For businesses looking to penetrate the Chinese market or expand their presence in Asia, Hong Kong is an optimal location. By registering trademarks in Hong Kong, international businesses can gain a competitive advantage in the region and tap into a growing economy.
The following article will give you an overview of the process for Hong Kong trademark registration, as well as highlight some of its key features.
Hong Kong is geographically and strategically located at the heart of Eastern Asia, making it an excellent location for businesses looking to expand their presence in the region.
Its status as a former British colony means that it maintains a distinct legal system separate from mainland China, while still enjoying strong economic and cultural ties with the country.
For businesses looking to penetrate the Chinese market or expand their presence in Asia, Hong Kong is an optimal location. By registering trademarks in Hong Kong, international businesses can gain a competitive advantage in the region and tap into a growing economy.
The following article will give you an overview of the process for Hong Kong trademark registration, as well as highlight some of its key features.
Incorporated in 2011, Origin is a young but professional team led by Mr. Johnson Lam, a Hong Kong Solicitor specialized in IP laws. With the motto “Affordable Excellence”, we served various clients including Fortune 500 companies, MNCs and local listed companies and SMEs.
For a simple application, it is anticipated that the entire process will require approximately 6 to 9 months to complete.
Before submitting a trademark application, it is advisable to perform a trademark search in Hong Kong using the trademark search system of Hong Kong Intellectual Property Department (IPD) or by enlisting the services of a local trademark agent. Official trademark search is also available in Hong Kong.
Once the search results warrant further action, you can proceed to file a trademark application with the IPD.
The application should include the applicant's name and address, a clear representation of the trademark, a list of goods or services that the trademark will cover, and other relevant information.
Once your application is filed, the IPD will review it to see if all the required information has been provided and if they are correct.
At this stage, the IPD will examine whether the application should be refused for any relative grounds or absolute grounds.
Upon approval of your trademark application, it will be published in the Hong Kong Intellectual Property Journal for a period of three months.
During this time, any third party will be given the chance to oppose your registration by filing an objection.
In the event that no opposition is lodged throughout the publication period, your trademark will be registered, and you will be issued with a certificate of registration.
Hong Kong trademark is valid for a duration of ten years, starting from the date of application and not from the date of registration.
It is possible to renew the registration for additional 10-year periods indefinitely.
Hong Kong trademark applications can be filed in either traditional Chinese or English. The use of English, a major global language, as a filing language can make it easier for foreign applicants to understand and comply with the requirements of the process. This can help eliminate language barriers and streamline the application process, making it more accessible to applicants from foreign countries.
As defined by the Nice Classification System, there are 45 trademark classes of goods or services that can be registered for (See Trademark Classes? Basic but not Simple!). Similar to some other jurisdictions, Hong Kong offers the option of a multi-class trademark application, which allows an applicant to file a single application to protect a trademark across multiple classes of goods or services.
Filing a single application to protect a trademark across multiple classes of goods or services can be a convenient and cost-effective way for businesses to achieve broad protection. The overall fees for multi-class applications are typically lower too. However, multi-class applications can be more complex than single-class applications. If any of the classes included in the application are deemed ineligible for registration, the entire registration process for all classes may be delayed (subject to further actions to be taken), which can impact the overall efficiency of the process.
Series-mark is allowed for registration in Hong Kong, meaning that a single trademark application can include multiple versions of a trademark, such as uppercase versus lowercase or black and white versus color, with up to four versions of a mark in a series.
Registering a series of marks under a single application can be more cost-effective than filing separate applications for each variation of the mark. It can also save time and simplify the registration process, as businesses only need to file a single application. That said, there is a limitation on the number of variations that can be included in a series mark application, and prioritize the variations for filing requires careful planning.
Hong Kong operates under a common law system, which means that the “first-to-use” rule applies to trademarks in the territory. Under Hong Kong laws, trademark rights are acquired through use in commerce, rather than through registration. This means that the first party to use a trademark in commerce in Hong Kong has the right to use and protect the mark in that geographic area, regardless of whether the trademark has been registered with the IPD.
The first to use the trademark in commerce is generally considered the senior user and has priority over later users. It is therefore crucial for Hong Kong trademark users to keep accurate records of their use of trademarks and to preserve any documentation that can support a claim of prior use in order to protect the businesses’ trademark rights.
We hope you find this summary informative and can facilitate your self-application in Hong Kong. That said, DIY trademark could be tricky and if you need professional advice and guidance on trademark law, including the registration process, potential issues, and strategies to protect your Hong Kong trademark, Trasomark and a reliable trademark agent in Hong Kong are available to assist you.
When we talk about trademark registrations, the immediate association is often with the possible substantial costs involved in safeguarding one’s valuable trade mark rights.
Have you had the opportunity to visit Hong Kong? What are your impressions of this vibrant city located at the southern tip of China? As you are now attracted by the title and peruse this article, we can’t help but surmise that an initial investment plan for Hong Kong has already popped up in your mind.
Your Hong Kong trademark applications could not always be smooth. One major reason is that your trademark is considered as confusingly similar to an earlier mark in the Hong Kong trade mark register (the “Relative Grounds”).
