Should I file my trademark in local characters?
Yes, for a broader and stronger protection in Hong Kong, we recommend registering your trademark in local characters.
If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. This means that a third party could use or register the same trademark (or a similar one) in local characters.
In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. The public in Hong Kong will recognize your brand more easily if they are able to read and correctly pronounce the mark.
Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements.
Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 9 months, if no objections or oppositions arise.
If I register my trademark in Hong Kong, do I have protection in other territories?
The territorial limit of the trademark registration is Hong Kong SAR. The protection is not extended to other countries.
Do I need to sign a Power of Attorney?
It is not a requirement for trademark application.
Are there any benefits from a pre-filing use of the trademark?
Pre-filing use of the mark can help the owner in demonstrating its acquired distinctiveness. This can overcome an opposition to the application on the grounds of non-distinctiveness.
Will there be problems in case I don’t use my trademark after registration?
Yes. Attack on the basis of non-use is available. Third parties can use this as a ground to cancel the registered mark.
What are the types of trademark that can be registered in Hong Kong?
- certain three-dimensional shapes
- trade dress/get-up
- collective marks
- certification marks
- service marks
What are the phases of application after a trademark has been filed in Hong Kong?
Examination – Applications are examined in respect of:
Publication - The filing particulars are made available to the public via online posting.
- name of applicant;
- address of applicant;
- application number;
- application date;
- priority claim information;
- representation of trademark.
Registration – When the application has successfully overcome all oppositions and it was able to meet all requirements, official registration will be granted.
What type of trademark is not registrable?
- non-distinctive trademarks
- marks that function principally as surnames
- marks that function principally as geographic location names
- marks that comprise only of the shape that resulted from the product’s nature, the state of merchandise that is important to acquire a specialized outcome or the shape that gives significant incentive to the products
Does Hong Kong use the "Nice Classification" system?
Hong Kong uses the Nice Classification System.
Does the Community Trademark apply for Hong Kong?
Hong Kong is not a member of the European Union. Hence, Community Trade Mark registration is not effective in this jurisdiction.
Is there any possibility to claim priority in Hong Kong?
The priority date is only used for determining which trademark right was first established in cases where there are conflicting applications. The Convention or WTO application date will not be used.
What do I need to do to satisfy the use requirement?
Prevent your trademark from being attacked on the basis of non-use by using it within three years from the actual registration date.
Use can be minimal, provided it is "genuine" and occurs in Hong Kong.
Once my trademark has been registered, for how many years will be valid?
The initial term of the trademark registration is 10 years.
What will be the renewal date of my trademark?
The first renewal date of a registration is 10 years from the application filing date.
Is it legal to use my trademark even if it is not yet registered?
Yes. Unregistered marks are legally allowed to be used for any goods or services.
How many applications should I file?
The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in Hong Kong.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
Does having a registered trademark in Hong Kong give me any right?
Registration is not required to secure rights to a trademark. Prior use is enough to establish ownership to a trademark; this is a 'first to use' jurisdiction.
What is the web address of the trademark national office?
The national trademark office of Hong Kong is accessible online at the following website address: https://www.ipd.gov.hk/.
Is there any need to use my trademark before I apply for registration?
Applicants are not required to prove actual use or intent to use.
Can a Trademark Application be opposed?
The following can be grounds for opposition:
- relative grounds on the basis of proprietary rights or conflicting earlier registration
- absolute grounds on the basis of non-proprietary rights or non-distinctiveness)
- application was filed in bad faith
- a breach of copyright was proved
- rights under Article 6bis of the Paris Convention are violated
- rights under Article 6septies of the Paris are violated
- rights in a company name
- rights under Article 8 of the Paris Convention are violated
- registered design rights
- rights in a personal name
- unauthorized use or illegal use of protected emblems and national insignia
Who can contest my trademark application?
The following parties may oppose an application:
- any interested party
- the owner of an earlier right
- a licensee
Is it possible to cancel a registration?
The following can be grounds for cancellation:
- the mark is descriptive
- the mark is lacking of a distinctive trait
- the mark is misleading, deceptive or disparaging;
- the mark is functional
- the mark is a protected armorial bearing, flag or a State emblem
- the mark is generic or customary in the current language
- the mark is a geographical indication;
- the mark is a threat against public policy or principals of morality
- the mark is a badge or an emblem being a particular public interest
- the mark is a misrepresentation of the product’s nature or it is used in a misleading manner
- the mark is prohibited in Hong Kong
- the registration of the mark was made in bad faith
- there is a failure to observe any condition or policy in the registration process
- the mark has not been genuinely used in Hong Kong by the owner
Are there any rights established by having a registered trademark?
The following trademark rights are established by registration:
- the exclusive right to use and enjoy the benefits of the registered trademark
- the right to object to later conflicting applications
- the right to request for a cancellation order against a later conflicting registration
- the right to file an infringement case against a confusingly similar mark;
- the right to license third parties to use the trademark
- the right to request from the customs authorities to confiscate counterfeit goods
- the right to obtain damages from third parties for infringing the registered trademark
How long is the opposition period?
The opposition period begins on the date when the application particulars are published in the Hong Kong Intellectual Property Journal.
The opposition period ends three months from the date of the publication of the application in the Hong Kong Intellectual Property Journal.
Is Hong Kong a member of the Madrid System?
Hong Kong is not a member of the Madrid Agreement or the Madrid Protocol.
Do I need to present periodic statement of use?
Periodic statements of use are not required.
When should I renew my trademark?
Subsequent renewals are made 10 years from the last expiry date.
What will be the renewal date of my trademark?
The first renewal date of a registration is 10 years from the application filing date.
Is there any documentation that should be presented when renewing a trademark?
There is none. The owner does not need to submit any document when renewing a trademark.
If my trademark expires, do I have a grace period?
The grace period for expired trademarks is 12 months.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.