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Procedure of filing trademark in Hong Kong

March 02, 2021
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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

Duration of a trademark

Registered and unregistered trademark

 

Country 

First category registration fee

(HK$)

Additional category fee registration

(HK$)

Registration takes time

(Month)

Hong Kong

3,000

2,000

6-8

Criteria for a proper trademark

There are certain standards in selecting a trademark that all corporate in Hong Kong must be well professed:

Good trademarks

Bad trademarks

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:

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.

Conclusion

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.

References

  1. https://igerent.com/trademark-registration-hong-kong 
  2. https://www.ipd.gov.hk/eng/forms_fees/trademarks_559.htm 
  3. https://www.ipd.gov.hk/eng/trademarks.htm 

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