In terms of trade mark registration, Hong Kong is an independent jurisdiction from mainland China. Being one of the world's financial hubs, with a population of 7.5 million and GDP of 360 billion US dollars, Hong Kong is a hot spot for trade mark registration. CCPIT Patent and Trademark Law Office started assisting domestic and international clients to register trade marks in Hong Kong since 1998.
Here is a brief introduction on how to register a trade mark in Hong Kong.
Authority
An application for registration for a trade mark is filed with the Trade Mark Registry of Hong Kong IP Department, which is one the most efficient IPOs in the world in terms of trade mark examination and registration.
Formality Examination
Official receipt is issued immediately upon filing of the application on the very same day.
The application is immediately examined for any deficiencies in formal requirements, including description and classification of goods/services. The applicant has two months to remedy all deficiencies raised by the Registry from the issuance of the official notification. No extension is allowed. Failure to file remedy may lead to abandonment of the goods/services at issue or even the whole application.
Substantive Examination
Substantive examination usually takes place within 4 months of filing the application. Major grounds of refusal of an application may include:
Absolute grounds for refusal (section 11 of the Trade Marks Ordinance), e.g.,
11(1)b merely descriptive to the characteristics of the goods;
11(1)c consisting exclusively a sign which may serve in the trade to designate the characteristics or geographical origin of the goods.
Relative grounds for refusal (section 12 of the Trade Marks Ordinance) – identical or similar to earlier trade marks.
Upon issuing the refusal notice, the Registry gives the applicant six months to file a response. In case more time is needed, the applicant may request an extension for three months.
Publication & Registration
Once accepted, the application will be published for opposition purpose on the official trade mark journal for a period of three months. It is possible for any intended opponent to obtain one extension of 2 months before the end of the opposition period. If there is no opposition, the registration certificate will issue.
Filing Requirement
For filing purposes, full filing details along with an electronic copy of the mark (in case of a non-standard word mark) in JPG format would suffice.
Series of trade marks – A unique practice in Hong Kong trade mark registration allows an applicant to include a series of trade marks that resemble each other in a single application. According to the Trade Marks Ordinance of Hong Kong, series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark. A typical example of a series of trade mark may include a word mark in both upper case and in lower case, a design mark in various colors, or the same Chinese words in both traditional and simplified characters.
Priority Claim
The Paris Convention for the Protection of Industrial Property has been applied to the Hong Kong by the People's Republic of China. In addition, Hong Kong is a member of the World Trade Organization in its own right, and its intellectual property protection system meets the standards set out in the WTO TRIPS Agreement. Therefore, applicant may claim priority of its identical application in a Paris Convention country or WTO member country within 6 months from the filing date.
To claim priority, applicant may simply provide information as to the filing number, filing date and jurisdiction of the home application. Certified priority document is no longer required unless the Hong Kong Trade Marks Registry specifically requests it.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
