Trademark registration is a crucial step for protecting your intellectual property and brand identity in Hong Kong. Securing a registered trademark provides legal rights and exclusivity over your brand’s symbols, logos, and marks.

What is a Trademark?

A trademark serves as a distinguishing symbol between goods or services belonging to one trader and those of another. In Hong Kong, trademark law is governed by the Trade Marks Ordinance (Chapter 559), which operates independently from Mainland China’s regulations.

A trademark can include any of the following elements, either individually or in combination:

• Words (including personal names)

• Indications

• Designs

• Letters

• Characters

• Numerals

• Figurative elements

• Colours

• Sounds

• Smells

• The shape of goods and/or packaging

For a trademark to be recognized and registered by the Intellectual Property Department (IPD) of Hong Kong, it must be visually represented. Key considerations for trademark approval include:

• Uniqueness: The trademark should be distinct from those already in use and should ideally include an invented word or design.

• Avoiding Descriptiveness: The trademark should not directly describe the goods, services, their quality, quantity, or purpose. Geographical names are also not permitted.

• Pre-existing Usage: If the mark is already commonly used in the business sector, it may be rejected.

• Avoiding Similarity: The trademark should not resemble an existing registered mark visually or phonetically.

It is important to note that a Hong Kong trademark is only valid within Hong Kong and does not extend to Mainland China. A separate registration with the China National Intellectual Property Administration (CNIPA) is required for Mainland China.

Why Register a Trademark?

Registering a trademark offers several advantages:

• Legal Protection: Grants exclusive rights to use the trademark for specified goods and services, preventing infringement.

• Enhanced Brand Recognition: Helps consumers identify your brand and build trust.

• Trademark as an Asset: A registered trademark increases in value with brand recognition and can be used in legal disputes, licensed, or sold.

Trademark Registration Process

To register a trademark in Hong Kong, an application must be submitted to the Trade Marks Registry. The process involves the following key steps:

1. Eligibility Criteria:

• The trademark must be distinctive and not commonly used in the industry.

• Goods and services must be correctly classified in the application.

• A clear and accurate representation of the mark must be provided.

2. Application Submission:

• Applicants must submit Form T2 to the Trade Marks Registry via courier or online through the e-filing service.

• The Trade Marks Registry will examine the application’s compliance with the Trade Marks Ordinance and Trade Marks Rules.

3. Application Examination:

• If objections arise, the applicant may modify the application or challenge the decision through court proceedings.

• If approved, the trademark is published in the Hong Kong Intellectual Property Journal (HKIPJ) for public review.

4. Opposition Period:

• After publication, there is a three-month opposition period where third parties can file objections.

• If opposition occurs, a hearing may be required to determine the outcome.

Duration and Renewal

• The registration process typically takes 6 to 8 months.

• Once registered, a trademark is valid for 10 years and can be renewed indefinitely in 10-year intervals.

Enforcement of Trademark Rights

As a trademark owner in Hong Kong, you have several legal protections against infringement:

• Injunctions: A court order can prevent unauthorized use of your trademark.

• Compensation: You can seek financial damages if infringement occurs.

• Licensing Rights: You can license your trademark to third parties in exchange for royalties.

• Transfer of Ownership: A trademark can be sold, gifted, or included in a will for inheritance purposes.

Conclusion

Trademark registration is essential for protecting your brand’s identity and ensuring exclusive rights to your intellectual property.

For expert assistance with trademark registration in Hong Kong, consult our intellectual property professionals to guide you through the process and secure your brand’s legal protection.