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In terms of trademark registration, Hong Kong is an independent jurisdiction from Mainland China. Being one of the world’s financial centers, with a population of 7.5 million and a GDP of US$360 billion, Hong Kong is a hotspot for trademark registration. CCPIT Patent and Trademark Law Office started helping domestic and international clients to register trademarks in Hong Kong since 1998.
Here is a brief introduction on how to register a trademark in Hong Kong.
An application for trademark registration is filed with the Trade Mark Registry of Hong Kong IP Department, which is one of the most efficient intellectual property offices in the world in terms of examining and registering trademarks.
The official receipt is issued as soon as the application is submitted on the same day.
The request is immediately reviewed for any deficiencies in the formal requirements, including description and classification of goods/services. The applicant has a period of two months to remedy all the irregularities noted by the Registry from the issuance of the official notification. No extension is allowed. Failure to file an appeal may lead to the abandonment of the products/services in question or even of the entire application.
The substantive examination usually takes place within 4 months of the filing of the application. The main reasons for refusing a request may include:
Absolute grounds for refusal (Section 11 Trademark Ordinance), e.g.,
11(1)b merely descriptive of the characteristics of the goods;
11(1)(c) consisting exclusively of a sign capable of being used in commerce to designate the characteristics or the geographical origin of the goods.
Relative grounds for refusal (Article 12 of the Trade Marks Ordinance) – identical or similar to earlier marks.
Upon issuance of the notice of refusal, the court office grants the plaintiff six months to file an answer. If more time is needed, the applicant can request a three-month extension.
Publication and registration
Once accepted, the application will be published for opposition in the Official Trademark Journal for a period of three months. It is possible for any potential opponent to obtain an extension of 2 months before the end of the opposition period. If there is no objection, the registration certificate will be issued.
For filing purposes, full filing details plus an electronic copy of the mark (in the case of a non-standard word mark) in JPG format would suffice.
Series of marks – A unique practice in trademark registration in Hong Kong allows an applicant to include a series of marks that look alike in a single application. According to the Trademarks Ordinance of Hong Kong, a series of marks means a number of marks which resemble each other in material characteristics and differ only in points of non-distinctiveness which do not substantially affect the identity of the brand . A typical example of a series of marks may include a word mark in upper and lower case, a design in different colors, or the same Chinese words in traditional and simplified characters.
The Paris Convention for the Protection of Industrial Property has been applied in Hong Kong by the People’s Republic of China. In addition, Hong Kong is a full member of the World Trade Organization and its intellectual property protection system meets the standards set out in the WTO TRIPS Agreement. Therefore, the applicant can claim the priority of his identical application in a Paris Convention country or a WTO member country within 6 months from the filing date.
To claim priority, the applicant can simply provide information on the filing number, filing date and jurisdiction of the home application. The certified priority document is no longer required unless specifically requested by the Hong Kong Trademark Registry.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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