This article is written by Tharoon Thangavel, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
A outline of registration of trademark in Hong Kong
- Trademark is usually any indication, words, letters, phrases, designs, characters, smells, colors, sounds numerals, or any grouping of these.
- It is considered a valuable commercial asset since it helps firms.
- To recognise the company’s goods and services.
- To differentiate the company goods and services from those of other players.
- Generally, you may observe a trademark on a manufactured goods, a package, a receipt, a tag, or on corporation constructions.
Duration of a trademark
- In compliance with the Hong Kong Trade Marks Section 49, the period for a registered trademark in Hong Kong is 10-years. It is noted that the applicant is subject to pay renewal fee of registered trademark every 10 years if you want to continue the trademark in Hong Kong. The registered trademark drives into effect from the actual date the filing application.
Registered and unregistered trademark
- Actually, a registered trademark in Hong Kong is a property right. It is the result of the successful registration of the trademark under Hong Kong Trade Marks Regulation. The Hong Kong trademark registration fee is listed below:
First category registration fee
Additional category fee registration
Registration takes time
- It seems to be standard that the ® symbol is to designate that the trademark is registered, while the unregistered trademark is regularly appended to the ™ representation.
- Note that the ® representation cannot be used for an unregistered trademark, otherwise it is believed an illegal offense.
Criteria for a proper trademark
There are certain standards in selecting a trademark that all corporate in Hong Kong must be well professed:
- A trademark is not the similar things as a business name;
- A trademark must not confusingly identical or similar to another person’s registered trademark, company or business name, or domain name;
- A trademark is more likely to be excluded for registration if it is a person’s family term, an expressive sign of products and services, or comprises a common term without typical signs.
- It has to be of the nature of being represented graphically.
- It has to serve the purpose of unique products of a producer from a further.
- Shape, colour amalgamation and covering may be protected as trademarks.
- The procedure or projected tradition should be in relative to any scrupulous goods or services.
- It should be proficient of prognostic connection of a person or group of persons with produce of the goods/stipulation of services.
- Protection may be approved to a trademark in the course of incessant usage or by registration underneath the Trade Marks Act, 1999.
- Trademarks protected throughout usage are linked to the goodwill of the endeavour which is acquired all the way through incessant usage. On the other hand, protection can be approved under the Act of 1999 for planned usage as well.
- Any trademark have to be easy to keep in mind whether it is a word, or any other characteristic like colour combination, labels, etc. It must not be moreover lengthy and intricate to be forgotten simply. It can only be evocative of the quality of the products, but not expressive; as it is against the law to include words like pure, excellent, best, perfect, etc. A good trademark must not be debarred under the Trade Marks Act under the forbidden classes of trademarks.
- It is mainly a person’s full name or surname, or with the intention of another individual. For Example Kumar Sweets.
- It is an express that plainly “describes” a attribute or mannerism of the goods or services like “Fragrance” for a perfume. Normally such marks are not authorized registration but for they can show substantial goodwill generated over the years all the way through its practice.
- The mark, even though not obviously evocative, is contemplation to be clearly ambiguous. These are words that usually hint at the excellence of the goods like “Smooth and Silky” for Creams.
- It is a word that evidently designates the position of origin of the goods or services, or that misleads the community into thoughts that the goods draw near from a certain place if they do not. A lot of the geographical names are not allowed like Darjeeling for tea but for it comes from that area.
- It is a word in frequent daily use or express specific to an industry.
Necessary of trademark registration
Trademark registration is certainly essential, as it is well committed to the applicant’s rights of being protected. A registered trademark is of dynamic worth in showing that the applicant is the owner of the registered mark, and the applicant is entitled to exclusive rights of expending the trademark for goods or services. Furthermore, if there might be a chance of any infringement of the registered trademark in the lack of the applicant’s approval – i.e., practise the trademark or practise a name that is similar or the same as the applicant’s trademark in the similar or same goods or services, then the applicant can track legal action in contradiction of this trademark infringement.
Registration of a trademark in Hong Kong
Before submitting application
It must be noted that the application for registration of the trademark in this country would be done by means of online or physically with the Registrar of Trade Marks.
Normally, an application to register a trademark in Hong Kong will include:
- An application form for the trademark registration;
- Subjective details of the applicant, for example the name and address;
- Specifications details of the goods or services regarding that it is required to register the trademark;
- A perfect appearance of the trademark;
- Supplementary documents would be demanded by the rules.
The applicant is instructed to conduct a cautious search of the proposed trademark to verify whether the trademark is previously registered at the Registrar or in prior application by others. Make sure the trademark that has been elected to apply sees detailed requirements as fulfilled with the Trade Marks Regulation. Furthermore, the applicant should sign to file the application in one of the authorised languages.
From application to registration procedure
Hong Kong trademark registration is not so complex and the following points as we abridged below:
The applicant needs to file a form T2 through online or physical filing. After filing the application with the Registrar, then the examiner will examine its compliance with the Regulation. Once the application procedures meet all requirements and there are no oppositions to the trademark, it will be issued in the Intellectual Property Journal of Hong Kong. It usually will consume at least 6 months from the date the application is received. The subsequent step is to grasp whether anybody wants to oppose the proposed trademark or not.
If there is no opposition, or the opposite result is concluded in favour of the proposed trademark, then the Registrar of Trade Marks will issue a certificate of registration for the trademark.
Case 1: In case of objection to the trademark:
In case of the mark is objected (for example the trademark is to be confused with another trademark), the applicant then is granted a course of 6 months to fulfil all the requirements for the proposed trademark registration. It is also probable to seek for an extension of 3 months under specific situations. Furthermore, to an effort to challenge the objection by satisfying all conditions, the applicant will also take into account selections like pursue an alternate trademark, or request for attending the hearing.
Case 2: In case of opposition to the trademark
The opposition may be involved by means of a third party. It means that someone has reviewed the applicant’s trademark in the Intellectual Property Journal and found somewhat confusingly with the opposer’s trademark. Subsequently, the opposing party send an opposition notice to the Registrar.
In this case, there are two possibilities – the applicant withdraw the application (OR) file a counterstatement as the applicant’s reply. Also, both parties need to prepare proof to succeed in the hearing office.
It is clearly indicate that registration of trademark is important for any kind of business. Trademarks are registered through the Hong Kong Intellectual Property Department (IPD). Note that although the People’s Republic of China has authority over Hong Kong, both terrains still preserve discrete registration procedures and consequently a trademark registered in China does NOT have validity in Hong Kong, nor will it grant trademark protection in Macau. In spite of the fact that trademark registration in Hong Kong is not compulsory, it is extremely suggested for a corporation to have its registered trademark. The complete procedure from its submission to registration is not too complex; however, it objectively takes time. It is instructed that the application for Hong Kong trademark registration should be arranged as a sine qua non of the business strategy.
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