Hong Kong Trademark Registration Guide 2012

Hong Kong Trademark Registration Guide 2012

In Hong Kong, the registration of company name, business names and trademarks are subject to different laws and system of regulatory. The registration of a company name is handled by the Registrar of Companies, a business name registration is handled by the Inland Revenue Department Business Registration Office, and trademark registration is responsible by the Trade Marks Registry. Though you have registered the company, business name, it does not mean that you have the name as a trademark. Application for trademark registration should follow certain procedures:

1、 Check relevant Application requirement Trade Mark Registry will review detailed application form and all attachments to check whether the required information are complete, the parts need to be filled in the form are duly completed as well as relevant information is correct or not before application. If the information is not complete, the Trade Marks Registry will require the applicant to complete the relevant information. The minor amendments (such as commodity number) will not affect the date of submission of applications, but the more significant amendments (eg. did not submit the relevant trademark) will affect the filing date. In addition, significant changes (such as the changes in the trademark) shall not be accepted. If everything is in order, the application will proceed to the next phase (Search and review). 2、Search and Review After checking the relevant application requirement, the Trade Marks Registry will check the trademark records to determine that no other businesses have already registered or apply to register the same or similar trademark in the same or similar goods or services. At the same time, Trade Marks Registry will check whether a trademark is to meet the registration requirements of the Trade Marks Ordinance. Then they will issue the written comments, suggestions and reasons for the application of the trademark. 3、 Opposition If the application does not meet the registration provisions, Trade Marks Registry will raise objections. Applicant can continue to apply for trademark registration within six months once achieving the requirements of the relevant provisions. The applicant may further extend three months for application during this period. How to resolve objections The Trade Marks Registry will explain why the trade mark does not meet the registration requirements in the comments, if the opposed to the problem can be solved, they can provide recommend solutions to the applicant. Still existing of objections Even if the applicant has managed to solve the objections raised by Registrar of Trade Marks in the preliminary views, the application may still not meet the registration requirements. The Trade Marks Registry will be requested to comment on the results of the review. At this stage, if the applicant would like to continue to deal with this application, he or she can request or call for a hearing to the registration requirements within three months from the date of recommend from the Trade Marks Registry. The applicant can only requested an extension of the above-mentioned time limit under specified circumstances “Trade Marks Rules” (for example, If you need more time to obtain the consent of the earlier trade mark owner). Request for a hearing, all the evidence of supporting and opposing the trademark registration will be considered at the hearing. The hearing officer will then make a ruling. 4、Announcement After accepting the application, the Trade Marks Registry will make an announcement in the Hong Kong Intellectual Property Journal. 5、Third Party Opposition Anyone can read your trademark in the Hong Kong Intellectual Property Journal, and raise objections to your application for registration. The opponent must submit a notice of opposition within three months from the date of publication of the application for registration. As an applicant, you can withdraw your application for registration or submit a counter-statement to the opposition. If you withdraw your application for registration or lost in the proceedings of the counter-statement awarded, you may need to pay the other costs of litigation. The opponent and you have the opportunity to submit evidence to apply for registration or opposition within a specified time.

After receiving all the evidence, the Trade Marks Registry will arrange two sides to attend the hearing, and a ruling will be issued by the hearing officer. And the winner of the case in legal dispute procedures of trademark registration applications usually has the right to ask another party to pay for legal fees. 6、Registration After accepting the application for registration of the trademark, Registrar of Trade Marks will record the details of the trademark into the register and issue a certificate of registration to the applicant. In addition, the Registrar of Trade Marks registry will publish announcement in the Hong Kong Intellectual Property Journal. The registration date will be traced back to the submitted date of application, in other words, you as the registered trademark owner should be counted from the date submitted to application.