that the trademark must be distinctive from other existing ones, it should represent a description of the services offered by the company and it must not be a well-known term in the line of business.
Some of the common deficiencies and irregularities with trademark applications in Hong Kong include: not choosing between English and Chinese when making the submission (the application should be filed on one of the two languages), not providing the adequate name of the applicant (for example, in case of a sole trader – the name of the sole proprietor should be stated, followed by the trading name of the sole proprietorship) or not providing a clear representation of the trade mark (the solution is to make sure that the electronic image has the right size and that all the components are visible).
If you are also interested in other issues, or have questions about Hong Kong residency, our lawyers specializing in the right of abode can answer your questions. While there is no express condition concerning one’s debts while making the application for permanent residency, understanding the general requirements is advisable before lodging the application with the authorities.
Our representatives can help you file the needed documents for trademark registration. You can contact our Hong Kong law firm for more details on the application process and the applicable trademark laws.