Why and how to register a trademark in Hong Kong

In Hong Kong registration is not mandatory to obtain trademark rights, as prior use of a trademark can be recognized. However, registration is always recommended as it grants presumption of ownership and helps enforce the trademark.

Trademarks are registered via the Hong Kong Intellectual Property Department (IPD). Note that although the People’s Republic of China has sovereignty over Hong Kong, both territories still maintain separate registration systems and therefore a trademark registered in China does NOT have validity in Hong Kong, nor will it grant trademark protection in Macau.

Use prior to filing or registering is not compulsory; however, it may help demonstrate that the trademark has acquired distinctiveness in case an objection is received that the mark lacks distinctiveness.

If you register a combined trademark (which includes both word elements and figurative elements) in Hong Kong, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances. 

In Hong Kong it is possible to file an opposition against an application during a period of three months from the publication date. Within this period an extension for a further two-month period can be requested.

A trademark must be used within three years after the registration date otherwise it will become vulnerable to cancellation from non-use. The use can be minimal as long as it is genuine.

Trademarks have a validity of ten (10) years from the filing date. Renewal can be requested in the six (6) months preceding the expiry date. After the expiry date, the trademark can be renewed within six (6) months upon payment of late fees, and during a further six months after that provided valid reasons are given; the validity of such reasons is subject to the appreciation of the trademarks office.

For trademark assessment reports the trademark must be composed of the Latin alphabet and will only consider other trademarks in the Latin alphabet. If you wish to register a trademark that is composed of Pinyin or Hanzi characters (Chinese writing) the trademark study must consider trademarks written in Pinyin or Hanzi characters (Chinese writing). Please contact us if this is the case, additional fees will apply.

If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Hong Kong (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.

 

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