Hong Kong trademark law
Encyclopedia
The trade mark
law of Hong Kong
is based on the Trade Marks Ordinance Cap. 559, which came into force on 4 April 2003 and repealed the Trade Mark Ordinance Cap 43. The system established by this legislation is entirely separate to the system used in the People's Republic of China
, pursuant to the "one country-two systems" policy. The superseded law and the current law share many similarities with the relevant legislation in the United Kingdom
, a similarity which is also facilitated by TRIPs.
The new law introduced various substantive and procedural changes, such as expanding the legal definition of a trademark; including or broadening protection for certification mark
s, collective marks, and well-known trade marks; reducing the period of non-use for revocation purpose from five to three years; and simplifying and streamlining procedures for the registration of assignments, and "registrable transactions" such as licenses.
to handle the filing of an application in one class is HK $4,300 (the professional component of this fee is recommended by the Hong Kong Law Society). The official filing fees levied by the Intellectual Property Department of Hong Kong are HK$1,300 for the first class and an additional HK$650 per additional class. There will be additional fees for other stages in the registration process.
Firstly, the application is assessed by an examiner for deficiencies which go to formalities. The next stage is substantive examination, where the main grounds of objection could be raised: absolute grounds for refusal (e.g. where the mark is inherently not registerable), and relative grounds for refusal (e.g. where the mark is identical or similar to mark covered by an application or registration filed earlier in time).
After the objections (if any) are overcome, the application will be accepted by the registry and published for opposition purposes for an extendible period of three months to allow third parties to object to registration of the mark on certain grounds.
Once any oppositions are resolved, a certificate of registration will be issued. The standard timeframe to registration for an application which encounters few if any problems or difficulties is 12 months.
Upon registration, and subject to the discussion on revocation below, a trade mark is valid for an extendible period of 10 years.
of trade marks into two parts called "Part A" and "Part B", whereby the owners of distinctive marks could seek registration under Part A, while the owners of marks with some distinctive character could pursue registration under Part B. Part B registration meant that certain rights were not available to the trade mark owner, which were otherwise available to the owner of a Part A registration.
Under the new law, the division of the register was abolished, and one standard of registrability was introduced.
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
law of Hong Kong
Hong Kong
Hong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
is based on the Trade Marks Ordinance Cap. 559, which came into force on 4 April 2003 and repealed the Trade Mark Ordinance Cap 43. The system established by this legislation is entirely separate to the system used in the People's Republic of China
People's Republic of China
China , officially the People's Republic of China , is the most populous country in the world, with over 1.3 billion citizens. Located in East Asia, the country covers approximately 9.6 million square kilometres...
, pursuant to the "one country-two systems" policy. The superseded law and the current law share many similarities with the relevant legislation in the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, a similarity which is also facilitated by TRIPs.
The new law introduced various substantive and procedural changes, such as expanding the legal definition of a trademark; including or broadening protection for certification mark
Certification mark
A certification mark on a commercial product indicates five things:* The existence of a legal follow-up or product certification agreement between the manufacturer of a product and an organization with national accreditation for both testing and certification,* Legal evidence that the product was...
s, collective marks, and well-known trade marks; reducing the period of non-use for revocation purpose from five to three years; and simplifying and streamlining procedures for the registration of assignments, and "registrable transactions" such as licenses.
Filing to registration
Registration of a trade mark in Hong Kong commences with the filing of an application at the Trade Mark Registry of the Hong Kong Intellectual Property Department. An application may cover one or more classes of products and/or services. The standard total cost for using the services of a trademark attorneyTrademark attorney
A trademark attorney is a person who is qualified to act in matters involving trademark law and practice and provide legal advice on trade mark and design matters....
to handle the filing of an application in one class is HK $4,300 (the professional component of this fee is recommended by the Hong Kong Law Society). The official filing fees levied by the Intellectual Property Department of Hong Kong are HK$1,300 for the first class and an additional HK$650 per additional class. There will be additional fees for other stages in the registration process.
Firstly, the application is assessed by an examiner for deficiencies which go to formalities. The next stage is substantive examination, where the main grounds of objection could be raised: absolute grounds for refusal (e.g. where the mark is inherently not registerable), and relative grounds for refusal (e.g. where the mark is identical or similar to mark covered by an application or registration filed earlier in time).
After the objections (if any) are overcome, the application will be accepted by the registry and published for opposition purposes for an extendible period of three months to allow third parties to object to registration of the mark on certain grounds.
Once any oppositions are resolved, a certificate of registration will be issued. The standard timeframe to registration for an application which encounters few if any problems or difficulties is 12 months.
Upon registration, and subject to the discussion on revocation below, a trade mark is valid for an extendible period of 10 years.
Post-registration
A registration for a trade mark may be subject to revocation by a third party if the trade mark has not been genuinely and continuously used for at least three years, and there are no valid reasons explaining the lack of use.The old law
The old trade mark law (Cap. 43) divided the registerRegistered trademark symbol
The registered trademark symbol, designated by ® , is a symbol used to provide notice that the preceding mark is a trademark or service mark that has been registered with a national trademark office...
of trade marks into two parts called "Part A" and "Part B", whereby the owners of distinctive marks could seek registration under Part A, while the owners of marks with some distinctive character could pursue registration under Part B. Part B registration meant that certain rights were not available to the trade mark owner, which were otherwise available to the owner of a Part A registration.
Under the new law, the division of the register was abolished, and one standard of registrability was introduced.
See also
- Hong Kong copyright lawHong Kong copyright lawCopyright law in Hong Kong to a great extent follows the English model. The Basic Law of Hong Kong, its constitutional document, guarantees a high degree of autonomy and continuation of laws previously in force after its reunification with Mainland China. Hong Kong therefore continues to maintain...
- Intellectual propertyIntellectual propertyIntellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
- People's Republic of China's trademark lawPeople's Republic of China's trademark lawThe system of trademark law in mainland China is administered by the China Trade Mark Office or CTMO...