Renowned as a leading center for global finance, Hong Kong has significant protections in place for intellectual property (IP). Trademark registration in Hong Kong is overseen by the Intellectual Property Department (IPD) through its dedicated Trademarks Registry. In this article, we discuss the trademark registration process in Hong Kong, shedding light on its unique advantages and differences from the registration regulations observed in the Chinese Mainland.
As a distinctive special administrative region (SAR) of China, Hong Kong operates under the “one country, two systems” principle, which grants it a distinct legal framework separate from the Chinese Mainland. Taiwan Trademark Application
In accordance with the Basic Law, Hong Kong is empowered to independently establish suitable policies and enforce legal safeguards to protect intellectual property (IP) rights.
According to the Hong Kong Intellectual Property Department (IPD), a trademark is a sign that makes the distinction between goods or services from a specific trader to another one.
A trademark can include any or a combination of the following items: words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of the goods or their packaging.
It is important to consider that a trademark should possess distinctiveness and ideally be relevant to the business field. Below are key characteristics to bear in mind when developing a trademark in Hong Kong:
Registering trademarks in Hong Kong offers numerous benefits for foreign enterprises conducting business in the region. Here are some key advantages:
Overall, registering trademarks in Hong Kong offers foreign enterprises a solid legal foundation, regional market access, and enhanced brand protection, supporting business growth and success in the dynamic Asian landscape.
To initiate the trademark registration process in Hong Kong, the application must be submitted to the Trade Marks Registry. A crucial requirement for eligibility is the presentation of substantial evidence of the trademark’s current or imminent use. Failure to demonstrate continuous use for a minimum of three years may result in the revocation of the trademark.
The application procedure begins with the submission of Form T2 to the Trade Marks Registry via courier. The application fee amounts to HK$2,000 for registering a trademark in one class of goods or services, with an additional HK$1,000 for each additional class. It is important to note that once the application has been submitted, no further modifications to the trademark will be accepted.
Subsequently, the Trade Marks Registry carefully evaluates the application’s compliance with the Trade Marks Ordinance and the Trade Marks Rules, which serve as vital legislative documents governing trademark acceptance and registration in Hong Kong.
In the event that the application is rejected, there are avenues for objection or amendment to challenge the decision. This may involve appealing the objection through a court hearing or opting for a new registration under a different trademark.
Conversely, upon acceptance of the trademark for registration, it will be published in the Hong Kong Intellectual Property Journal (HKIPJ). It is important to note that during the three-month period following publication, any party can file an opposition notice. The applicant is then allowed to respond by filing a counterstatement. Upon the receipt of all evidence, a hearing will be scheduled to determine the outcome of the trademark registration.
The Hong Kong trademark is limited to its jurisdiction and does not automatically confer validity in the territory of the Chinese Mainland. To obtain trademark protection in the Chinese Mainland, a separate and more intricate registration process must be pursued through the China National Intellectual Property Administration (CNIPA).
This process involves distinct requirements and procedures that are unique to the Chinese Mainland.
In the Chinese Mainland, the principle of first-to-file establishes that the right to the trademark belongs to the business whose trademark application has the earliest date of filing. The date of filing is important, not the date when the trademark was first used in commerce. The owner of a registered trademark gains exclusive rights starting from the day the registration is granted.
On the contrary, Hong Kong adheres to the principle of first-to-use, which establishes that trademark rights accrue to the first business to use the mark in association with the sale of goods or services on the market. Unregistered trademarks can seek protection in Hong Kong through the common law of passing off. To establish passing off, the trade mark owner must prove substantial goodwill, misrepresentation, and damage. A trademark registration in Hong Kong takes effect from the date of filing once it is approved.
Selection of the appropriate trademark class is an important aspect to consider for trademark registration. When submitting an application, the applicant is required to indicate the specific class of goods and services associated with the trademark.
In the Chinese Mainland, the trademark classification system is based on the international NICE classification system. Additionally, China has developed a sub-classification system within each of the 45 classes. According to the Classification of Similar Goods and Services issued by the CNIPA, goods falling within the same subclasses are considered similar, while those falling within different subclasses are not.
In Hong Kong, the sub-classification system is not employed, although the Nice Classification is adopted. During examination, the nature, composition, trade channels, and users of the goods or services are taken into account by the examiner to determine whether they are identical or similar. Below is a general overview of the classification applied to trademark registration in Hong Kong:
The list presented above is not exhaustive. More details about the classification are available here.
CNIPA exercises discretionary power to examine opposition cases, even in situations where the applicant has not responded to the opponent’s claims. If the applicant does not respond to the opposition, it does not affect the Trademark Office’s decision on the opposition. It means, the opponent may fail in an opposition case without any action from the applicant. Moreover, the opposition period has been recently amended in the 2023 draft revision of the China Trademark Law, reducing it from three months to a shorter duration of two months.
In contrast, in Hong Kong, if an applicant does not file a counter-statement within three months in response to a notice of opposition, their application will be automatically considered withdrawn.
The divergent approaches to trademark registration in the Chinese Mainland and Hong Kong underscore the criticality of comprehending and adhering to the distinct procedures and timelines within each jurisdiction.
By navigating the intricacies of trademark registration in Hong Kong, businesses can effectively protect their brand identities, successfully expand their operations, establish themselves as trusted entities, seize competitive advantages, and capitalize on the inherent worth of their intellectual property.
For assistance and queries on trademark and IP registration in Hong Kong, please feel free to contact our regional experts, Gigi Wong and Ines Liu, at Dezan Shira & Associates.
China Briefing is written and produced by Dezan Shira & Associates. The practice assists foreign investors into China and has done so since 1992 through offices in Beijing, Tianjin, Dalian, Qingdao, Shanghai, Hangzhou, Ningbo, Suzhou, Guangzhou, Dongguan, Zhongshan, Shenzhen, and Hong Kong. Please contact the firm for assistance in China at china@dezshira.com.
Dezan Shira & Associates has offices in Vietnam, Indonesia, Singapore, United States, Germany, Italy, India, Dubai (UAE), and Russia, in addition to our trade research facilities along the Belt & Road Initiative. We also have partner firms assisting foreign investors in The Philippines, Malaysia, Thailand, Bangladesh.
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