REGISTERING A TRADEMARK IN HONG KONG
What is a trademark?
A trademark is a sign that distinguishes the goods and services of one trader from those of others. Registering a trademark gives you the exclusive right to use it in relation to the specific goods and services for which it is registered.
Though unregistered trademarks can be legally protected (generally by proving that in passing off their own services as yours, another party has damaged your business and reputation), registering your trademark is a simple and important part of protecting your business.
What can I register as a trademark?
A trademark is normally a word, phrase or graphic image. The name of a business is not the same thing as a trademark. A mark cannot be registered if it is identical or similar to an existing registered mark or one which is the subject of a prior application in relation to the same or similar goods or services.
A trademark which is descriptive of the goods or services (eg ‘Clean’ washing powder) or one which consists of a general term used in the trade is normally not acceptable unless it is well established and has been used for a few years prior to application.
How to register a trademark in Hong Kong
Trademark applications in Hong Kong are governed by the Trade Mark Ordinance, (Chapter 559). Applications and registration are dealt with by the Trade Marks Registry.
In addition to your personal contact details, an application typically consists of:
- A completed application form, including the class(es) of trademark within which you are applying for registration
- A clear image of the trademark concerned
- Specifications of the goods and services to be covered by the application
- Any claim for priority consideration of your application
Once the Trade Marks Registry is satisfied that the formalities of your application are in order, it will examine the mark to see whether it is acceptable for registration under the Ordinance. Assuming this to be the case, the Registry will publish the mark in its official journal. For a three month period your application is open to objection by any person.
If no objection is received, or if any objection is considered and overruled, your application will then be registered for a period of 10 years (renewable for a further 10 years) from the original date you filed your application.
The application fee to the registry is HK$1300, plus $650 for each additional class included in the application. Though it is possible that applications will be processed more quickly, we advise clients to allow at least 12 months for their application.
How do trademarks work across different jurisdictions?
Your registered trademark will only apply in Hong Kong. To guarantee your rights in other jurisdictions, including China, you will need to file separate, local applications for trademark protection.
The contents of this article are for general information only and should not be considered as legal advice. For further information, please contact:
Vanky Mak, Partner
tel 852-2847 2338
vankymak@hwg-law.com