May 27, 2025 | Benefits of Successfully Registering a Trademark

1 Two days before writing this article, the author received a letter from the Hong Kong Customs, informing the author’s law firm that during the inspection by the Hong Kong Customs, the Hong Kong Customs discovered items suspected of infringing trademark registration and invited the registered trademark owner to appoint a representative to inspect the allegedly infringing goods. Since the author’s law firm is the agent of the trademark registrant, the Hong Kong Customs contacted the author’s law firm.

2 The above also shows that the Hong Kong Customs is not just passive (only in response to complaints from registered trademark owners) but will also take proactive actions to combat counterfeit trademark operators. Using the Hong Kong Customs to crack down on infringing operators is not only economical (strictly speaking, it is free) but also sometimes more effective than civil litigation. By virtue of the investigation, prosecution and hearing process and even the results have a far-reaching impact on the infringing operators (Defendants).

3 From the perspective of civil litigation, the registered trademark owner can prevent the infringer from using the registered trademark or an infringing trademark that is extremely similar to the registered trademark by issuing a Cease and Desist letter or even pursuing civil lawsuit. Through civil litigation, the registered trademark owner can track down the suppliers and buyers of the infringer, and then combat every link in the entire infringement chain. Certainly, after winning the lawsuit, the registered trademark owner can also seek compensation for losses and attorney fees from the infringer.

4 From the perspective of business operations, registered trademarks also have practical utility. With the trademark registration certificate or the information on the website of the Hong Kong Intellectual Property Department, the registered trademark owner can show agents, buyers or online platforms that he is the registrant of the relevant trademark. This will precipitate them working with trademark owners and selling genuine products more contentedly.

5 On the contrary, if the trademark owner does not register the trademark in the correct class, agents, buyers or online platforms will more or less challenge the ownership of the trademark. Sometimes, online platforms even require trademark owners to successfully register their trademarks before they dare to accept online collaborations with them.

6 Trademark squatting (trademark squatter) often occurs in Hong Kong. Usually, trademark squatting occurs when the trademark owner has not successfully registered the trademark. Regardless of whether the trademark squatter has a business relationship with the trademark owner or is the agent of the trademark owner, as long as the trademark owner has not yet successfully registered the trademark, the risk of squatting still exists. This is especially true when the trademark started to become famous in Hong Kong. If the trademark is successfully registered by others, it will take a lot of money and time for the owner to overturn or even cancel the registered trademark. Between the two, time is the more luxurious. The reason is that until the preemptive registration of a trademark is successfully cancelled, the person who has taken the mark is formally the registrant of the mark. Cancellation proceedings can sometimes take a year or two to be successful. In the next one or two years, the loss to the trademark owner may also be substantial.

7 Due to the various reasons given above, the author recommends that trademark owners should register their trademarks on their own businesses or products as soon as possible. If resources permit, you may also register trademarks for adjacent products sold by your company to avoid Trademark squatting.