What is a trademark?
Trademarks are signs used to distinguish in the marketplace the goods or services of one enterprise from those of other enterprises. They allow customers to identify a business as the source of a product or service.
Why you need to register a Trademark?
Registering your trademark means that you have the exclusive right to use the trademark in relation to the goods and services for which the mark is registered. If other traders use it without your consent, they may be liable for infringement of your trademark and you may take legal action. If you do not register your trademark, you may still use. Then it is harder to prove that you are the “owner” of the mark and as such your protection is limited.
Who can own a Trademark?
The trademark owner can be an individual, business organization, or any legal entity.
What is the Application Process?
In Hong Kong, Intellectual Property Department (IPD) handles a trademark registration. There are 6 steps:
Step 1: Application
Submit your application form to IPD, then IPD will issue an application number.
Step 2: Deficiencies Checking
IPD officer will carry out a thorough check of the application form and any attachments. The aims is to see if all the necessary parts of the form have been filled in, if they are correct and if any required information is missing.
If you need to provide extra information to remedy the deficiencies, then you have to submit within 2 months after the date of Registry’s Notice. For the minor amendment, such as updating the class number. It will not affect the filing date. However, if you have not provided the image of your trademark, then it will affect the filing date.
Once you have submitted your application, IPD will not accept any change to the image of your trademark.
Step 3: Search and Examination
When all documents are completed, IPD will conduct a search for the trademark records to see if the same or similar marks has already been registered or been applied for by another trader in respect of the same or similar class of goods and services. Also IPD will see if the mark satisfies the registration requirements laid down in the Trade Marks Ordinance.
If the examiner found the application failed to the criteria, then the examiner will issue an opinion in writing which will either lay out the grounds for objection to the mark or confirm the mark is acceptable for registration.
If your application is acceptable, then you can go to step 5: Publication for Opposition at Hong Kong Intellectual Property Journal (3 Months)
Step 4: Objection & Hearing
If your application cannot meet the requirements, then you can revise and submit your application in 6 months or apply for further 3 months extension.
If you call for a hearing, a hearing officer will consider all the evidence for and against the mark. Then the officer will issue a decision.
Step 5: Publication for Opposition at Hong Kong Intellectual Property Journal (3 Months)
Once your application met all the requirement, then it will be published in the Hong Kong Intellectual Property Journal for 3 months. If no-one objects to your registration, then you can register your mark.
However, if any third-party object to your application. Then you may withdraw your application or respond to the opposition by filing a counter-statement. If you withdraw your application or lose in the opposition proceedings. Also, you may have to pay the other party’s costs. Furthermore, both parties have a chance to file evidence in support of the application and opposition within a time limit. When all the evidence are ready, a hearing will take place before a hearing officer who then makes a decision. The successful party in opposition proceedings is usually entitled to an award of costs.
Step 6: Registration
Once your trademark has been accepted for registration, the Registrar of Trademarks will enter the details of your mark into the trademarks register. Also, a certificate of registration will be issued. Your trademark will date back to the filing date of your application. That means as the owner of a registered trademark, your rights take effect from the filing date of the application.
For further information, please contact us.
You may want to read: Hong Kong Trademark Registration System and Application