Hong Kong is one of the world’s largest financial cities, with a population of over 7.2 million people (2022) and a GDP of 500 billion US dollars (2022). Often described as one of the financial capitals of the world, Hong Kong is a prominent area for trademark registration, and is managed by the Trademarks Registry within the Intellectual Property Department (IPD) of Hong Kong.
This article will provide an in-depth guide to the trademark registration process that takes place in Hong Kong, what trademarks are, and what makes them different from the concept of patents and copyrights. Additionally, it will use the information provided by the IPD of Hong Kong as a reference so what you read here is the up-to-date information that is available in an easier-to-read format.
What is a Trademark?
According to the Hong Kong Intellectual Property Department (IPD), a trademark is a sign that makes the distinction between goods or services from a specific trader to another one. In Hong Kong, Trademark law is based on the Trade Marks Ordinance chapter 559, and it is completely separated from the regulations that are valid in Mainland China since Hong Kong has a different legal system. A trademark can include any or a combination of the following items:
- Words (including personal names)
- Figurative Elements
- The shape of goods and/or packaging
A trademark must be able to be represented graphically to be confirmed as a registered trademark by the Intellectual Property Department of Hong Kong. The process takes around 6 to 8 months and the trademark certificate lasts for 10 years. In 2020 there was an amendment to the Trade Marks Ordinance to get more in line with the Madrid Protocols regarding the World Intellectual Property Organization (WIPO).
A trademark that is registered in Hong Kong is only registered within its jurisdiction and is not automatically valid in Mainland China territory. A trademark registration process for Mainland China has to be filled out separately and it is a more lengthy and complicated process that involves the China National Intellectual Property Administration (CNIPA).
Trademark vs Patent
To start, trademarks and patents are governed by two separate legislations in Hong Kong.
Patents are defined by the Intellectual Property Department (IPD) as the protection of an invention, which is a solution presented to a technical problem related to a specific process or a product. In this sense, a patent covers an invention while the trademark is related to the graphical or physical mark that differentiates a specific good or service.
Additionally, a patent can reduce the risk of third parties making or using an invention for their gain. For example, manufacturers that replicate a product using a patent and obtain a profit. In this sense, as patent registration is subject to specific territories, it can prevent other companies or competitors, use that invention in the registered territory. Legal action can be also taken if it is found that someone not authorised is using your registered patent and compensation can be requested.
Trademark vs Copyright
Copyright is defined by the Intellectual Property Department as the right of individuals over their original works. For example, the author of books, computer software, music, artistic works, sounds, films, and performances, including those made available on the internet. In Hong Kong, this right is given automatically to the owner, and it starts when the work is created. In contrast, a trademark needs to be registered with the authority to be recognized.
Moreover, the Intellectual Property Department (IPD) mentions that there is no official registry for the registration of copyright works. Another important difference between these two elements of intellectual property is that original work cannot be patented or trademarked.
Copyrights can be found in different forms and presentations, which include the following:
- Literary works, for example, books and computer software
- Music works such as musical compositions
- Dramatic works and plays
- Artistic works, for example, drawings, paintings, and sculptures
- Sound recordings
- Cable programs
- Typographical arrangements/published editions of literary, dramatic, or musical works, and performers' performances.
Copyright lasts until 50 years after the original creator of the work has died, whereas trademarks expire after 10 years. The protection over copyright works will be considered if a substantial part has been stolen or plagiarised, based on the principle of quality rather than quantity. On the other hand, trademarks are protected in their entirety.
The Benefits of a Registering a Trademark
Registering a trademark in Hong Kong has several benefits, in this section, we explore some important reasons:
- Significant brand protection: there will be legal documents that certify the ownership of your trademark that will be protected within a solid legal framework. Anyone else who doesn't have permission of using your trademark will be liable for legal action. Additionally, there is a window for other individuals to oppose a trademark application to avoid confusion among the public.
- A trademark can become an asset: once a trademark is registered it can become an element of value for the business, as well as bring a layer of security for legal disputes while doing business.
- Preventing a locked-up situation: this situation arises when a competitor targets a non-registered trademark to prevent them from making the registration. Although a company can appeal or contest the application, the process itself can be lengthy and there is always the possibility that the authority resolution is granted to the other party.
Trademark Application Process
For the application process to register a trademark in Hong Kong, it must be made through the Trade Marks Registry. Moreover, for a trademark to be eligible to be registered, there should be substantial evidence of its use and a clear intention to be used imminently. If it is found that a trademark has not been in continuous use for at least 3 years, it can be deemed to be revoked.
As for the trademark application, Form T2 needs to be submitted to the Trade Marks Registry via courier. Alternatively, it can be submitted online via the filing service. Furthermore, the application fee is HK$2,000 and HK$1,000 per each additional class of goods or services category. It is important to mention that once the application has been submitted, no further changes can be done and if the form is rejected the fee paid is nonrefundable.
The Trade Marks Registry will evaluate the application to make sure that it is within compliance with the Trade Marks Ordinance chapter 559 and the Trade Marks Rules chapter 559A. In this way, the Registry can make sure that each new application will not cause conflict with previously registered trademarks in Hong Kong. More importantly, it will assure that the trademark is distinctive and unique enough to differentiate itself from other goods and services.
In the case that an application is denied by the authority, it is possible to object, also it is possible to amend the application to overcome the decision, as well as have to appeal the objection in a court hearing, or make a new registration to a different trademark.
On the other hand, if your application is successful, the trademark will be published in the Hong Kong Intellectual Property Journal (HKIPJ).
After the application has been submitted, there are 3 months when other parties can contest or appeal the application because your trademark is too similar to theirs. An independent assigned officer will have to study the case to determine if the objections presented fall within reasonable grounds. Once the period of opposition has passed, the authorities will issue a registration certificate for your trademark and the date of the right will become effective from the date of the application in the initial form.
As we had previously mentioned, the certificates are valid for 10 years and the renewal process can be commenced 6 months before the date of expiration. The authority will send reminders in advance to the owners. This adds an extra security layer to protect your trademark from third parties trying to submit a registration.
In short, trademark registration in Hong Kong can be a complex and delicate process and it is different from other intellectual property elements such as copyrights and patents. Nevertheless, if the process of registration is done right it can bring many benefits and save many headaches to the owners of a company and even enhance the reputation of a business, as well as the full protection of the law in Hong Kong. It is important to not forget that a trademark registered in Hong Kong will not become automatically registered in Mainland China.
How long does it take to complete the trademark registration process in Hong Kong?
The trademark registration process in Hong Kong takes around 6 to 8 months.
How long is a trademark valid for?
What is the difference between a trademark and a copyright?