Trademark Registration in Hong Kong
Trademarks are synonymous with the brands in the market. The decision to buy goods and services is highly influenced by the brands and the reputation that such brands represent. This reputational aspect of the brand can be protected by securing a trademark in the brand's name.
To safeguard the brand's interests, business owners must realise that trademarks are an essential asset for their business. They should move ahead and learn the critical applicable regulations to protect their intellectual property from being used by others.
What is a trademark?
A trademark is a sign or symbol that distinguishes the services and goods of a vendor from that of the other. A trademark can be in the form of words (including personal names), designs, indications, letters, numerals, characters, figurative elements, sounds, colours, smells, packaging of the product or the shape of the goods or any combination of these. In order to be accorded the status of a trademark, the prospective sign should be such that it can be represented graphically.
Need for registration of trademarks in Hong Kong
Exclusive Right: Registration of a trademark provides the exclusive right to you in order to use the trademark in relation to the goods and services with regard to which the trademark is registered.
Right to take Legal action: The owner of a registered trademark has the right to sue the traders/vendors who in accordance of their services infringe the right of the actual owner of that mark.
Better protection: If you have the trademark registered for your good or service, then you are in a better position to protect your trademark, and it is easier to prove that you are the actual owner of the trademark.
Prerequisites for registration of Trademark in Hong Kong
Whenever an applicant makes an application for the registration of a trademark in Hong Kong, the Trademark Registry decides whether to raise objections in the application on the basis of the criteria laid down in the Trademark Ordinance. Therefore, an applicant must always take into consideration the following points before the registration of a Trademark in Hong Kong:
- Trademark should be Distinctive -
The trademark should be such that it stands out from the crowd. The trademark can be in the form of a logo, word, picture etc., and it should clearly set out the applicant's goods and services from that of other traders. The Trademark Registry does consider invented words like 'VAMCOR' for sunglasses as distinctive and, similarly, the word 'cherry' for medical devices.
- Should not be Descriptive-
The trademark in no way should describe the quality, purpose, quantity or value of the goods and services, or else its registration will raise objections. In a similar vein, the use of a geographical name should not be made a part of the trademark. Examples can be "smooth leather", "clean and soft", and "Hong Kong dimsums”.
- Should not be a well-known term in your line of business -
The trademark should not be a well-known term or representation that is used widely in the applicant's line of business. For example, "V8" for the vehicle engine.
- Should not already be registered-
Suppose someone else has already registered or applied for the registration of a trademark for the same or similar types of goods and services or sounds or looks identical same or similar to another registered trademark or the one that is being applied for. In that case, the Registry can raise objections against the trademark.
- Prior Trademark search -
It is always advised to conduct a prior trademark search to find out whether your trademark has already been registered or already applied for by another trader. Trademark search and preliminary advice services can also be made by submitting Form T1.
- Other information to be considered -
It is advised to keep the abovementioned points in mind while applying for a trademark as once the form for application has been submitted, the particulars of the application cannot be changed (unless it is a minor amendment).
- Major Banking and Payment hub of the world -
Hong Kong also takes pride in being one of the significant International Financial Services Centres in the world. It offers a variety of payment services and financial solutions. It provides a simple process to set up multiple currency business accounts to save on currency conversion while dealing with various currencies.
Application Examination Procedure for trademark registration in Hong Kong SAR
On receiving the application for trademark registration, the examiner at the Trademark Registry processes the application in the following stages:
- Application made to the Trademark Registry
- Checking the Deficiencies in the application
- Search and Examination begins for the trademark
- Raising objections against the trademark
- Thereafter, a hearing takes place
- Publication of trademark for inviting the opposition to the trademark
- Registration of the Trademark takes place
- Submission of Application to the Trademark Registry-
The application should be submitted to the trademark registry with all the prescribed documents in the arrangement prescribed by the authority. If the Trademark Registry does not find any deficiencies in the particulars of the application and no objections are raised. In that case, the registration will be completed within 6 months of the receipt of application.
- Checking the Deficiencies in the application -
Before proceeding with the application form examination, the Trademark Registry thoroughly checks the application form and attachments. This checking is carried out to see if all the required parts of the application form have been properly filled in, whether the particulars are correct, and whether any information has been left missing in the application form.
If any required information is found to be missing by the Trademark Registry, then the applicant is asked to provide that information to remove the deficiencies. There are some minor amendments in the form that do not affect the filing date of the application. These include the class number of the goods for which the application has been made etc.On the other hand, essential changes in the form affect the date of filing of the application. These include the absence of representation of the trademark. It must be remembered that major amendments in the form cannot be made or accepted by the Trademark Registry, such as changes in the representation of the trademark.
If everything is in order in the application, the application shall move to the next stage, the search and examination stage.
- Search and Examination of the Trademark-
Once the deficiencies in the application form have been removed, everything has been found to be in order, after making the amendments, if any, the application moves on to the next stage where the Trademark Registry carries out trademark search to check whether same or similar trademarks have already been registered or applied for registration by some other trader for identical or similar types of goods and services.
The Trademark Registry also checks whether the trademark satisfies all the registration requirements laid down in the Trademarks Ordinance. Some of the prerequisites for registration have been mentioned above. However, that is not a comprehensive list.
Thereafter, the examiner gives its opinion in writing, either laying down the grounds for the objection against the proposed mark or confirming that the mark is acceptable for registration purposes.
- Raising objections against the trademark-
If the Trademark Registry finds that the requirements for registration of the trademark have not been met in the application, it can raise objections to the proposed mark. The applicant is given a time of 6 months to remedy the objections raised by the Trademark Registry and further meet the requirements. The Registry can also grant a further extension of 3 months.
Overcoming Objections: The Trademark Registry lays down the reasons and grounds stating why the mark does not meet the registration requirements. Furthermore, the Trademark Registry suggests ways of overcoming the objections and if it is possible to do so according to them.
It is possible that the applicant has tried to rectify and make amendments to the application form in response to the objections raised by the Registry. The Registry may still find that the requirements for registration of the trademark have not been met. In this case, the Registry issues a different opinion indicating these things. However, this further opinion shall be issued after the expiry of 6 months period specified in the initial opinion. At this stage, if the applicant is still interested in pursuing their trademark application, they have three months from the date of further opinion to satisfy the registration requirements or instead call for a hearing. The applicant can ask for the extension only in specified circumstances as mentioned under the Trademarks Rules, such as buying time to obtain the owner's consent of an earlier trademark.
- Hearing -
If the applicant calls for a hearing, all the evidence to be used for and against the trademark shall be considered after the hearing, and the decision shall be issued by the Hearing Officer.
- Publication of the Trademark -
Once the acceptance has been issued for the trademark to be registered, the mark is registered in the Hong Kong Intellectual Property Journal.
The purpose behind publishing the trademark in the Hong Kong Intellectual Property Journal is to make the trademark public to invite opinions or objections. If they have any objections to the trademark, they can lodge an opposition to it. Those who want to object to the trademark have a time period of 3 months from the date of publication of trademark in the Journal.
The applicant has the option to either withdraw their application or respond to the opposition by filing a counter-statement against it. It must be noted that in case the applicant withdraws the application or loses in the opposition proceedings, the applicant shall bear the costs of the opposite party. The applicant and the opposition are given equal opportunity to file their evidence supporting their respective claims within the given time limits. When all the evidence from both parties has been received, a hearing shall take place before a hearing officer who then makes a decision. The party that succeeds in the opposition proceedings is usually entitled to an award of costs.
- Registration of the Trademark
Once the applicant's trademark is accepted, the Trademark Registry enters the details of the trademark into the Trademarks Register, and the applicant is issued a certificate of registration. Thereafter, a notice of registration is published in the Intellectual Property Journal, and the trademark registration dates back to the date of filing of the application for the trademark. This means that the rights of the registered trademark owner take effect from the date of filing of application with the Trademark Registry.
General Instructions for filling out the Trademark Registration form
- No major Changes in the form
It must be kept in mind that once the form has been submitted to the Trademark Registry, the applicant cannot make any significant changes to the form. Only minor amendments have been permitted. Further, there can be no refund for the application fee. Therefore, it is suggested that the applicant must fill out the form under professional guidance.
- Conduct a prior trademark search
It is also suggested that the procedure of filing this form must be adhered to, and the applicant must conduct a prior trademark search to find out whether someone has already registered or applied for an identical or similar trademark in the same or similar classes of goods and services. It is advisable to seek guidance of experts in making sure that theses 2 points are covered by the applicants.