Registering your trademark means that you have the exclusive right to use the trademark in relation to the goods and services for which the mark is registered. If other people use it in the course of trade or business in Hong Kong in relation to the same or similar goods or services without your consent, they may be liable for infringement of your mark and you may take legal action against them. Unregistered trademarks may be protected by the common law action of passing off. You must prove reputation in the unregistered mark and must prove that the other person’s use of the mark will cause you damage. Passing off is usually a
more difficult action to bring than an action for infringement of a registered trademark.
Hong Kong trademark law
The trade mark law of Hong Kong is based on the Trade Marks Ordinance Cap. 559, which came into force on 4 April 2003 and repealed the Trade Mark Ordinance Cap 43. The system established by this legislation is entirely separate to the system used in the People's Republic of China, pursuant to the "one country-two systems" policy. The superseded law and the current law share many similarities with the relevant legislation in the United Kingdom, a similarity which is also facilitated by TRIP’s. The new law introduced various substantive and procedural changes, such as expanding the legal definition of a trademark; including or broadening protection for certification marks, collective marks, and well-known trademarks; reducing the period of non-use for revocation purpose from five to three years; and simplifying and streamlining procedures for the registration of assignments, and "registrable transactions" such as licenses.
Registration of a trade mark in Hong Kong commences with the filing of an application at the Trade Mark Registry of the Hong Kong Intellectual Property Department. An application may cover one or more classes of products and/or services. Firstly, the application is assessed by an examiner for deficiencies which go to formalities. The next stage is substantive examination, where the main grounds of objection could be raised: absolute grounds for refusal (e.g. where the mark is inherently not registrable ), and relative grounds for refusal (e.g. where the mark is identical or similar to mark covered by an application or registration filed earlier in time). After the objections (if any) are overcome, the application will be accepted by the registry and published for opposition purposes for an extendible period of three months to allow third parties to object to registration of the mark on certain grounds. Once any oppositions are resolved, a certificate of registration will be issued. The standard timeframe to registration for an application which encounters few if any problems or difficulties is 12 months. Upon registration, and subject to the discussion on revocation below, a trade mark is valid for an extendible period of 10 years.
A registration for a trade mark may be subject to revocation by a third party if the trade mark has not been genuinely and continuously used for at least three years, and there are no valid reasons explaining the lack of use.
Trademark law of the People's Republic of China
The Trademark Law of the People's Republic of China (中华人民共和国商标法) sets out general guidelines on administration of trademarks, protection of trademark owners' exclusive rights and maintenance of quality of products or services bearing the registered trademarks, "with a view to protecting consumer interests and to promoting the development of the socialist commodity economy." Adhering to Article 4 of the Paris Convention, the Chinese government passed the Provisional Regulations Governing Application for Priority Registration of Trademarks in China to grant the right of priority to trademark applications submitted in PRC by the nationals of the Paris Convention member countries.
The Right of Priority on China Trademark Registration
- An applicant may enjoy the right of priority in accordance with any agreement entered into between the country in which he/she first files an application for trademark registration and China or any international protocol to which both countries are parties if he /she files another application for trademark registration in China within six months from the day on which he/she files the initial application for trademark registration in such country. -The owner of a trademark may enjoy the right of priority for a period of 6 months from the first day on which the merchandises on which the trademark is first put are exhibited at any international exhibition recognized by the Chinese Government.
Preliminary Trademark Search
The Preliminary trademark search, while optional, to avoid legal complications in the future. The point of a trademark search is to ensure that the trademark is not already under application or registered by another entity in order to reduce the possibilities of the rejection or opposition raised.
Period of Validity and renewal upon expiration
Validity: 10 years. Renewal upon Expiration: 6 months before the expiration of an application for renewal, renewal is valid for 10 years.
Customs Protection on Intellectual Property Rights
China prohibits the import or export of any goods which infringes the intellectual property rights. A trademark owner is entitled to file a record with the General Administration of Customs of China in accordance with applicable provisions under Customs Law of People Republic of China. If the owner or the General Administration of Customs of China notices any alleged trademark infringement, the General Administration of Customs of China will detain the suspected infringing goods immediately and check against them with the owner for further legal protection.
Documents Required for Trademark Application
A copy of current Business Registration Certificate of the applicant, if the applicant is a corporation; A copy of Identification documents of the applicant, if the applicant is an individual person; Clear image of the trademark; List of goods or services.
Trademark Registration Flow
Trademark Search; Initial Application; Substantive Examination; Publication; Issuance of Certificate
More related trademark services
To conduct trademark search and evaluation; To give advice on trademark registration; To apply for trademark registration; To change the trademark, to renew or replace the registration certificate and to assign or license the trademark; To deal with the issues relating to the review, rejection, defense, revocation, opposition and dispute of trademark; To collect the certificate of trademark registration on behalf of the applicant; To assist in filing the record to Customs and Excise Department for trademark protection;
To assist in dealing with the trademark protection and taking action against trademark passing off; To assist in dealing with legal actions on the infringement of the trademark and trademark registration forestalling.
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