About Our Trademarks Department
About Our Trademarks Department
Our commitment is to “provide solutions to clients”. Since the establishment of our department in 1996, there have been over 4000 successful cases, including applications for registration of trade mark, oppositions, revocations, etc. Our team is led by our Senior Partner and professional and experienced practitioners, aiming to provide accurate and timely services to our clients. The routine work of our department includes:-
- Conducting trade mark search
- Providing pre-registration advice
- Filing trade mark application
- Advising examiner’s report and responding thereto
- Handling opposition to application of trade mark
- Renewing registered trade mark
In order to provide efficient management to our clients, our department, watch & enforcement team and litigations team work together to provide relevant services to our clients, including investigation of infringment activities, analysis of trade mark infringement, issue of cease and desist letters, prosecution of infringers, etc..
Registration and Protection of Trademarks
Trademarks mean any signs which can distinguish a corporation’s product or service from other corporations’ products and designs, and which can be expressed in writing or by drawings. Registered trademarks are trademarks approved for registration by the Trademarks Registry.
Registered trademarks first need to state the product or service in which its trademark is to be registered according to the International Goods and Services Classification “Nice Classification”, and then fill in the relevant forms and submit to the Trademarks Registry for registration. Undoubtedly, applicants can handle these via an experienced solicitors’ firm.
When a trademark is registered, the applicant would receive the trademark’s exclusive use right, and be protected by the law. Any corporation or individual using the registered trademark or a similar trademark without your consent would infringe your rights, the owner can take legal actions against the infringer to stop all infringement and even to get compensation for any economic loss.
Trademarks are strictly territorial, registered trademarks can only be protected by the law of the countries or territories that it has been registered into. In other words, if your trademark has been registered in places other than Hong Kong (even in the Trademark Office of the State), your trademark would not be protected in Hong Kong, to receive protection in Hong Kong, your trademark must be registered according to the Trademarks Ordinance Cap. 559.
Application of Trademark Registration
There are four stages for registering a trademark:
- Format review
- Substantive examination
- Issue of Trademark Registration Certificate
Stage 1: Format Review
After the trademark registrant has submitted the application, the Trademark Registry would verify all the information provided are correct: including registrant’s name and address, drawing of the trademark, the goods and/or service. If the information is incomplete or incorrect, the Trademark Registry would send to the registrant a “Deficiency Notice”. The applicant must supplement the information and correct all the incorrect information within 2 months after the issuing date of the “Deficiency Notice”.
When the information is complete, the Trademarks Registry would perform a substantive examination: check the record of the previously registered trademarks, to see if there is anyone else who have registered or applied for registering the same or similar goods or service trademark.
If the examination is passed, the application procedure would move to the next stage.
Stage 2: Actual Examination
After Stage 1 has been completed, the Trademarks Registry will examine if the trademark under application complies with the “Trademarks Ordinance” and the “Trademarks Regulations”. This stage of examination is to check whether your trademark is distinguishable from other trademarks, in other words if your trademark has its “distinctiveness”.
If the trademark is only the description of a product or a service, or it just reflects the quality, functions, quantity or value of a company and its service, e.g. “First-class” in “First-class Service”, the Trademarks Registry would raise objection. Similarly, for trademarks using geographic names, because geographic names are commonly used by the public, they lack distinctiveness, therefore under normal circumstances, the Trademarks Registry would not allow them to be registered.
If the examination has not been passed, the Trademarks Registry would issue a notice, explaining why the trademarks could not satisfy the requirements for registration, and the applicant can amend or change in three months time. If the applicant still cannot satisfy the requirements after amending or making changes, the Trademarks Registry will issue a further notice, clarifying the results of the examination, the applicant can within three months after receiving the notice satisfy the requirements or request for a hearing.
Stage 3: Publication
After the Trademarks Registry has approved the application, it will publish this in the Hong Kong Intellectual Property Gazette, for three months. Within the publication period, anyone can object the registration, the applicant can also counter-object to that objection. Both the applicant and the opponent can produce evidence within a time frame. After the Trademarks Registry has received all the evidence, it will make arrangement for hearing, and the hearing officers will make decisions.
If within the publication period no one objects to the application, the trademark would successfully be registered.
Stage 4: Issuing Certificate of Registration for Trademark
After the application has passed the examination and no one objects to it during the three month publication, the Trademarks Registry will record the details of the trademark into the Registry’s register, and issue a Certificate of Registration to the applicant.
It takes six months to go through all the process for registering a trademark.
You can take the following strategies to protect your trademarks:
- Register the trademark in different countries and territories. Especially in areas where the company actively develops in.
- Register both Chinese and English versions of the trademark. This can enhance the attractiveness of the trademark and enlarge the area of protection for the trademark.
- Register the trademark as soon as possible.
- Browse the online Intellectual Property Gazette, check if anyone’s registration application in Hong Kong would cause confusion to the public against your registered trademark.
- If anyone infringes your trademark in Hong Kong, you can report to the Hong Kong Customs and Excise or consult professions.
If you need further assistance or information, please contact our firm’s Trademarks Registration Department.