English
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.
The average time frame for the registration approval is 9 months, if no objections or oppositions arise.
The territorial limit of the trademark registration is Hong Kong SAR. The protection is not extended to other countries.
It is not a requirement for trademark application.
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.
Yes. Attack on the basis of non-use is available. Third parties can use this as a ground to cancel the registered mark.
- words
- names
- devices
- certain three-dimensional shapes
- colors
- slogans
- sounds
- smells
- trade dress/get-up
- holograms
- motion
- collective marks
- certification marks
- service marks
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Examination – Applications are examined in respect of:
- Formalities
- Classification
- Clarity
- Descriptiveness
- Distinctiveness
- Deceptiveness
- Conflict
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Publication - The filing particulars are made available to the public via online posting.
- mark;
- name of applicant;
- address of applicant;
- application number;
- application date;
- goods/services;
- 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.
- 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
Hong Kong uses the Nice Classification System.
Hong Kong is not a member of the European Union. Hence, Community Trade Mark registration is not effective in this jurisdiction.
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.
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.
The initial term of the trademark registration is 10 years.
The first renewal date of a registration is 10 years from the application filing date.
Yes. Unregistered marks are legally allowed to be used for any goods or services.
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.
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.
The national trademark office of Hong Kong is accessible online at the following website address: http://www.ipd.gov.hk/.
Applicants are not required to prove actual use or intent to use.
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
The following parties may oppose an application:
- any interested party
- the owner of an earlier right
- a licensee
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
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
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.
Hong Kong is not a member of the Madrid Agreement or the Madrid Protocol.
Periodic statements of use are not required.
Subsequent renewals are made 10 years from the last expiry date.
The first renewal date of a registration is 10 years from the application filing date.
There is none. The owner does not need to submit any document when renewing a trademark.
The grace period for expired trademarks is 12 months.