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Specification of goods or services

For registration of a trade mark, there must be a specification of goods or services intended to be registered by the registrant, which delimits the registrant’s rights. Therefore, when it comes to the question of where there is infringement of such rights, the specification also serves a signpost. To maximize the registrant’s ability to sue for infringement, it is advisable for the registrant to make the specification as wide as possible. Note however that there are certain limitations within which the specification must be kept. The goods or services to be filed must be those that the applicant is providing or intends to provide. In some cases, the Registrar may require the applicant to submit documentary evidence of intention to use. Except in the case of defensive registration (which is for the protection of trade marks that are “exceptionally well-known in Hong Kong”), the specification should not include items in which the applicant does not trade or intend to trade, noting that the primary function of trade marks is to define and protect the legitimate interests of traders.

To better protect the applicant’s interests, related goods or services should also be claimed in the specification. It is also common practice to include the generic names of the goods, such as “cosmetics” or “make-up products”, in addition to “lipsticks”. In deciding which names or description to be used, reference should be made to the Nice Classification (10th edition).

Also note that the terms “all goods” or “all services” are not acceptable by the Hong Kong Trade Marks Registry, and that in case of an application filed for a whole class heading in many classes or for a wide range of goods or services in many classes, the Registry will usually request the applicant to justify his intention to use the mark by submission of relevant documents and/or information which may demonstrate justification of his claim.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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