August is time for travel as it is the judicial holiday for the Macau court. It reminds me a case background; a client told us he had recognized a sign when he travelled and the sign was similar as the trademark he registered.
As we all knew that the protection for trademarks is regional, that means if you want to get the protection, you should register your trademark in each place. As for the case mentioned above, the client successfully registered the trademarks in Macau Special Administrative Region (herein after named as ‘Macau SAR’). The trademark protection is governed by the Industrial Property Code of Macau (herein after named as ‘the Code’). According to the provision of the Code, any individuals or company or associations or registered practicing lawyer (of course with the power of attorney grant by the client) in Macau can help in the procedure of registration of trademarks.
The Code provides a robust scheme for trademark protection and imitation of trademarks is considered as an infringement of this law. A trademark, according to the Code, can be any sign capable of graphic representation, particularly words, including personal names or designs, letters, numerals, images, shapes of products or packaging, provided that such signs are capable of distinguishing the goods or services of one enterprise from those of other enterprises.
Registration of trademarks in Macau SAR is done through the Economic Bureau (herein after named as ‘DSE’), and this process provides the trademark owner with exclusive rights to use the mark. Registered trademarks are given legal protection against infringement, which includes imitation. The term of protection for registered trademarks in Macau SAR is seven years from the date of application, renewable indefinitely for periods of seven years. However, if you only registered the trademarks without using it, there will be a risk of unsuccessful renewal for the trademarks in the event that the third person make reclamation to the DSE.
Besides that, as we mentioned in the above, imitation of trademarks is considered as an infringement of this law. So, we shall define what means imitation? According to the provision of paragraph b) of article 215 of the Code, if the registered trademark and the other sign (which is going to register as a trademark) are used to label the same or similar products or services and paragraph c) of the same article stated that a sign, name, graphic or phonetic resemblance to a registered trademark that is likely to cause misunderstanding or confusion among consumers, or has the risk of being associated with a previously registered trademark, such that the consumer can distinguish it only after careful scrutiny or comparison. That is the requirements stated in the law to identity imitation and the DSE can base on the mentioned above reason to reject the registration of a similar or identical sign or pattern and so on as trademark. Imitation of a registered trademark, without the owner’s consent, is prohibited. This includes any act that can confuse or mislead the public, such as the use of a sign identical or similar to the registered trademark for goods or services which are identical or similar to the goods or services for which the trademark is registered. That is in order to identity the pattern or sign in which is causing imitation, we need to be aware of the which kind of the service or products are using that sign, for example, if we registered a trademark for the service of travel, however, a third person would like to register a similar pattern for trademark but for the service of beverage, we cannot say that the latter one is imitation as the sign is used in different category. In addition, we need to take into consideration whether the pattern will mislead the customers in a way that the customers thought that the products or services are from the same enterprise. Thus, there are few criteria to identify imitation of trademarks, we cannot not only focus on the sign, words, pattern are similar and that’s equal to imitation, that is not an accurate and legally protectable objective situation.
In cases where there is a trademark dispute, such as alleged imitation, the matter can be brought to the courts. The court can order the cessation of the infringing acts, and in serious cases, the offender can be subject to imprisonment or a fine.
In conclusion, the legal framework in Macau provides comprehensive protection against the imitation of trademarks. However, as with any legal system, it requires active enforcement and public cooperation to be effective. Businesses operating in Macau should therefore take steps to register their trademarks, monitor the market for any potential infringements, and be prepared to take legal action if necessary.
By OCT Lawfirm Founding Partner/ Lawyer Cecilia Wong H.S.
