Trademarks in Hong Kong

Competent Authority & System

• Official Authority: Trade Marks Registry, Intellectual Property Department (IPD), Hong Kong.
• Legislation: Trade Marks Ordinance (Cap. 559).
• Where to file: applications are accepted at the Registry's office in Wanchai, by post, or electronically through the IPD's e-filing system.

International Treaties

• Paris Convention: a priority claim must be made at the time the application is filed, within the six-month priority period.

Applicant & Representation Requirements

• Who may apply: the applicant must be capable of holding property, including the trade mark. This covers individuals, incorporated bodies and unincorporated bodies with legal capacity to hold property.
• Address for service: an address for service in Hong Kong must be filed with the application. It must not be a P.O. Box, a virtual office, a "care of" address, any address used only for forwarding mail, or an email address.

Online Services & Database

• E-Filing: applications can be filed through the IPD's e-filing system. Credit card payment is available only through e-filing.
• Search: the IPD advises applicants to search the register before they apply. A records search is also available from the Registry for a fee (Form T1).

Registrable Mark Types

• The Ordinance allows several kinds of mark, including shape marks and colour marks. Defensive trade marks are available for exceptionally well-known marks.

Classification Framework

• Nice Classification: goods and services are classified under the Nice Classification, which has 45 classes in its current edition.
• Multi-class applications: one application (Form T2) can cover several classes.

Examination Process

• Deficiency check: the Registry first checks the form and attachments. The applicant has two months from the Registry's notice to put right anything missing.
• Search and examination: an examiner searches the earlier trade marks on record, checks that the registration requirements are met and issues a written opinion.
• Objections: the applicant has six months to respond to objections. An extension of three months is available. If objections remain, the applicant has three months after a further opinion to satisfy the requirements or ask for a hearing.

Publication & Opposition

• Publication: an accepted mark is published in the Hong Kong Intellectual Property Journal.
• Opposition period: three months from the publication date (Form T6). The time limit for filing a notice of opposition cannot be extended.

Timeline & Expedited Examination

• Typical timeline: if there are no deficiencies and no opposition, the whole process from receipt of the application to registration can take as little as six months.
• Registration date: registration dates back to the filing date of the application.

Official Fees

• Application (Form T2): HK$2,000 for one class and HK$1,000 for each additional class.
• Notice of opposition (Form T6): HK$800.
• Renewal (Form T8): HK$2,670 for one class and HK$1,340 for each additional class. A late renewal carries an extra HK$500.
• Recording an assignment or a security interest (Form T10) or a licence (Form T11): HK$800 each.
• Application fees are generally not refundable, even if the application does not proceed to registration.

Duration & Renewal

• Validity period: a mark is registered for 10 years beginning on the date of registration.
• Renewal: renewal is for further periods of 10 years. It should be made during the six-month period ending on the date of expiry.
• Late renewal: if renewal is not made before expiry, it can still be made, with the late renewal fee, within six months after expiry.

Use Requirements & Priority System

• Non-use revocation: a registration can be revoked if the mark has not been genuinely used in Hong Kong by the owner, or with the owner's consent, for the goods or services it covers for a continuous period of at least three years, and there is no valid reason for the non-use. The three years can begin at any time on or after the date the mark was entered in the register.

Post-Registration Transactions

• Registrable transactions: an assignment, an assent, a court order, a security interest and a licence can be registered with the Registrar. Assignments, assents, court orders and security interests use Form T10; licences use Form T11.

This article is for informational purposes only and does not constitute legal advice or consultation. To receive personalized and in-depth guidance tailored to your specific situation, we invite you to schedule a consultation.