Hong Kong trade mark registration process and requirements

Hong Kong Trade Mark Registration Process and Requirements

A Hong Kong trade mark registration confers the exclusive right to use the mark for the goods or services covered. The Intellectual Property Department (IPD) administers the process. Registration follows a sequence of filing, examination, publication, opposition, and then registration.

The Hong Kong Trade Mark Registration Process Step by Step

Registration begins when you file an application with the Intellectual Property Department. The IPD then examines the application to ensure it meets formal and substantive requirements. If the application passes examination, it is published in the Hong Kong Intellectual Property Journal.

Publication opens a three-month opposition period. If no opposition is filed, or any opposition is unsuccessful, the mark is registered and a registration certificate is issued.

A Hong Kong trade mark registration gives rights only in Hong Kong. It does not protect the mark in mainland China, which is a separate jurisdiction with its own register. To secure protection in both territories, you must file separate applications in each.

Register Trade Mark Hong Kong: What to Prepare Before Filing

Before filing, prepare the following:

• The mark itself: a word, device, colour, sound, scent, or a combination of these. The mark must be capable of distinguishing your goods or services from those of other traders.
• A clear representation: for a word mark, provide the word in plain text. For a logo or device, provide a clear graphical representation.
• The applicant's details: the full name and address of the applicant. If the applicant is a company, use the registered name exactly as it appears on the certificate of incorporation. If the applicant is an individual, use the full legal name.
• A representative (if applicable): if you appoint a trade mark agent or solicitor, provide their details. The IPD does not require an applicant to use a representative.
• The specification of goods or services: a clear and precise list of the goods or services for which the mark will be used. A vague specification leads to objections or a narrower scope of protection than intended.

The application form is available from the IPD website. You can file online or on paper. The IPD recommends online filing for faster processing.

Hong Kong Trade Mark Application: Filing and Classification

A Hong Kong trade mark application must specify the class or classes of goods or services under the Nice Classification. This system divides goods and services into 45 classes. Classes 1 to 34 cover goods, and classes 35 to 45 cover services.

An application may cover more than one class, but a fee is payable for each class. The specification must list the goods or services in each class separately. A single application covering several classes costs less than filing separate applications for each class.

The IPD will check that the specification is acceptable. If the specification is too broad or unclear, the examiner may issue an objection. You may then amend the specification to meet the objection.

Hong Kong Trade Mark Fees

The IPD charges fees for filing, registration, and renewal. The exact amounts are published on the IPD website and are subject to change. The filing fee covers the first class, with an additional fee for each extra class. A registration fee is payable after the application is accepted. Renewal fees are payable every ten years.

The IPD also charges fees for other services, including filing a notice of opposition, requesting an extension of time, and requesting a certified copy of the registration certificate. Check the current fee schedule on the IPD website before filing.

Examination by the Intellectual Property Department

After filing, the IPD examines the application in two areas.

First, it checks formal requirements: the application must include the correct form, the applicant's details, a clear representation of the mark, and the specification. If anything is missing, the IPD will issue a notice and give you a period to correct the deficiency.

Second, it checks substantive requirements: the mark must be capable of distinguishing your goods or services. It must not be descriptive, generic, or deceptive, and it must not conflict with earlier trade marks or well-known marks.

If the examiner raises an objection, you may respond with arguments or evidence. If the objection is not overcome, the application may be refused. You may appeal a refusal to the Court of First Instance.

Publication and the Hong Kong Trade Mark Opposition Period

If the application passes examination, the IPD publishes it in the Hong Kong Intellectual Property Journal. Publication starts a three-month opposition period. During this time, any person may file a notice of opposition with the IPD.

The opposition process is governed by the Trade Marks Ordinance (Cap. 559) and the Trade Marks Rules (Cap. 559A). The opponent must state the grounds of opposition. Common grounds include that the mark is identical or similar to an earlier mark, that the mark is descriptive, or that the application was filed in bad faith.

You may respond to the opposition. If the parties cannot resolve the matter, the IPD will hold a hearing and issue a decision. The decision may be appealed.

Registration and Renewal

If the application is unopposed, or the opposition is unsuccessful, the IPD registers the mark and issues a registration certificate. The registration is effective from the date of filing.

A Hong Kong trade mark registration lasts for ten years from the date of filing. You may renew the registration for further periods of ten years. Apply for renewal before the expiry date. A grace period of six months after expiry exists, but a late renewal fee applies. If the registration is not renewed, it lapses. The mark may then be available for others to register.

Practical Tips for Applicants

Search the Hong Kong trade mark register before filing. The IPD provides a free online search tool to identify whether an identical or similar mark already exists for the same or similar goods or services.

Keep records of your use of the mark. Use can overcome objections based on lack of distinctiveness and is the evidence you will need to prove that your mark has acquired a reputation.

Monitor the Hong Kong Intellectual Property Journal for new applications that may conflict with your mark. You have three months from publication to file an opposition.

Key Points to Remember

• A Hong Kong trade mark registration gives rights only in Hong Kong. Separate protection is needed in mainland China and other jurisdictions.
• Registration is by class under the Nice Classification. An application may cover more than one class.
• The process includes examination, publication, and a three-month opposition period.
• The registration lasts ten years and is renewable.
• The Intellectual Property Department administers the system and publishes the current fees and forms on its website.