A trademark is a sign that distinguishes the goods or services of one entity from those of others. It can take various forms, such as a word, logo, sound, shape of goods, or packaging, or any combination of these elements. Trademarks can be registered with the Hong Kong Intellectual Property (IP) Office to protect their unique identity.
In the Hong Kong Special Administrative Region (Hong Kong SAR), trademark protection is governed by the Trademarks Ordinance (Cap. 559) and Trade Marks Rules (Cap. 559A).
Trademark Symbols in Hong Kong
Trademarks in Hong Kong are typically indicated by the following symbols:
- ® – Registered trademark
- ™ – Unregistered trademark
Trademarks can include a variety of elements, such as names, words, phrases, logos, symbols, designs, and images. Non-conventional trademarks, including marks based on color, smell, or sound, are also recognized.
Trademark Protection and Rights
A trademark protects its owner by granting exclusive rights to use the mark to identify goods or services, or to license it to others for a fee. It also helps prevent unfair competition, including the use of similar or counterfeit marks to sell inferior products or services.
The owner of a registered trademark can take legal action against infringement and may license, sell, or use the mark to raise equity for business ventures.
Relevant Office
The relevant authority for trademark registration in Hong Kong is the Intellectual Property Department (IPD) of the Government of the Hong Kong Special Administrative Region (HKSAR).
Filing Information
| Relevant office | Intellectual Property Department, The Government of the Hong Kong Special Administrative Region of the People’s Republic of China |
| Filing principle | First to use |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address for service in Hong Kong of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, deficiencies checking, search & examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark Searches in Hong Kong
Under the “First to Use” principle, priority is given to the first entity to use a trademark in commerce. If another applicant has already been using a similar trademark for the same or related goods/services, the later application may be refused. Thus, conducting a trademark search before filing is highly recommended to ensure the proposed trademark is available for use and registration.
Trademark searches can be conducted through the official website of the Hong Kong IPD. The online database allows users to search for identical or similar marks to avoid conflicts. It is also advisable to conduct a company search and domain name search to further assess the availability of the trademark.
Filing Trademark Applications in Hong Kong
Trademark applications can be filed in Hong Kong on a single-class or multi-class basis. There are two types of trademark applications:
- Ordinary Application: No priority claim.
- Convention Application: Claims priority from a convention country (e.g., Paris Convention).
Ordinary Applications
Ordinary applications are filed without claiming priority from any other jurisdiction. Multi-class applications are permitted in Hong Kong, allowing the applicant to register a trademark under multiple classes.
Priority Applications (Convention Applications)
Applicants can file a priority application in Hong Kong within 6 months of filing in a Convention country (such as a member of the Paris Convention). This gives the applicant the same filing date as the original application, preserving their rights in Hong Kong.
Paris Convention
The Paris Convention for the Protection of Industrial Property, signed in 1883, enables applicants from member countries to claim national treatment, meaning they will receive equal treatment when filing in any member country. Priority applications must be filed in Hong Kong within 6 months from the original filing date in a Convention country.
Trademark Classes for Goods and Services
Hong Kong follows the Nice Classification system, which divides goods and services into 45 categories. Classes 1 to 34 are for goods, and Classes 35 to 45 are for services. Each class contains a detailed list of terms that specify the types of goods or services it covers.
Trademark Examination in Hong Kong
Once a trademark application is submitted, the IPD conducts a preliminary review to check for deficiencies. If any required information is missing, the applicant will be notified and given 2 months to address the deficiencies. However, significant changes, such as modifying the trademark representation, will not be accepted at this stage.
After addressing any deficiencies, the application undergoes a formal examination, which includes:
- Procedural examination
- Examination for absolute grounds for refusal (e.g., the trademark is too generic or descriptive)
- Publication for opposition
- Examination of oppositions and appeals
If there are no objections, the trademark will proceed to publication in the Hong Kong IP Journal.
Trademark Opposition in Hong Kong
Once the trademark is published in the Hong Kong IP Journal, any interested third party may file an opposition within 3 months. This period can be extended by 2 months if requested. If no opposition is filed within the stipulated period, the trademark will be registered.
Grounds for Opposition: The opposition notice should include the following:
- A representation of the earlier trademark
- A statement of the goods or services covered by the earlier trademark
- The registration or application number of the earlier trademark, if available
If an opposition is filed, the applicant must file a counterstatement within 3 months, with a 2-month extension available. Failure to respond results in the withdrawal of the application.
After the evidence stage, the Registrar will schedule a hearing, where both parties may present their case. The hearing is public, and the Registrar will notify the parties of the decision.
Trademark Registration in Hong Kong
After successfully passing the examination and opposition procedures, the trademark will be registered for a period of 10 years, starting from the filing date. A registration certificate will be issued.
Trademark Renewal in Hong Kong
Trademark registrations can be renewed by filing a renewal request within 6 months before or up to 1 month after the expiration date. A late renewal is allowed within 6 months after expiry, subject to a late renewal fee. If the trademark is not renewed within 6 months after the expiry, it will be removed from the register.