Hong Kong has solid rules for intellectual property protection. While unregistered trademarks can be covered by common law actions, it is advised that a Hong Kong company shall register its intellectual property under the Trade Marks Ordinance to avoid potential disputes.
A trademark is a sign that differentiates the goods and services of one brand from the others. You need to be able to present the sign graphically. When you trademark a sign, the sign can be combined with words, phases, letters, numerals, figurative elements. Moreover, you can also trademark colours, sounds, smell, shape of a package or product.
One customer asked me one question few months ago.
“Hey Marco, if unregistered trademarks can be covered by common law actions, why should I pay extra and register a trademark in Hong Kong?”
My answer is simple.
“Once your company registered the trademark, your company has exclusive right to use the trademark in relation to the class of your product. If other business uses it without your consent, you can sue them for infringement. If you do not register the sign officially, it can sometimes be difficult to prove that you are the first to create and use the mark.”
I further said to him. Do you remember the Jewellery shop incident in 2016?
“There are two famous jewellery shops in Hong Kong. They are called “Chow Tai Fook” and “Luk Fook” respectively. Hong Kong people often buy jewellery from these two shops before marriage. In 2016, a Mainland China company decided to invest in Hong Kong and it called itself “Chow Luk Fook”, a combination of the two famous brand. You can never know how ridiculous some people can be to copy and use your brand name.”
DIY: Can I submit trademark application myself?
Yes. You can arrange trademark application yourself. Before you start the application, I would like to draw your attention to the following points in which they can affect the success rate of your application.
The Sign has to be distinctive
If you want to trademark your sign, your sign must be easy to distinguish from your counterparts. If the Trade Mark Office thinks that the sign is not distinctive enough, they can object to your application. For example, a sign can be made up with words, letters or characters. Invented words are usually viewed as distinctive. For everyday words, it can also be distinctive if it is in no way associated to your business nature.
The Sign should not be a description of a product
From our experience, company owners should not include quality, quantity, value and a city or country name in a mark. The Registry is unlikely to approve such applications. For example, they are unlikely to approve marks like “Quality Shoes”, “Fresh Fruits”, “Paris Fashion”, etc.
The mark should not include a well-known term in your industry
The Trademark registry will not approve an application if your mark includes a well known term or phrase in your business industry. A typical example is the expression “V8” for vehicle engines.
The mark should not be similar to marks which have been registered
Before you submit your application, company shall conduct a search at the Trade Mark Registry to see if there are any marks which are similar to your logos. If yes, then the success rate will be low.
Once you understand the above points, you probably have a rough estimate of the possibility. If you believe you have a good chance, then you can start filling in registration forms.
What is the process? How does the Intellectual Property Department work?
Trade mark application usually takes around 6 – 9 months. The Intellectual property department will first check if there are any typo or information missing from the documents. If no deficiencies are found in the forms and attachments, they will pass it to the back office for further checking.
If there are minor typos or mistakes, some officer would allow you to make some small amendments. In general, this won’t affect the filing date. However, if you need to make substantial changes to the form or attachments, they will reject your application. The date of your first filing will not be recognized.
The department will conduct a thorough search in the system. They will review whether your application fulfill all the requirements listed in the Trade Marks Ordinance. If the application is approved, they will issue and mail you a trademark certificate. Result will be published in the Government Journal. The effective date of registration will be the submission date of your application. In other words, your intellectual property right or protection will start from the filing date.
If the intellectual property department rejects your application, they will write you an opinion. In some cases, the intellectual property department may advise you solutions in coping with certain type of objections. If you meet certain requirements within 6 months, they may re-consider your application. If you need more time, you can apply for an extension.
Please note that objections can remain even if you try to overcome it. The department will issue a further opinion if you fail to overcome the objection. You will then have 3 months to reply. If you are not satisfied with the final result, you can call for a hearing. All information and documents will then be submitted to the hearing officer.
To avoid delay and additional cost, company owner can consider to use our preliminary advice service. If our trademark registration expert confirms that you have a good chance of success, then you can proceed with the application. Alternatively, Get Started HK will be happy to handle the whole trademark registration process for you. You just need to send us your company logo and you can leave us all the complicated paperwork. For details, you can contact our staff at firstname.lastname@example.org
Get Started HK Limited does not undertake to give legal advice and this article carries no legal authority. Get Started HK Limited will therefore not accept any responsibility for the consequences of any omissions or inaccuracies in this article. All information is provided to you on an “AS IS” basis without any express or implied warranty of any kind and is provided for a general, indicative purpose only.