Hong Kong became a part of China in July 1997. However, Hong Kong and China have different legal systems and trademark rights acquired in China do not extend to Hong Kong or vice versa. A new trademark law came into force in Hong Kong on April 4, 2003. Highlights of the Act are: 10-year registrationlrenewal periods instead of 14 years; collective marks are registrable; multiclass filing is permitted.
Who May Apply?
The first user of a mark or one who first intends to use a mark is entitled to registration. Any person claiming to be the owner of a trademark used or proposed to be used may make an application for registration. (Application may be made on behalf of a new legal entity not yet constituted).
The owner of a trademark may be recorded as a registered user of a registered mark for all or any of the goods or services for which it is registered, (other than as a defensive trademark), either with or without conditions or restrictions.
Under the International Convention, any person who has applied for protection for any trademarks in a Convention country, or his or her legal representative or assignee, is entitled to registration of his or her trademark in priority to other applicants, and the registration will have the same date as that of the application in the Convention country; provided the application for registration of the trademark is made within six months from the date of application in a Convention
country, and provided further that the priority document is filed before the leave to advertise is issued by the Registrar.
What Can Be Registered?
Under the old Trade Marks Ordinance, the Register of Trade Marks was divided into Parts A and B, similar to the system established by the former United Kingdom Trade Marks Act. The dual-register was abolished by the Trade Marks Ordinance 2000, and has been replaced with a single Register of Trade Marks, bringing Hong Kong into line with current international trends. On April 4, 2003, the commencement date of the new Ordinance, all existing registered trademarks (whether in Part A or B) were deemed to be transferred to the new single register. Registrations under the new Ordinance obtain equal protection, the level of which is similar to the old Part B standard of registration. Trademark applications in process on the commencement date of the new Ordinance continued to be examined by the Registrar of Trade Marks as applications filed under the old Ordinance, unless the applicant applied to convert the application to be examined in accordance
with the new law. The deadline for conversion was in October 2003. Applications filed under the old law, and not converted, continue to be examined in accordance with the old law. Under the new Ordinance, a trademark is registrable if it falls within the definition of a "trademark," mentioned above. Compared with the old law, this definition has been widened to include sounds and smells, designs, personal names, letters, characters, numerals, figurative elements, colors, the shape of goods or their packaging and any combination of such signs. There are two general grounds for refusing registration under the new law: absolute grounds and relative grounds. Absolute Grounds: Absolute grounds relate to whether the mark meets threshold registrability criteria. Relative Grounds: Relative grounds relate to the existence of other potentially conflicting rights of other parties.
What Cannot Be Registered?
Marks which cannot be registered include:
(1) marks which do not meet the definition of "trademark," i.e., marks which are not capable of distinguishing the applicant's goods or services;
(2) marks which are devoid of distinctive character, e.g., generic, descriptive or laudatory words and names;
(3) marks which consist exclusively of signs which designate the characteristics of the goods or services applied for, e.g., descriptive marks and geographical names; and
(4) marks consisting solely of generic signs., The above grounds can be overcome if the applicant can show that the mark has acquired distinctiveness through use. Evidence of acquired distinctiveness will not aid in overcoming the following grounds: (1) marks exclusively consisting of a shape resulting from the nature of the goods;
(2) marks exclusively consisting of a shape which is necessary for the purpose of obtaining a technical result; and
(3) marks exclusively consisting of a shape which gives substantialvalue to the goods. If the mark consists of one of these shapes as well as other characteristics,
then it possible that the objection may be overcome. Marks which will be refused registration include those which are contrary to public morals, likely to deceive the public, marks which resemble specially protected national and regional emblems, marks which have been applied for in bad faith, and marks the use of which
are prohibited in Hong Kong by virtue of any law. The provisions regarding absolute grounds continue to state that the refusal to register a mark can apply to some or all of the goods or services for which the mark is sought. Therefore, a mark may be refused in one class, but accepted for registration in others.
Relative grounds for refusal relate to prior rights of third parties that may bar registration. A mark will be refused for registration if: (1) it is identical to an earlier trademark for identical or similar goodslservices;
(2) it is identical to an earlier trademark for similar goods services and the use of it would cause confusion; or
(3) it is similar to an earlier trade mark for identical or similar goodslservices and the use of it would cause confusion. An earlier trademark means one which has been registered or filed before the date of the applicant's mark. It also refers to marks that are entitled to protection as a "well known" mark under the Paris
Convention at the date of the applicant's application.
A mark will also be refused registration if it is identical or similar to an earlier trademark which is entitled to protection under the Paris Convention as a well known mark, and is proposed to be used for goodslservices which are neither identical nor similar to those covered by the earlier trademark, if use of the applicant's mark would "without due cause take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark." To prevent
the applicant's mark from being registered, the owner of such earlier trademark must lodge successful opposition proceedings establishing its prior rights.
Third parties with prior rights by virtue of the laws of passing off, copyright, or registered designs may also bring opposition proceedings against a later trademark application. Therefore, owners of unregistered trademarks may prevent an applicant's mark from being registered.
As is the case with absolute grounds, the applicant's mark may be refused for some goods/services, but accepted for registration in relation to other goods/services. In all of the above situations, the applicant's mark will be accepted for registration if the owner of the prior right consents, unless the Registrar strongly believes registration would result in confusion.
No registration will interfere with any bona fide use by a person of his own name or place of business or of that of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or the use by any person of any bona fide description of the character or quality of his services.
Registration will not entitle the owner of a trademark to interfere with or restrain the use by any person of a similar trademark upon or in connection with goods or services, upon or in connection with which that person has, by himself or his predecessors in business, continually used the trademark from a date prior to the use or registration, whichever is the earlier, of the first-mentioned trademark by the owner or his predecessors in business, or to object (on such use being
proved) to that person's being put upon the Register for the similar trademark in respect of those goods or services.
The documents required for applications include:
(1) authorization of an agent (not normally required for registration, but may be requested where there is a change of agent
during the prosecution of an application); and
(2) two representations of the mark.
Convention: Application must include the name of country and date of first application made in a Convention country; a copy of the basic application as filed with its English translation together with the translator's declaration must be furnished before leave to advertise has been issued. (Certified copy of priority application may be requested at a later date).
Note: The full particulars of the applicant should be given, i.e., (1) name, full address (post office box address alone is not acceptable), in the case of a body corporate, the state or country in which it is incorporated, and in the case of a partnership, full names of all partners are required; (2) trade or business description, e.g., "manufacturers and/or merchants"; "importers and/or exporters."
Evaluation & Review
Each application is examined and a search made to ascertain whether the mark is registrable or whether it is identical with or confusingly similar to a pending application or trademark already on the Register for the same description of goods or services.
The Registrar considers each application, which must have the capacity to distinguish goods or services and be represented graphically. The Registrar may refuse the application or may accept it subject to conditions, amendments, modifications, or limitations. When an application has been accepted and advertised and the time for opposition has expired, or, having been opposed, the opposition has been decided in favor of the applicant, the Registrar will register the trademark and issue a certificate of registration. In the case of honest concurrent use, or other special circumstances which in the opinion of the court or Registrar make it proper to do so, the court or Registrar may permit the registration of trademarks that are identical or that nearly resemble each other in respect of the same
goods or description of goods by more than one owner, subject to any conditions and limitations the court or Registrar, as the case may be, thinks proper to impose.
Trademarks are registered for a period of 10 years, counting from the date of application, with privilege of renewal for periods of 10 years. Renewals may be sought within six months before the date of expiry. The Registrar may remove a mark from the Register after the expiration of the mark, subject to right of owner to restoration.
Registration may be cancelled where there was no bona fide use or intent to use the mark for a continuous period of three years. Permitted use by a registered user is deemed use by the owner. The application in Hong Kong of a trademark to goods to be exported from Hong Kong and any other act done in Hong Kong in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Hong Kong would constitute use of a trademark therein, shall be deemed to constitute use of the trademark in relation to those goods for any purpose for which such use is material under the trademark laws