May 4, 2020 | Filing Basis-Statement of Use in Hong Kong

In Hong Kong, a trademark can be registered if it is already in use or if there is an intention to use the trademark in commerce in Hong Kong. However, if a registered trademark is not used for a continuous period of more than 3 years, if may be revoked on the grounds of non-use.

In other words, actual use of trademark in Hong Kong prior to the filing date of trademark application is not a prerequisite filing requirement in Hong Kong.

Actual use requirement on other cases

If a trade marks is refused registration under absolute ground of refusal which is considered descriptive or generic may nevertheless be accepted if the applicant can establish that, before the date of the application for registration, the trade mark has in fact acquired a distinctive character as a result of the actual use made of it. The acquired distinctiveness must exist prior to the date of the trademark application.

There is no fixed period of usage requirement, although five years is usually sufficient. Very substantial and extensive use over a shorter period may well suffice, although use for lesser than two years is unlikely regarded as sufficient. Besides, the actual use should be continuous.

The use must also relate strictly to the goods or services designated by the trademark application. If it supports only some of the designated goods or services, the applicant has to amend the application to delete those goods or services where the mark has not been shown by the actual use evidence to have acquired a distinctive character.

When evaluating the acquired distinctive characteristics of the trademark, the following are example factors that can be considered:

The market share being held by the trademark;

The intensity of use, geographical distribution and long-term use of the trademark;

The amount invested by the owner to promote the trademark;

Proportion of consuming public who identify goods or services as originating from the trademark owner; and

Statements from chambers of commerce or other industry and professional associations.

Benny Kong & Tsai

4 May 2020