HONGKONG TRADEMARK REGISTRATION PROCEDURE
You will receive a Notification of Trademark Registration Application Acceptance issued by the Trade Marks Registry of HongKong Intellectual Property Department.
You will receive a Notification of Preliminary Approval or Rejection issued by the Trade Marks Registry of HongKong Intellectual Property Department.
In case of no trademark rejection, your trademark registration will be published at the Hong Kong Intellectual Property Journal for purposes of opposition. You will receive a notification of disapproval if third parties oppose your registration.
In case of no trademark disapproval, you will receive a Trademark Registration Certificate issued by the Trade Marks Registry of HongKong Intellectual Property Department. The mark is now GRANTED PROTECTION.
HOW TO REGISTER A TRADEMARK IN HONGKONG
Conducting a Comprehensive Trademark Search
Not all trademarks can be registered. Our trademark experts will check attorney-only trademark databases to find out if there are any potential conflicts. We use a manual trademark search to find almost 100% of all similar marks and potential conflicts for preventing you from wasting time and money. Trademark Study (1 working day), You will receive a Detailed registrability report.
Confirm the Mark You Want to Register
Sometimes you may want to file both Chinese and English version of the word mark in HongKong to further protect your branding. We would help you if you need the mark of Chinese version.
Select the Goods/Services
HongKong uses the International Classification of Goods and Services under the Nice Agreement. This is an international recognised series of 45 classifications which may be applied to goods and services.
It is necessary to file a separate application for trademarks in each of the classifications you are choosing. One trademark in one classification will not cover other classifications, and therefore your trademarks may be open for use there by others. Typically 10 items per class may be registered by default, with additional costs for each item in addition.
Confirm the Applicant’s Name and Address in English or Chinese
The name and address of the applicant must be strictly identical to those of the company incorporation certificate or the passport of individual applicant.
1. Scanned copy of the Power of Attorney (POA) signed by the applicant;
2. Scanned copy of the company’s certificate of incorporation; copy of passport for individual applicant;
3. Proposed mark.
Our trademark experts will assist you in creating, organizing, and translating these documents wherever necessary. When all the documents are prepared, your mark will be filed within 1 working days. Then we will send you HongKong Trademark number.
TRADEMARK EXTENSIVE STUDY
Not all trademarks can be registered. Our trademark experts will check attorney-only trademark databases to find out if there are any potential conflicts. We use a manual trademark search to find almost 100% of all similar marks and potential conflicts for preventing you from wasting time and money.
Register your Trademark in HongKong
(one class include Govt Fee)
USD290 for each additional class. *No other fees for registration if no rejection or opposition.
How do I classify my goods and services in HongKong?
Under the HongKong Trade Marks Ordinance (Cap.559), goods and services shall be classified for the purposes of the registration of trade marks according to the Nice Classification. There are 45 classes of goods and services in the current edition of the Nice Classification. For details, please refer to WIPO’s web site on the Nice Classification at http://www.wipo.int/classifications/en/.
If I file an application for registration in Chinese, can the certificate of registration be in English?
In HongKong, if you file an application in Chinese, the certificate of registration will be in Chinese. Similarly if you file the application in English, the certificate of registration will be in English.
How long will the whole trade mark application process take in HongKong?
Upon receipt of the application, the examiner will process the application according to the HongKong Trade Marks Ordinance and Trade Marks Rules. If there is no deficiencies and no opposition, the whole process (from receipt of application to the application being approved) will take as short as six months.
If my HongKong trade mark consists of a Japanese character but I have not completed Part 05 of Form T2, is this a deficiency? If it is, will it affect the filing date of my application?
You need to fill in Part 05 (see rule 120). If you fail to do so when you file your application, the registry will ask you to provide the information later, but this will not affect the filing date of your application.
Can I provide the applicant’s name in both Chinese and English in Form T2?
If the name of the applicant in both Chinese and English is recorded in the company register or business register or the equivalent (“official register”) in the place of incorporation of the applicant, the applicant is free to provide such name in both Chinese and English in Form T2 provided that such name accords with the record of the official register.
Will the registry ask for a transliteration of a Japanese or Korean company’s name if the company has provided its English name?
As a Japanese or Korean company registers its name in Japanese or Korean characters in the Register of Companies in Japan or Korea respectively, a Japanese or Korean corporate applicant may wish to provide a transliteration of its name in Form T2 when filing an application for registration of a trade mark. If a Japanese or Korean corporate applicant has only provided its English name in Form T2, we will not ask the applicant to provide such a transliteration.
What happens to my application for registration after I file it in HongKong?
There are four stages in the process of examining an application for registration:
examination against the requirements of the Trade Marks Ordinance
acceptance and publication for opposition
registration and issue of certificate of registration.
If my application for registration is accepted, is my mark automatically registered?
If your application meets the requirements for registration, the registry will accept it and publish it for the purposes of opposition. Assuming no one opposes your application, the registry will register your mark and send you a certificate of registration.
What happens if my application for registration is opposed?
If someone opposes your application, you will need to consider whether to withdraw your application or to continue in the opposition proceedings. Advice from a solicitor or trade mark agent will enable you to assess your position and the costs involved in withdrawing or continuing.
If you withdraw your application after the notice of opposition is filed, you may have to pay the other party’s costs. However, if you can show that proceedings were launched against you without giving you prior notice or warning, costs may not be awarded against you.
If you defend your application against the opposition and eventually lose in the opposition proceedings, you may be ordered to bear the other party’s costs.
What steps can I take if my application for registration does not meet the requirements for registration in HongKong?
If the registry send you an opinion under rule 13(1) of the Trade Marks Rules raising objections to your mark, the registry will explain in the opinion what steps you should consider taking to meet the requirements for registration. Depending on the objection, the options could include:
filing an amendment to your application to cut out goods and services affected by the objection
filing evidence that your mark has in fact acquired a distinctive character as a result of your use of it for the goods and services (see Evidence of distinctiveness, above)
filing an amendment to the representation of your mark, to add an earlier mark for identical or similar goods or services, assuming that you have an earlier mark that you wish to add to the representation
filing a consent from the owner of an earlier registered mark or application that prevents your mark from being registered
filing written representations to establish that your application meets the requirements for registration.
You have six months to reply to the opinion. If you do not respond to the letter within the specified six-month period, the registry will send you a notice informing you that your application has been refused.
What strategies should I adopt to protect my trade mark in the Hong Kong SAR and separately, in the Mainland of China?
Some strategies that you should consider:
Adopting a mark that is clearly different from and that will not infringe other owners’ marks. Infringement of a well-known trade mark extends to use of the mark or a similar mark for dissimilar goods, so you may be liable for infringement even if your product is very different.
Registering your trade mark here in the Hong Kong SAR and in the Mainland of China where there is a separate system of registration and protection. Registering your mark in the Mainland of China does not automatically give you protection in the Hong Kong SAR.
Registering a mark in Chinese characters (or a translation or transliteration) for use locally to complement your mark and to give it broader appeal and protection.
Registering your mark as soon as possible to ensure it is available for your business use and you can take immediate action against infringement.
Putting in place a structured licensing system, if you intend to license the use of your mark.
Continuously monitoring the on-line Hong Kong Intellectual Property Journal for applications to register marks likely to cause confusion with your mark and taking action to oppose them.
Taking action under the Trade Marks Ordinance, if infringing activity is taking place in the Hong Kong SAR.
Taking action for passing off against damage to your business goodwill and reputation in the Hong Kong SAR for your goods or services.
Reporting the infringement immediately to Customs and Excise Department, Intellectual Property Investigation Bureau, if infringing activity is taking place in the Hong Kong SAR. You will need to provide Customs and Excise Department with evidence that you own the trade mark or copyright and proof of the alleged infringement: https://www.customs.gov.hk/en/service-enforcement-information/intellectual-property-rights-protection/index.html.
Taking administrative or legal action under the law in the Mainland of China if the infringing activity is in the Mainland of China. If a Hong Kong company uses your trade mark in its name, as a front for infringing activities in the Mainland of China, you can take steps under Mainland law against the company’s infringing activities.
Most importantly, taking specialist IP advice from an IP lawyer or agent on all aspects of your IP rights, including copyright, trade mark or registered design, which may protect your products in other ways.
Taking specialist advice on other business safeguards, including registering your trade mark, trade name and company name as domain names to protect them on the Internet. Hong Kong Domain Name Registration Company Limited (https://www.hkirc.hk) is a non-profit company that administers the registration of Internet domain names under “.hk” country-code top-level domain.
When should I renew my trade mark in HongKong?
You should renew your trade mark on or before its expiry date. You can check the expiry date of your trade mark by using our online Trade Mark Search System.
A mark registered under the Trade Marks Ordinance (Cap. 559) shall be registered for a period of 10 years beginning on its date of registration. For example, if the date of registration for your mark is 10 September 2003, it shall be registered for an initial period of 10 years until 9 September 2013. You should renew your mark during the six-month period ending on the date of expiry, i.e. latest by 9 September 2013.
The registration of the mark may be renewed for further periods of 10 years. In the above example, if you renew your mark for a further period, the next expiry date will be 9 September 2023 (assuming all the above dates are business days).
FEES FOR TRADEMARKS IN HONGKONG
(per mark per class)
(For each additional class)
(For each additional class)
(For each additional class)
(For each additional class)
|Counter Statement||USD$660 onwards|
DRAKE CHEN ®
Wuhan Chuchuangyuan Trademark Agency Co., Ltd
Phone: +86 18672762230
Huaqingyuan, Zhongshan Road 975, Jiangan Dist
Wuhan City, Hubei province, China
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