1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Hong Kong. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any sign that is capable of distinguishing goods or services of one undertaking from those of other undertakings and that is capable of being represented graphically. This may include words, personal names, letters, numerals, figurative elements, combination of colors, and any combination of such signs. Sounds and smells are registrable if they can be represented graphically.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Only organizations or individuals with local presence in Hong Kong are eligible for applying to register domain names under the .hk country level domain, which is administered by the Hong Kong Domain Names Registration Company Limited (HKDNR). Domain names are generally registered on a first come, first served basis and are not intended to protect brand names. The HKDNR will not examine whether the domain name under application infringes a particular brand name or trademark but has adopted a dispute resolution policy based on the Uniform Dispute Resolution Policy published by ICANN. Where there is a dispute over a domain name, owners of trademark registrations will have grounds to challenge a domain name registration if the offending name is similar or identical to the trademark owner抯 registration, and the trademark owner can show that the registrant of the domain name has no legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
6. Should a trademark be searched before filing?
Applications are officially searched for prior marks by the Registry as part of the examination process. The applicant, however, can choose to make an official prefiling search through the Registry; this takes several weeks. Alternatively, the applicant can make an unofficial prefiling search conducted by a trademark attorney and obtain results immediately. If a prefiling search is not clear, it can save the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may either instruct a trademark attorney in his jurisdiction or directly contact a Hong Kong trademark attorney for filing. A Hong Kong address for service is required for all applications. Online e-filing of trademark application forms was launched at the end of September 2004 and are being made available in phases.
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered. The application form may be signed by the trademark attorney. To transfer the application to a different trademark attorney, the applicant is not required to sign a Power of Attorney. However, to transfer an application still pending under the old law to a different trademark attorney, the applicant may be required to sign a Power of Attorney.
9. Is local registration the only option, or are there international alternatives?
A Hong Kong application only has effect in Hong Kong. Although the People抯 Republic of China (PRC) resumed sovereignty over Hong Kong as of July 1, 1997, and the PRC acceded to the Madrid Agreement and to the Madrid Protocol in October 1995, the PRC and Hong Kong still maintain independent trademark registration systems. Hong Kong is not a member of the Madrid Protocol or Madrid Agreement and at present local registration is the only way to register a trademark in Hong Kong.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. Multiple class applications can be filed; one application can cover more than one class of goods/services.
11. Is it possible to take advantage of a home application or registration?
f an applicant抯 home country is a member of the Paris Convention, or a member of the World Trade Organization, and provided its home application has been filed within the six months preceding a Hong Kong application, priority can be claimed from the convention/ WTO application. In the event of conflicting applications, the filing date of the home application establishes which rights take precedence. However, unlike the old laws, the priority date no longer determines the registration date of the Hong Kong application and upon registration, the application date in Hong Kong becomes the registration date.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A registered trademark should be used but there is no requirement to file evidence of use periodically or upon renewal. If a registered trademark has not been used either by the owner or with his consent for any period of three consecutive years, and there is no valid reason for such nonuse (e.g., import restrictions by the government), it is vulnerable to revocation on the grounds of nonuse upon application by any party. Commencement or resumption of use within a period of three months prior to the filing of a revocation action is disregarded unless preparation for that commencement or resumption of use began before the registrant was aware that a revocation might be filed.
13. Is using a variation of the trademark allowable?
Provided that the difference in the mark is not substantial and does not affect the identity of the mark, no problem should arise. To maintain and renew the registration, the mark in use must maintain the essential character of the registered mark. Use in a modified form is acceptable, provided that the modification does not change the nature of the trademark or materially alter the character of the mark.
14. Is there any advantage to using a trademark before filing an application?
Yes. Hong Kong recognizes prior use. Evidence of prior use may be a ground for invalidation against subsequent marks and the prior user may sue for infringement, even in the absence of registration, provided such prior use qualifies as substantial. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies higher cost than that of a registration. (See also the response to question 2, above.)
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, either directly or through a licensee, may apply.
16. What information is first published about an application/ registration and when is it published?
Within a few days of an application being filed, the details of the application, i.e., the mark, the application number, the application date (provided it has passed the deficiency test), the applicant抯 name and address, the address for service, and the specification of goods/services are availble online at the Registry's website at www.info.gov.hk/ipd/eng/. After examination, and provided that the Trade Marks Registry is satisfied that the mark meets the criteria for registration and that there is no conflict with prior applications or registrations and all conditions and formalities have been fulfilled, the application along with any conditions of registration imposed by the Trademark Registry will be published online for opposition purposes.
17. What kind of examination (if any) will a new application undergo?
The application is first examined for deficiency to determine whether the information provided about the applicant抯 name, address representation of the mark, the goods and services and other information is correct and complete. If not, a deficiency notice is issued which must be compiled with within a strict non-extendable two months period. Thereafter, the application is searched for prior applications/ registrations i.e. relative grounds check, and examined for distinctive character i.e. absolute grounds check, and if objections are raised, an opinion will be issued giving the applicant six months to respond.
18. What response to official objections is required?
Depending upon the nature of the objection, it may be necessary to make submissions, amend the mark to include a registered house mark, submit evidence of use, obtain consent of the proprietor of cited earlier marks, or restrict the specification of goods/services.
19. How long is the registration process?
The registration process for a straightforward application takes approximately six to eight months.
20. What rights does an application confer?
While an earlier filed application cannot be cited against a subsequent conflicting application, it will form a bar in that the subsequent conflicting application cannot proceed further until the earlier application proceeds to registration. An application can also be used to oppose subsequent applications upon registration. Rights begin on the application date.
21. What is the legal effect of a registration?
The registration confers on the registrant exclusive rights in the mark which are infringed by use of the trademark in Hong Kong without his consent. This entitles the registrant to file infringement suits against unauthorized third-party users, oppose subsequent applications, and cancel subsequent registrations. It also enables the registrant to obtain an injunction against unauthorized use and to seize the goods.
22. Can an application be opposed or cancelled by third parties?
Yes. Any person may file an opposition within three months from the publication date of the application, which period may be extended for a further two months at the Registrar's discretion. No further extension of time for opposition purposes is allowed. Any person may file an invalidation action against a mark at any time after registration. Revocation on the gound of nonuse is also possible.
23. Can an application or registration be assigned?
Yes. A trademark, whether registered or unregistered, may be transferred or assigned. A pending application can be assigned, but the assignment will only be recorded when the trademark is registered. A registration may be transferred.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Yes. To be effective against a third party with a conflicting interest and to enable the new owner to commence infringement proceedings and be entitled to damages, an assignment of a registered trademark must be recorded within six months from the date of the transaction.
26. Can an application or registration be licensed?
Yes. A registered or unregistered trademark may be licensed. The license must be in writing and signed by or on behalf of the party granting the license. The owner or registered owner should, however, exercise control over the quality of the products made and sold by the licensee. The license may cover all or some of the goods/services, may be exclusive or nonexclusive, and may be limited as to territory or duration.
27. Does a license have to be recorded?
Recordation of any license is not compulsory; however, if a license is not recorded within six months from the date of the transaction, it is ineffective against someone acquiring a conflicting interest in the mark and the license holder will not be able to commence proceedings for infringement or be entitled to damages for the period leading up to the date of recordal.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Hong Kong SAR.
29. How long does a registration last?
The initial term of registration is ten years from the application date and is renewable for periods of ten years each.
30. What is required to renew a registration?
A request form for renewal and payment of the renewal fee are required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. The marking registered Trademark is optional.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, at www.info.gov.hk/ipd/eng/. |
