When you start a new business, getting your brand secured should be one of your primary goals.
You don’t want anyone else to ride on the success of a brand that you want to build with a lot of effort.
And one of the easy ways to do this is through trademark registration.
A trademark is a sign that distinguishes your goods or services from those provided by your competitors.
They are a form of intellectual property protection.
The tick sign of Nike or the name Coco Chanel is nothing but their trademark that makes these brands so memorable for the audience.
A word, phrase, symbol, design, or a combination of these associated with your business is your trademark.
When you register your trademark, it prevents others from copying it or misusing it.
In other words, registration provides you with legal ownership of the trademark.
This article tells you everything you need to know about trademark registration in Hong Kong:
Why register your trademark in Hong Kong?
When your trademark is not registered, it doesn’t get any protection under the Trade Marks Ordinance (Cap.559).
While you may still take actions under common law for passing off, you will have to establish your goodwill and how the misuse has caused financial losses.
So till you register the trademark, it is harder to prove that you are the owner of the mark.
Before you register your trademark
Every trademark application should fulfill a few criteria before the registration application is processed.
Here are a few important ones:
- Is the trademark distinctive? For a logo, word, or picture to be registered as a trademark, it should be distinct from the crowd. Commonly used words that are in no way associated with your business cannot be considered distinctive. As a result, such words cannot be registered as a trademark.
- Is it a description of your goods and services? You cannot register something as a trademark if it simply describes the goods and services or shows the quality, purpose. For instance: QUALITY HANDBAGS cannot be registered as a trademark.
- Is it a well-known term in your line of business? If the proposed trademark is a well-known term or representation in your line of business, you cannot register it. For example, ‘V8’ for vehicle engines cannot be registered as a trademark.
- Has someone else already registered or applied to register the same or similar trademark for the same or similar goods and services? If someone else has applied for registration or has already obtained registration for the same or similar trademark, your registration application will be rejected. Trademark law experts always recommend conducting a search of the trademark registry to check whether the proposed trademark has already been registered or if someone has applied for registration. Such searches can be performed on esearch.ipd.gov.hk.
Additionally, the Hong Kong Government doesn’t allow an applicant to use certain words as part of the trademark. These include:
- Power Bank
Trademark Registration Process
Applications for registering a trademark should be filed with the Intellectual Property Department of the Government of the Hong Kong SAR.
It can be filed online by visiting the Trade Marks Registry office.
Bear in mind that only such trademarks can be registered which are being used by a person or a company or are about to be used in the near future.
Here’s what you need to submit:
- Duly filled Trade Mark Form T2
- Personal details of the applicant
- Specification of the trademark you wish to register
- A clear image of the trademark you wish to register
- Claims, if any, for priority consideration of your application.
Once the Registrar receives the application, the examiner will review the application for any deficiencies and identify if any information is missing.
In case of any deficiency, you will be asked to provide relevant information.
However, you cannot make any major changes to the application at this stage.
The next stage is search and examination.
Once the deficiency check is completed, and the application is in order, the examiner will search the trademark records to see if the same or similar trademark has already been registered or applied for by another trader for the same or similar class goods and services.
The examiner will also check if your application satisfies the registration requirements under the Trade Marks Ordinance.
If the registration requirements are not satisfied, the examiner will raise an objection, and you will have six months to overcome the objection, which can be extended by another three months.
The examiner will indicate the steps you can take to overcome the objection to proceeding with registration.
Some of these options include:
- Filing an amendment to the application to remove the goods or services affected by the objection
- Providing evidence that your trademark has a distinctive character
- Filing an amendment to the representation of the mark
- Filing a consent from the owner of the earlier registered mark or application which prevents your mark from being registered
You can also file a hearing request to present all the evidence for and against the trademark wait for the hearing officer’s decision.
- If the Registry considered objections and overrules it or there were no objections to the application, then your trademark is accepted for registration. The Registry then publishes it in the Hong Kong Intellectual Property Journal.
- Anyone can view your trademark in the journal and file an opposition within 3-month from the date of publication. If that happens, you can either withdraw your application or respond to the opposition. If you respond, you will need to present evidence before the Registry and wait for the hearing officer’s decision.
- If no opposition is filed and the three-month period expires, the Registrar of Trade Marks enters the details of your trademark into the trademarks register and issues a certificate of registration. The notice is also published in the Hong Kong Intellectual Property Journal, but your rights as the trademark owner go back to the date of filing the application for registration. The registration is valid for ten years, and you will need to keep renewing it every ten years.
Cost of trademark registration in Hong Kong
If your application has no deficiencies or no objections/oppositions, the entire procedure can be completed within six months.
In other cases, it can take up to 12 months.
The application fee and application form provided to the Intellectual Property Department of the Government of the Hong Kong SAR is HK$1,300.
For each additional trademark class in the application, an additional HK$650 is payable.
Class in a trademark application refers to the types of services and goods for which you want to obtain a trademark.
Is international trademark registration possible in Hong Kong?
Trademark laws are unique to every country and there is no system to grant an international trademark.
If you want your trademark to be protected in Mainland China or Macau, you’ll need to file for it separately in such countries.
Are you ready to set up your business in Hong Kong and get your trademark registered?
Registering a trademark in Hong Kong can be a long drawn process and you might get overwhelmed with all the paperwork.
It is always advisable to get a qualified trademark lawyer on board who can help you navigate through these issues.
If you want to start your business in Hong Kong, but don’t know where to begin, Air Corporate is here to help.
Right from taking care of incorporation, registering your business, and providing you a virtual office address — we are here to sort it all out.
So contact us right away and let your dreams of doing business in Hong Kong come true!
Ready to trademark your ideas and IP in Hong Kong?
Register your business in Hong Kong with Air Corporate today and you’ll get professional advice and administrative help when applying for trademarks and copywrites.