How to register a trade mark in Hong Kong

How to Register a Trade Mark in Hong Kong

Registering a trade mark in Hong Kong means filing an application with the Intellectual Property Department. The department will examine your application, publish it for opposition, and, if successful, issue a certificate of registration. These rights apply in Hong Kong only, not in mainland China or any other jurisdiction.

Conduct a Preliminary Search

Search the Intellectual Property Department's trade mark database before you file. This checks whether a similar mark is already registered or pending for the same goods or services. A search reduces the risk of rejection during examination or opposition after publication. The search is free and can be done online through the IPD's e-Search system.

Choose Your Classes Under the Nice Classification

Hong Kong uses the Nice Classification system, which divides goods and services into 45 classes. You must specify the classes that cover your products or services. A single application can cover multiple classes, but each additional class attracts a separate government filing fee. The specification, which describes the goods or services within each class, must be precise. Vague or overly broad specifications may be objected to by the examiner.

File the Application

The process begins when you submit the application form, a representation of the mark, and the prescribed fee to the Intellectual Property Department. File online through the IPD's e-filing system or by post. The application must include the applicant's name and address, a clear representation of the mark, and a list of the goods or services grouped by class. If the mark contains non-English characters, a transliteration or translation may be required.

Examination by the Intellectual Property Department

An IPD trade mark examiner reviews the application for compliance with the Trade Marks Ordinance (Cap. 559). The examination checks for absolute grounds for refusal, such as whether the mark is descriptive, non-distinctive, or contrary to public policy, and for relative grounds, such as conflicts with earlier marks. If the examiner raises objections, you may respond with written arguments or amend the specification. If the objections are not overcome, the application is refused.

Publication and Opposition

If the application passes examination, it is published in the Hong Kong Intellectual Property Journal. Any person may oppose the registration within three months of the publication date. An opposition must be filed on a prescribed form with a statement of grounds. If opposition is received, the Registrar will set a timetable for the parties to file evidence and written submissions. A hearing may be held. If the opposition succeeds, the application is refused; if it fails, the mark proceeds to registration.

Registration and Certificate

If the application is unopposed or the opposition is unsuccessful, the Intellectual Property Department issues a certificate of registration. The trade mark is registered for ten years from the filing date and may be renewed for successive ten-year periods. Registration gives you the exclusive right to use the mark in Hong Kong for the goods and services in the registered classes, and to take legal action against infringement.

What to Do If Opposition Is Received

If you receive an opposition, review the grounds and decide whether to contest it. You may negotiate with the opponent, file a counter-statement, or seek legal advice. The opposition process can extend the timeline significantly and may involve additional costs. If you do not respond within the prescribed period, the application is treated as abandoned.

Summary of the Trade Mark Registration Steps Hong Kong

The trade mark registration steps in Hong Kong follow a clear sequence: search, classify, file, undergo examination, survive the opposition period, and receive the certificate. Each stage has its own deadlines and requirements. The entire process typically takes several months to over a year, depending on whether objections or opposition arise.