Aug 21, 2025 | “Well-known Trademarks” in Hong Kong

1. Can a trademark owner apply for a declaration in a Hong Kong court stating that its registered trademark is a famous trademark (“well-known mark”), thereby eliminating the need to adduce evidence on reputation of the trademark or registered trademark in the future?

2. According to Hong Kong laws, the answer to the above question is no. Nevertheless, the term “well-known trademark” does appear in the Trade Marks Ordinance, Cap. 559 and has a litigious meaning.

3. The use of “well-known trademarks” in Hong Kong differs from that in mainland China. How does “well-known trademarks” protect trademark or registered trademark owners in Hong Kong? Please see below.

4. Under Section 18(1), (2) and (3) of the Trade Marks Ordinance, Cap. 559, the following circumstances constitute infringement of a registered trademark:

a) When the infringer uses a trademark that is “identical” to the registered trademark on “identical” registered goods (Section 18(1));
b) When the infringer uses a trademark that is “identical” to the registered trademark on “similar” registered goods (Section 18(2));
c) When the infringer uses a trademark that is “similar” to the registered trademark on “similar” goods (Section 18(c)).

5. From the above, it can be seen that in order to constitute infringement of a registered trademark, the trademark registrant must at least prove that the infringing trademark is used on “similar” registered goods. Therefore, “identical” or “similar” registered goods are one of the indispensable conditions for proving infringement of a registered trademark.

6. This raises the following question: If the infringer uses a trademark that is “identical” or “similar” to the registered trademark but on “different” registered goods, then the above regulations will not constitute trademark infringement (the problem).

7. Let’s take an example: the infringer uses the trademark “LV” (a well-known handbag brand) on toys. However, the “LV” trademark owner has not registered the “LV” trademark for toys (i.e., goods in Class 25). Consequently, the “LV” trademark owner cannot use the above regulations to allege that the infringer’s use of the “LV” trademark in selling toys constitutes trademark infringement.

8. In reality, no matter how well-known a trademark is, only a very small number of companies register their trademarks in all 46 classes in Hong Kong. Not only is this financially unfeasible, but it is also technically impossible. Even if a registration is successful, it could potentially be cancelled by others through the “three-year non-use trademark revocation procedure”.

9. Faced with the above-mentioned problems, Section 18(4) of the Trade Marks Ordinance, Cap. 559, can intervene and assist the owner of a “well-known trademark”.

10. According to Section 18(4), as long as a trademark is a “well-known trademark” under the Paris Convention, no matter if the infringer uses the trademark on “any” goods, as long as the use is detrimental to the interests of the owner of the “well-known trademark”, it will be considered an infringement of the registered trademark or mark. Therefore, well-known trademarks have a wider and more convenient litigation advantage than other registered trademarks.

11. However, the Paris Convention does not provide a list that designates a particular trademark as “well-known.”. On the contrary, the Paris Convention (Article 6bis) only states that if a certain trademark has a high degree of recognition and reputation, it is a “well-known trademark”. However, the trademark holder must be a company in a country that is a member of the Paris Convention. Notably, China is also a member of the Paris Convention.

12. Therefore, if a trademark owner encounters the problem, it may consider suing the infringer for infringement of the registered trademark through the “well-known trademark” route. Nevertheless, you need to consult with an experienced lawyer before bringing a lawsuit.