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What is Trademark
Trademark is a sign that distinguishes the goods and services of one trader from those of others. Typically a trademark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of the above. A sign must be capable of being recognized literally or graphically in order for it to be registered as a trademark.
Purpose of Trademark Registration
Registration of trademark is not compulsory in Hong Kong. Whether a trademark has been registered or not, it is already been protected under the common law. The trademark owner must prove its loss and the justification of the value of the trademark. However, if the trademark is properly registered under the Trademarks Ordinance, the trademark owner has the right to prohibit the others to usage its trademark on any products or service before obtaining his approval. This can prevent other people using its trademark on their products or services. The right of a trademark owner is more easily enforced if the trademark is properly registered.
Once the Intellectual Property Department (“IPD”) receives a trademark application, an examination officer will be assigned for processing the application. If there is sufficient information provided in the application and no objections to the trademark registration, then the whole application process can take as little as 6 months from receipt of application to approval of the registration. Upon receipt of the trademark application, “IPD” will issue a receipt and notify the application number. Before examining the application, “IPD” will carry out a throughout check of the application form(s) and the attachments for completeness and accuracy.
If there is missing information, “IPD” will ask for supplementary. Some minor amendments will not affect the filing date of the application, e.g. the class number of the applied trademark. However, major changes to the application will not be accepted, for example, changes to the graphical representation of the trademark. After completing the submission of all information of application, the process will go to next stage, i.e. search and examination.
After checking the completeness of information and confirming no missing information, “IPD” will conduct a search of the trademarks records to see if the same or similar trademark has already been registered or been applied for by another registrant in respect of the same or similar class of goods and services.
“IPD” will also see if the trademark satisfies with the registration requirements set out under the Trademarks Ordinance. The examination officer will then issue a written opinion either on the grounds for objection to the trademark or confirming acceptance for registration. If the application does not meet the requirements for registration, “IPD” will object to the trademark registration and applicant should meet the requirements within 6 months. A further 3 months extension may be granted.
Your trademark will be published in the Hong Kong Intellectual Property Journal unless an opposition to it has been lodged. An opposition notice should be filed within 3 months from the registration date. As the applicant, you may withdraw your application or respond to the opposition by filing a counter-statement within certain time limits. When all the evidence has been received by the “IPD”, a hearing will take place before a hearing officer who then makes a decision. If you withdraw your application or lose in the proceedings, you may have to bear the legal fees of the other party.
Once your trademark has been accepted for registration, the “IPD” will enter the details of the trademark into the trademarks register and will issue a certificate of registration to the owner. Notice of the registration will be published in the Hong Kong Intellectual Property Journal and the registration of your trademark will date back to the filing date of your application. That means the rights of the owner of a registered trademark take effects from the filing date of the application.
Validity of a Registration
The validity of a registered trademark is 10 years. Subsequent renewal is allowed and unlimited.