Q. If my address for service in Hong Kong, China has changed, what should I do to update the Registry's records?
An address for service in Hong Kong, China must be filed with an application for registration of a trade mark.
The Trade Marks Registry will send document or other things in relation to that application to the address for service provided.
If there has been a change in your address for service, you have to file
Form T5 or inform us in writing to update the Registry's records.
If we have not been informed of the change, the document or other things sent by the Registry to your address for service which is no longer valid may be undelivered
and we are unable to process your application further.
Amendment of mark
Q. Can I amend the representation of the mark applied-for?
A: You can file a request on Form T5B to amend the representation of the mark applied-for by adding to it a representation of a registered trade mark only if all the conditions set out in section 46(2) of the Trade Marks Ordinance are met. Please ensure that the representation of the applied-for mark to be included in the amended mark in Form T5B is the same as the one in the original application. Any discrepancies (including colour) in the representation of the applied-for marks will render the Form T5B unacceptable and you will need to file a fresh Form T5B.
What action can I take if I am not satisfied with your decision?
You may lodge an appeal against our decision to the High Court. Generally, the appeal must be brought within 28 days after the date of our decision. For further details, please refer to the Trademarks Registry Work Manual - “Appeals against decisions of the Registrar”.
for registration of a trade mark
How do I fill in the application forms Form
A: Under the Trade Marks Ordinance (Cap.559), goods and services shall be classified for the purposes of the registration of trade marks according to the Nice Classification. There are 45 classes of goods and services in the current edition of the Nice Classification. For details, please refer to WIPO's web site on the Nice Classification at http://www.wipo.int/classifications/en/.
Q: If I file an application for registration in Chinese, can the certificate of registration be in English?
A: If you file an application in Chinese, the certificate of registration will be in Chinese. Similarly if you file the application in English, the certificate of registration will be in English.
Q: Can I write to you in Chinese if I have filed an application for registration in English?
A: Yes, if you have filed an application in English, you can write to us in Chinese, and we will respond to you in Chinese. But if the application is accepted, the particulars of its publication, the certificate of registration, and any opposition proceedings will be in English because you cannot change the details of your application for registration.
Can I file an application directly with the Registry?
If you wish to register your trademark in Hong Kong, you can file the application directly with the Registry. If you cannot come to Hong Kong to file the trademark application, you can send the application with the application fee to us by post, or by courier.
How can I pay the fee? Which account can I send the remittance?
You can pay by bank drafts which should be in Hong Kong Dollars, made payable to the Government of the Hong Kong Special Administrative Region and crossed. We do not accept telegraphic transfer (T/T) and foreign currency cheques.
Are there any special requirements in filling in the statement of specification of “goods and/or services”?
Your application must include a list of all goods and services which you want to register your trademark with. You must list the goods and services in the class(es) they fall in. You should also state the number of class(es) they fall in. The goods and services should be classified according to the International Classification of Goods and Services (NICE Classification). Please visit http://www.ipd.gov.hk/eng/intellectual_property/trademarks/how_to_classify.htm to find out the class(es) that your goods and services falling into.
Do I need to file any documents to prove the applicant’s identity when submitting the application?
It is generally not required. However, if we think that it is necessary when we examine the application, we will notify the applicant to file relevant documents.
If I cannot provide the address for service in Hong Kong, China, can I collect the letters from the Registry?
According to the Trade Marks Rules, you must provide an address for service in Hong Kong. The address for service should be a valid residential address or business address. P.O. box address, “care of” address or email address is not acceptable.
How long will the whole trademark application process take?
Upon receipt of the application, the examiner will process the application according to the Trade Marks Ordinance and Trade Marks Rules. If there is no deficiencies and no opposition, the whole process (from receipt of application to the application being approved) will take as short as six months.
Is it necessary to file an individual trademark application form for each item of goods and/or services?
No. Each trademark application may include more than one item of goods and/or services. The application fee is HK$1,300 plus a fee of HK$650 per additional class (if any).
Collective and Defensive trade marks
What is a 'certification mark'?
Certification marks are registered by non-trading organisations
certifying the quality of goods or services, for example the Hong
Kong Tourism Board's 'Q Quality Tourism Services' mark.
What is a 'collective mark'?
Collective marks indicate goods or services provided by members
of a trade association. They are registered by trade associations
with regulations that control the use of the mark by members of
What is a 'defensive trade mark'?
Defensive registration is available to protect marks that have become
exceptionally well-known in Hong Kong.
A colour claim makes it clear what rights are claimed when you apply
for registration of a mark. Your trade mark registration will protect
you against infringing use by an identical or similar mark. In certain
circumstances, a colour claim may help you to show that an infringing
mark is similar and that your mark has been infringed.
If I have filed an application for registration without making a
colour claim or filing Form T2A, can I subsequently claim colour
as an element of the trade mark?
: You should claim colour at the time you file your application.
After filing an application, applicant can only add a colour claim
under limited circumstances. For details, please refer to the Trade
Marks Registry Work Manual - "Colour
If I claim colour, do I need to state the particular colour in the
claim? Can I simply put "the colour as shown in the representation"?
You should state the particular colour claimed, for example "the applicant claims the colours red and green as elements of the trade mark". If you wish to state the colour by reference to Pantone numbers or other colour identification schemes for example CYMK, this is also acceptable. Please ensure that the colour identification code(s) stated in the statement of colour claim correspond(s) with the colour(s) shown in the representation of the mark applied-for.
If I claim colour, what should I do to show the colour(s) clearly in the representation of my mark?
If you make a colour claim in your application, you need to state the particular
colour(s) in the application and show the colour(s) in the representation of your mark. Before you file, make sure that the representation is of a sufficiently high resolution that it clearly shows the colour(s). In filing electronically, open your JPEG graphic file to check that the colour(s) in the mark are clearly shown before you send your application to us. You may need to digitally enhance pale or metallic colour(s). Filing a clear representation is essential to protect your rights.
If I am entitled to claim Convention priority for an application
in Hong Kong, China, when should I do so?
: Although you can file an application for registration claiming
priority at any time during the six-month priority period, you should
file your application for registration as early as possible and
you must make the claim to priority at the time you file. Once you
file your application for registration, we will "provisionally"
cite your mark against any earlier filed competing application that
has not already been published: see Examination,
below. If an earlier filed competing application has already been
published in the Hong Kong Intellectual Property Journal and becomes
registered, it will not prevent your application which has priority
from being registered because it is not an "earlier trade mark"
to be cited against your application. If the earlier filed application
is still within the opposition period, that is within three months
after publication or extension of that period, you can exercise
your priority right by filing a notice of opposition to the application.
Do I need to file Convention priority documents ?
You do not need to file Convention documents to support a claim
to priority unless we ask you to do so. We will usually require
Convention documents only where there is a potential conflict between
your mark and an earlier filed application.
If I have claimed priority under section 41 of the Trade Marks Ordinance
but deficiencies in my application result in my filing date being
deferred beyond the six-month priority period, will I lose my priority?
If the filing date given to your application is six months after
the filing of your Convention priority application, you will lose
your claim to priority.
If convention priority is based on my application filed in European Community, what should be filled in the field
“Country/Territory/Area”of Part 04 of Form T2 ?
There has been a change of name of the membership of “European Community” with the World Trade Organization to “European Union”. You should fill in the name “European Union” in the field “Country/Territory/Area”, Part 04 of Form T2 (paper form). For electronic Trade Mark Form T2, please continue to choose “European Trade Mark Office”
in the field “country, territory, area” of Box 04. The name “European Union” will be displayed subsequently in the online trademark records.
The arrangement of displaying the name “European Union” in the online trademark records as the country, territory, area of priority application will be applied to trademark applications with priority claim from OHIM (Office for Harmonization in the Internal Market)
or from the former name European Community (CTM or Community Trade Mark) indicated in Form T2.
If I am entitled to claim priority under section 41 of the Trade Marks Ordinance but the first application was filed in the Paris Convention country or WTO member country, territory or area on or before 31 December 2011 with the goods or services classified in accordance with the ninth edition of the Nice Classification and the class number concerned has been changed under the tenth edition of the Nice Classification, what shall I do?
If you file the corresponding application for registration in Hong Kong on or after 1 January, 2012, the goods or services concerned need to be classified in accordance with the tenth edition of the Nice Classification. For example, if the first Paris Convention application or WTO application contains the goods “swimming jackets” which falls under Class 9 under the ninth edition of the Nice Classification, when you file the corresponding application for registration in Hong Kong on or after 1 January 2012, you need to put the goods “swimming jackets” under Class 28 in accordance with the tenth edition of the Nice Classification. The difference in the class numbers of certain goods and services due to the use of the tenth edition of the Nice Classification does not affect an applicant’s right of priority if the requirements for claim to priority under section 41 of the Trade Marks Ordinance and rule 9(1) of the Trade Marks Rules have been met.
When will I know that my application for registration has been given
a filing date?
We aim to check for deficiencies shortly after receiving the application.
If your application satisfies the filing date requirements, we will
inform you of the filing date given to your application. If there
are deficiencies in your application, we will send you a notice
to remedy them.
Will deficiencies in my application for registration affect my filing
You must remedy all deficiencies in your application for registration
within two months after the date of the Registry's notice to remedy
them. The two months cannot be extended. We will accord your application
a filing date if it includes a request for registration of the trade
mark, the applicant's name and address, a statement of the goods
or services, and a representation of the trade mark. If your application
does not include this information, we will not be able to accord
a filing date until it does. If other information in the application
is deficient, it will not affect your filing date provided you remedy
the deficiencies within the two months.
Can I file an application for registration without paying the application
Filing an application without the specified fee is a deficiency
under rule 11(1)(b). You have to remedy the deficiency within two
months after the date of the Registry's notice.
If my trade mark consists of a Japanese character but I have not
completed Part 03 of Form T2, is this a deficiency? If it is, will
it affect the filing date of my application?
You need to fill in Part 03 (see rule 120). If you fail to do so
when you file your application, we will ask you to provide the information
later, but this will not affect the filing date of your application.
Under section 38(3) of the Trade Marks Ordinance, an applicant for
registration has to provide a statement of use of the mark. How
can I meet this requirement?
You can confirm the statement of use of the mark in Part 07 of paper Form T2 or Part 10 of electronic Form T2.
Can I file a specification for the whole class heading of Class
9 of the International Classification of Goods and Services?
Yes, you can include the whole class heading in your specification,
if you have used or intend to use or license the trade mark for
the range of goods in class 9.
Q: Can I provide the applicant’s name in both Chinese and English in Form T2?
A: If the name of the applicant in both Chinese and English is recorded in the company register or business register or the equivalent (“official register”) in the place of incorporation of the applicant, the applicant is free to provide such name in both Chinese and English in Form T2 provided that such name accords with the record of the official register.
Will the registry ask for a transliteration of a Japanese or Korean company's name if the company has provided its English name?
As a Japanese or Korean company registers its name in Japanese or Korean characters in the Register of Companies in Japan or Korea respectively, a Japanese or Korean corporate applicant may wish to provide a transliteration of its name in Form T2 when filing an application for registration of a trade mark. If a Japanese or Korean corporate applicant has only provided its English name in Form T2, we will not ask the applicant to provide such a transliteration.
If an application is filed in the wrong name, will this affect the
An obvious mistake in an applicant's name, for example "ABC
Co. Linited" instead of "ABC Co. Limited", can be
corrected and will not affect the filing date of the application.
But if you give the name of the wrong entity, for example "ABC
(BVI) Ltd." instead of "ABC (Hong Kong) Limited",
you cannot amend the application because it would involve a change
from one legal entity to another. You will need to file a fresh
application for registration in the name of the correct entity.
I understand that an application for registration should be filed
in the name of a legal entity capable of owning property. Do I have
to provide a description of the applicant, such as 'a limited company',
to the registry for verification?
A: You do not have to file a description of the applicant. However,
you should check that the applicant is a legal entity capable of
owning property before you file an application for registration.
If I have not remedied deficiencies in my application within the
two-month period, can my application proceed?
If you have not remedied deficiencies in your application within the two-month period,
your application fails and we will send you a notice informing you that your application
is treated as abandoned.
If I do not clearly describe my goods and services in response to
a notice to remedy the deficiency within two months, will my application
for registration fail?
If you do not clearly describe goods and services in your specification
within two months of a deficiency notice being sent to you, your
application for registration will be treated as abandoned for those
goods or services that you have not clearly described. However,
your application for registration will be able to proceed with the
remaining goods and services, provided you have remedied any other
Q: Is the two-month time limit set out in the deficiency notice extendable?
A: The time limit is non-extendable. Hence, you may wish to file submissions and/or form(s) to remedy the deficiencies not later than 7 working days before the deadline set out in the deficiency notice so that we can have sufficient time to consider them and notify you before the deadline if the submissions and/or form(s) fail to remedy the deficiencies.
What are the common deficiencies and irregularities of trade mark applications?
At what stage can I divide my application for registration?
You can file a request to divide your application at any time after
it has been given a filing date and before it is registered.
Q: Can I divide my application for registration of a series of trade marks to overcome an objection that the marks are not a series?
A: Yes, you can divide your application by filing Forms T3 and T3S. Please ensure that the representation of the applied-for mark(s) in the Form T3S is/are the same as the one(s) in the original application. Any discrepancies (including colour) in the representation of the applied-for marks will render the Form T3S unacceptable and you will need to file a fresh Form T3S.
A trade mark that is refused registration because it is not distinctive
can still be registered, if you can show that before the date of
application for registration, it has in fact become distinctive
as a result of the use made of it. To show that the mark has in
fact become distinctive you will need to file evidence in a statutory
the mark is
it is used
it is used by you, or by another person under licence from you
long you have used it and in what circumstances
it has become distinctive, in other words, that customers recognise
the goods or services sold under the mark as your goods or services.
you use a standard form of statutory declaration (an example can
be found on the last few pages of the Chapter on "Absolute
grounds for refusal" in the Work Manual), you should expand
it by adding the necessary details to explain the points above.
The facts you refer to must relate to the period before the date
of application for registration to show that the mark has become
distinctive before that date. You should support your statements
in the declaration by including relevant evidence such as copies
or photographs of labels, packaging, brochures or advertisements
showing the mark and examples of invoices or customer lists.
If you submit copies of any copyright-protected materials to the Trade Marks Registry at any time for processing your application, please ensure the necessary consent has been obtained: you should only submit copies of copyright-protected materials where the relevant copyright owner(s) has/have consented to the use of such copies by the Trade Marks Registry for the purpose of the administration of the Trade Marks Ordinance and its subsidiary legislation.
Is there any guideline on the period of use required to establish
the factual distinctiveness of a trade mark?
The period of use is only one of the factors taken into account
in considering whether a mark has in fact acquired a distinctive
character. A long period of use does not necessarily mean a mark
has acquired distinctive character. We will also take into factors
such as the manner of use - whether it has been used as a trade
mark, the volume of sales of the relevant goods in Hong Kong, China,
the extent to which the public has been educated through advertising
to recognize the mark, etc.
How does the Registry examine conflicting applications for registration?
A Registry objection to an application for registration, on the
basis that there is an earlier application for an identical or similar
mark, is 'provisional' until the earlier application becomes registered:
see the definition of 'earlier trade mark' in section 5 of the Trade
Marks Ordinance. When the earlier application becomes registered,
we will formally raise the objection to your application in an examination
opinion under Trade Marks Rule 13(1). At that stage, you will have
to comply with the time limits under Trade Marks Rule 13 in resolving
this ground of objection. While the objection is 'provisional',
that is before the earlier application is registered and the objection
to your application is formally raised, you can still take action
to resolve it, for example by cutting out from your specification
goods and services covered by the earlier application.
Will the Registry inform me that an earlier application for registration
provisionally cited against my application has lapsed?
Both you and the Registry should keep track of the status of the
Are there co-pending citations?
The Registry does not raise co-pending citations. Applications filed
on the same date are not cited against each other (see section 12
and definition of "earlier trade mark" in section 5 of
Can a disclaimer assist the registrability of my mark?
Disclaimers to the exclusive use of specified elements of a mark
are voluntary and can be made by an applicant for registration at
any stage, usually in obtaining consent to registration from earlier
trade mark owners. The Registry will not take disclaimers into account
in assessing whether a mark can be registered. The Trade Marks Ordinance
(Cap.559) confines the Registry's objections to limited grounds
that do away with the need for disclaimers.
Can I offer a disclaimer after filing my application for registration?
Yes, you can, at any time before registration, amend your application
to add a disclaimer by filing Form T5A.
What happens to my application for registration after I file it?
There are four stages in the process of examining an application
against the requirements of the Trade Marks Ordinance
and publication for opposition
and issue of certificate of registration.
explain, below, what is involved at each stage but if your application
is complete and correct on filing and meets the requirements for
registration, we will issue a notice to tell you that your application is accepted and is about
to be published in our Hong Kong
Intellectual Property Journal for opposition.
If my application for registration is accepted, is my mark automatically
If your application meets the requirements for registration, we
will accept it and publish it for the purposes of opposition (see
Opposition, below). Assuming no one opposes your application, we
will register your mark and send you a certificate of registration.
What is deficiency checking of my application for registration?
Shortly after you file an application for registration, we will
check that the information about your name, address, the representation
of the mark, the goods and services and other information is complete
and correct. If the application is not complete and correct, we
will send you a deficiency notice so that you can correct the deficiency
within two months. The deficiency notice will tell you whether the
deficiency affects the filling date of your application and which
Registry form you should use to file your correction.
What is involved in examining my application for registration?
We examine your application to decide if it meets the requirements
of registration under the Trade Marks Ordinance. To be registrable,
your mark must have a distinctive character in respect of your goods
and services. It cannot be a mark that consumers would expect other
traders would use generally to describe or promote the goods and
services. Additionally, to be registered, your mark cannot be similar
to an earlier registered mark or application, for similar goods
or services. We search our electronic register of registered marks
and applications (http://ipsearch.ipd.gov.hk)
to determine whether there are marks that prevent your mark from
being registered. If your mark does not meet the requirements for
registration, we will send you an opinion under rule 13(1) of the
Trade Marks Rules explaining the objections and giving you six months
to resolve them.
Q: Are there other requirements for registration?
A: Yes, there are other requirements for registration under the Trade Marks Ordinance. For example, your mark cannot be registered if it includes flags or emblems protected by international convention (to search, see the WIPO link at 'online services') or the national or regional flag or emblem (search for 'national flag' and 'regional flag' at the Bilingual Laws Information System (http://www.legislation.gov.hk/eng/home.htm) .
What steps can I take if my application for registration does not
meet the requirements for registration?
A: If we send you an opinion under rule 13(1) of the Trade Marks Rules raising objections to your mark,
we will explain in the opinion what steps you should consider taking to meet the requirements for registration.
Depending on the objection, the options could include:
an amendment to your application to cut out goods and services
affected by the objection
evidence that your mark has in fact acquired a distinctive character
as a result of your use of it for the goods and services (see
Evidence of distinctiveness,
an amendment to the representation of your mark, to add an earlier
mark for identical or similar goods or services, assuming that
you have an earlier mark that you wish to add to the representation
a consent from the owner of an earlier registered mark or application
that prevents your mark from being registered
written representations to establish that your application meets
the requirements for registration.
You have six months to reply to the opinion.
If you do not respond to the letter within the specified six-month period,
we will send you a notice informing you that your application has been refused.
If I file written representations in reply to an opinion under rule
13(1), what is the next step?
We will consider the points you make in the written representations,
to reassess whether the application meets the requirements for registration.
If it does not meet the requirements, we will send you an opinion
under rule 13(4) of the Trade Marks Rules, explaining the objections
and giving you three months to resolve them by taking any of the
steps explained under What steps can I take
if my application for registration does not meet the requirements
for registration?, above. Alternatively, you can file
a request for a hearing before the three-month deadline expires.
Can I merge two trade mark registrations (which are identical marks
and subject to same disclaimer conditions) - one expiring on 2 February
2014 (date of registration being 2 February 1993) and the other
expiring on 18 May 2003 (date of registration being 18 May 1996)
- into a single 'multi-class' registration and if so, what is the
date of registration of my mark and when do I need to renew it?
Yes. If you merge them, the date of registration will be 18 May
1996 and the date of expiry of the merged registration will be 18
May 2003. The merged registration is due for renewal on 18 May 2003.
If I have several registrations that have different disclaimer conditions,
can I merge them into one registration?
No, you cannot merge the registrations because they do not provide
the same protection under the Ordinance.
Will a merged registration have a new number, or a new certificate
A merged registration will have a new number but not a new certificate
If someone has made an application to register a trade mark that
is similar to my mark and for similar goods or services, how can
I oppose the application for registration?
If a trade mark is accepted for registration by the Trade Marks
Registry, it will be published in the Hong
Kong Intellectual Property Journal. If you wish to oppose the
application for registration, you have to file an opposition notice
T6) within 3 months beginning on the publication date. The opposition
notice should state the grounds on which you oppose. The grounds
are stated in the Trade Marks Ordinance . A usual ground of opposition
is that the mark applied for is confusingly similar to an earlier
mark for similar goods or services but you will need to consider,
with the advice of a solicitor or trademark agent, the grounds relevant
to your opposition. Within time limits, the applicant will file
a counter-statement and you and the applicant will have an opportunity,
within time limits, to file evidence in support of the opposition
and application. After we have received all the evidence, a hearing
will take place. After the hearing, the hearing officer will make
a decision and the successful party in opposition proceedings will
usually be entitled to an award of costs.
Q: What happens if my application for registration is opposed?
A: If someone opposes your application, you will need to consider whether to withdraw your application or to continue in the opposition proceedings. Advice from a solicitor or trade mark agent will enable you to assess your position and the costs involved in withdrawing or continuing.
If you withdraw your application after the notice of opposition is filed, you may have to pay the other party’s costs. However, if you can show that proceedings were launched against you without giving you prior notice or warning, costs may not be awarded against you.
If you defend your application against the opposition and eventually lose in the opposition proceedings, you may be ordered to bear the other party’s costs.
For further details on the award and taxation of costs, please refer to the Trademarks Registry Work Manual – “Taxation of costs”
trade marks in Hong Kong and Mainland China
What strategies should I adopt to protect my trade mark in Hong
Kong, China and separately, in Mainland China?
A: Some strategies that you should consider:
Adopting a mark that is clearly different from and that will not infringe other owners' marks. Infringement of a well-known trademark extends to use of the mark or a similar mark for dissimilar goods, so you may be liable for infringement even if your product is very different.
Registering your trade mark here in Hong Kong and in the Mainland where there is a separate system of registration and protection. Registering your mark in the Mainland does not automatically give you protection in Hong Kong.
Registering a mark in Chinese characters (or a translation or transliteration) for use locally to complement your mark and to give it broader appeal and protection.
Registering your mark as soon as possible to ensure it is available for your business use and you can take immediate action against infringement.
Putting in place a structured licensing system, if you intend to license the use of your mark.
Continuously monitoring the on-line Hong Kong Intellectual Property Journal （www.ipd.gov.hk/eng/ip_journal.htm） for applications to register marks likely to cause confusion with your mark and taking action to oppose them.
Taking action under the Trade Marks Ordinance, if infringing activity is taking place in Hong Kong.
Taking action for passing off against damage to your business goodwill and reputation in Hong Kong for your goods or services.
Reporting the infringement immediately to Customs and Excise Department, Intellectual Property Investigation Bureau, if infringing activity is taking place in Hong Kong. You will need to provide Customs and Excise Department with evidence that you own the trade mark or copyright and proof of the alleged infringement:
Taking administrative or legal action under the law in Mainland China if the infringing activity is in the Mainland. If a Hong Kong company uses your trade mark in its name, as a front for infringing activities in the Mainland, you can take steps under Mainland law against the company's infringing activities.
Most importantly, taking specialist IP advice from an IP lawyer or agent on all aspects of your IP rights, including copyright, trade mark or registered design, which may protect your products in other ways.
Taking specialist advice on other business safeguards, including registering your trade mark, trade name and company name as domain names to protect them on the Internet. Hong Kong Domain Name Registration Company Limited (http://www.hkirc.hk) is a non-profit company that administers the registration of Internet domain names under “.hk” country-code top-level domain.
Q: How can I legally use a name for business in Hong Kong?
A: If you carry on business in Hong Kong through a company, partnership, as a sole trader, or under a business trading name, you must register the name at the Business Registration Office: http://www.ird.gov.hk
Registering a business or company name in Hong Kong does not give you the right to use the name for activities that infringe someone else's trade mark or pass off someone else's business goodwill and reputation.
Before you register a name or carry on business under it, you should search the trade marks register (http://ipsearch.ipd.gov.hk/trademark/jsp/index.html), the companies register (http://www.icris.cr.gov.hk/csci/), trade directories, telephone directory (business) yellow pages and the Internet, to check that your business activities will not infringe someone else's trade mark or pass off someone else's business goodwill and reputation.
You can also instruct a lawyer or agent specialising in intellectual property to make searches for you.
Q: Am I liable for infringement or passing off if I use someone else’s registered trade mark without authorisation?
A: You will infringe, if without authorization you use someone else's registered trade mark or a confusingly similar mark, for identical or similar goods and services. Even if your goods and services are different, you may be liable for infringement if your mark is similar to a well-known trade mark.
You will also be liable in a legal action in court for 'passing off', if you make deceptive use of someone else's trade mark, business or company name to mislead consumers and damage the business goodwill and reputation.
Q: Can I take action against a company using my trade mark in its name as a front for activities that infringe my mark?
Yes, the unauthorised use of another person's trade mark as part of a trade name or company name is trade mark infringement. You can take action against the infringement under Hong Kong law if the infringing activity takes place in Hong Kong, or under Mainland law if the infringing activity takes place in the Mainland.
Section 55 says that only the name and address of the owner can
be altered but rule 54 contemplates alteration to the mark itself.
What is the position?
If an owner's name or address appears in the trade mark itself,
for example in a label mark, the trade mark can be altered by a
request filed under rule 54.
The old Ordinance allowed a proprietor to alter his registered mark
if its identity would not be substantially affected. Why is this
now restricted to marks that contain the name and address of the
An owner does not need to alter his mark on the register to use
it in a slightly varied form. He can still proceed against infringers
and defend his registration against revocation for non-use, if he
uses his mark in a form that differs only in elements that do not
alter the distinctive character of the registered form. If an owner
wants to make a more than a minimal change to his mark, he can make
an application to register the varied mark.
the owner's name or address appears in the mark and the name or
address changes, it is recognised that the owner has a particular
interest in altering his mark on the register.
Yes, if you have registered the mark in Hong Kong, or elsewhere for your goods or services. If you have not registered your mark, it is an offence to use the ® and you may be liable on conviction to a fine.
Registrability hearings are formal proceedings presided by a Hearing Officer where an applicant or his agent makes formal oral submissions on his application for registration on the basis of trade mark law and facts.
Q: How do I know whether I should request for a registrability hearing?
A registrability hearing is not always necessary. After considering all evidence and submissions filed in relation to an application for registration, the Registry reaches a decision and writes to the applicant. An applicant who wishes to call for a hearing should consider whether there is any added value in orally presenting his case, as well as the costs involved (official fees for Form T12 and fees for his legal adviser, if any, to attend the hearing). If an applicant wishes to submit any evidence, he can do so whether or not a hearing is called for. Evidence must, however, be given by way of statutory declaration or affidavit in accordance with the Trade Marks Rules.
Q: Where an applicant calls for a registrability hearing, what happens after that?
The Registry will send a notice of hearing to the applicant, setting out the date, time and venue for the hearing. An applicant has 14 days from the date of the notice of hearing to file notice of his intention to appear at the hearing on Form T12 with the prescribed fee. The fee is non-refundable. A hearing officer will hear the case on the appointed date, and issue a decision.
Q: Will the decision of the hearing be made available to the public?
Where a Form T12 has been filed, in case the Registrar refuses the application, whether after an oral hearing or a hearing on the papers, the statement of reasons for decision issued will be uploaded onto our website.
You should renew your trade mark on or before its expiry date. You
can check the expiry date of your trade mark by using the on-line
mark registered under the Trade Marks Ordinance (Cap. 559) shall
be registered for a period of 10 years beginning on its date of
registration. For example, if the date of registration for your
mark is 10 September 2003, it shall be registered for an initial
period of 10 years until 9 September 2013. You should renew your
mark during the six-month period ending on the date of expiry, i.e.
latest by 9 September 2013.
registration of the mark may be renewed for further periods of 10
years. In the above example, if you renew your mark for a further
period, the next expiry date will be 9 September 2023 (assuming
all the above dates are business days).
Can I restore my trade mark registration, if it has expired and
has been removed from the register?
There is a deadline for restoring your registration. You must file
a request to restore the trade mark within six months after the
date the mark is removed (rule 35). The six-month period cannot
If my registration in class 42 is reclassified into more than one
class of services, what is the renewal fee?
The reclassified registration becomes a "multi-class"
registration. The fee for renewing the registration is HK$3000 for
the first class of goods or services in the specification, plus
HK$1500 for each additional class.
If I renew my trade mark registration, will it be given a new number?
No, your registration will keep the same number.
If I take proceedings to revoke a registration on the grounds of
non-use under section 52(2)(a) of the Trade Marks Ordinance (Cap.559),
from when do I count the three-year period of non-use?
Under section 52(8) of the Trade Marks Ordinance (Cap.559), the
three-year period can begin at any time on or after the actual date
on which particulars of the trade mark were entered in the register
under section 47(1).
How do I apply for registration of a three-dimensional shape mark?
In addition to Form T2, you need to fill in Form T2A. In Part 13, you need to include a statement claiming the shape as the trade mark, or (if your mark includes additional elements, such as words or colours) as an element of the trade mark and give a description of the mark. For example, "The mark consists of the three-dimensional shape of [ ] with the words [ ] and the device [ ] appearing on it. The applicant claims the shape of [ ] as an element of the mark."
If a single view cannot represent the shape accurately, you can show several views. You should mark each view, for example, 'front view' , 'side view' and 'top view'.
I can register a smell mark if it is distinctive. What does this
A smell is unlikely to be distinctive as a trade mark for goods
that are bought for their smell, or goods that have a smell, for
example, shampoo, cosmetics, tea, washing powder, etc. Additionally,
a smell will not be distinctive unless it is recognised by consumers
as a trade mark, and not a sales gimmick. In other words, does the
smell identify the product as the applicant's and no one else's
because, for example, of a prominent advertising campaign of the
smell as a trade mark for the product?
Can I describe my smell mark by a chemical formula?
A trade mark must be clearly depicted in the application in sufficient
detail to permit a proper examination to be made of the trade mark.
It must also be clear to members of the public looking at the electronic
register exactly what is being applied for. A chemical formula without
words describing what the smell is will not be readily intelligible
to persons searching the register of trade marks.
The Trade Marks Ordinance (Cap.559) sets time limits for examination
and opposition. How do they apply?
Applications for registration filed on or after the commencement
of the Trade Marks Ordinance (Cap.559) and applications converted
to the Trade Marks Ordinance (Cap.559) are subject to the time limits
of Trade Marks Ordinance (Cap.559) for examination and opposition.
for registration filed before the commencement date of Trade Marks
under Trade Marks Ordinance (Cap. 43)) and pending on the commencement
date are subject to the time limits for examination under the Trade Marks Ordinance (Cap. 43).
under Trade Marks Ordinance (Cap. 43)
advertised on or after the commencement date are
subject to time limits of Trade Marks Ordinance (Cap.559) for filing
notice of opposition and counter-statement (rule 121). Other time
limits for opposition proceedings are governed by the
Trade Marks Ordinance
Q: What can I do if I fail to comply with a time limit in proceedings before the Registrar of Trade Marks?
A: Please note that certain time limits under the Trade Marks Rules are not extendible (for example, rule 11(2) of that Rules). The Registrar of Trade Marks has no discretion to grant extension of time in these cases.
With some extendible time limits, an extension may only be granted if the request for extension of time is filed before the expiry of the relevant period (for example, rule 16(4) of the Trade Marks Rules). In these cases, the Registrar of Trade Marks has no power of granting the extension of time if the request is made after the relevant period has expired. For some time limits, they may be extended even if the request for extension of time is filed after the expiry of the relevant period (for example, rule 18 of the Trade Marks Rules).
I intend to file evidence of distinctiveness acquired by use of
my mark to establish that the requirements for registration are
met. Can I extend time for filing the evidence?
Under Trade Marks Rule 13(2), you have six months (say, until 12
December 2003) to file written representations, including a statutory
declaration evidencing distinctiveness acquired by use of your mark.
If you need to extend the time for filing written representations
including a statutory declaration, you must file an extension request
on or before 12 December 2003.
you file the statutory declaration on or before 12 December 2003,
or on or before the expiry of an extended period of three months
(assuming time is extended under rule 13(3)) and the Registrar after
considering the declaration, considers that the application does
not meet the statutory requirements for registration, an opinion
under rule 13(4) will issue: see the Trade Marks Registry Work Manual
on Examination of applications.
you are unable to file the statutory declaration on or before 12
December 2003 but you file written representations by that date,
an opinion under rule 13(4) will issue and you will have three months
to establish that the requirements for registration are met, by
filing the statutory declaration or taking other appropriate action.
Any extension request under rule 13(6) must be filed within the
three-month period, or within the period as extended.
request for extension of time under rule 13(3) should be supported
by full reasons and will be granted on the established principles
relevant to the exercise of the Registrar's discretion: see the
Trade Marks Registry Work Manual on Applications for extension of
request for extension of time under rule 13(6) is additionally subject
to the Registrar being satisfied that the enumerated grounds (a),
(b) or (c) are made out.
I have received an opinion under rule 13(4) from the Registrar.
If I need more than 3 months to overcome the objections raised,
what can I do?
Under rule 13(6) the Registrar may grant an extension of time up
to 3 months at a time for you to establish that the requirements
for registration are met. You should file the request for an extension
of time on Form T13 before the expiry of the 3-month period specified
in the opinion. You should note that the ground for the request
must fall within the following:
You need additional time to obtain a letter of consent;
need additional time to obtain an assignment;
invalidation or revocation proceedings are pending;
need additional time to prepare evidence of use; or
exceptional circumstances (with details provided in the request).
Is it possible to register a mark as a well-known trade mark? If
not, in what circumstances is a well-known mark recognised by the
A well-known trade mark can be protected by registration in the
same way as other marks. Additionally, a mark that is exceptionally
well-known can be registered as a defensive trade mark to protect
it against use for goods or services which would be likely to detract
from its distinctive character.
How do you know if a mark has been registered as a well-known mark,
as distinct from any other mark?
A well-known mark can be protected by registration in the same way
as other marks. There is no separate category of 'well-known mark
As well known marks do not have to be in use
in Hong Kong, China to qualify as well-known marks, presumably they
are immune from removal for non-use?
Certain protection (for example the right to oppose the registration
of an identical or similar mark for dissimilar goods/services) is
given to a well-known mark even if the owner does not carry on business
in Hong Kong, China or own any goodwill in a business in Hong Kong,
China. However, protection by registration (defensive registration
excepted) must be sustained by use.
What additional protection is there for well-known marks?
Infringement of a well-known mark extends to use for dissimilar
goods or services, if the use takes unfair advantage of or is detrimental
to the distinctive character or repute of the mark. The owner of
a well-known mark, even if he does not carry on business in Hong
Kong, is entitled to an injunction against an infringing use of
the mark for identical or similar goods which is likely to cause
confusion. Defensive trade mark protection (for exceptionally well-known
marks) is available.
from Trade Marks Ordinance (Cap. 43) to Trade Marks Ordinance (Cap. 559)
Must associated trade marks be assigned together under the
Trade Marks Ordinance (Cap. 559) ?
On the commencement of the new Ordinance, association of existing
registered marks ceased to have effect (see section 2(4) of Schedule
5). Trade marks can now be assigned independently even though they
were associated trade marks under the
Trade Marks Ordinance (Cap. 43)
I want to assign my trademarks. What do I need to do? What are the fees?
If you want to assign your trademarks to another legal entity, you can file Form T10 (HK$800) to request for recordal. The Form T10 and the prescribed fee can be downloaded from “Trademarks Forms and Fees (Cap. 559)” at http://www.ipd.gov.hk/eng/forms_fees/trademarks_559.htm . Please note that the Trade Marks Registry will only process the recordal of assignment but not the assignment documents.
under Trade Marks Ordinance (Cap. 43) to the Trade Marks Ordinance (Cap. 559)
If I have not converted my application
under Trade Marks Ordinance (Cap. 43) for registration,
do I need to advertise it in the government gazette and pay an advertisement
If you did not convert your application, you will need to advertise
it in the government gazette and pay an advertisement fee, approximately
HK$2,000, depending on the size of the advertisement. If you converted
your application to the
Trade Marks Ordinance (Cap. 559)
and it is accepted for registration,
we will advertise your application electronically in the Hong Kong
Intellectual Property Journal and you will not need to pay for the
If I did not convert my application
under Trade Marks Ordinance (Cap. 43), do I have to file old
Form TM-No. 9 for the issue of a certificate of registration?
Yes, you should file old Form TM-No. 9 with a fee of HK$2,000 to
request a certificate of registration. However, if you converted
your application to the
Trade Marks Ordinance (Cap. 559), you will not need to pay for a
If I have converted my application for registration to the
Trade Marks Ordinance (Cap. 559),
can I file evidence of distinctiveness acquired before the commencement
date of the
Trade Marks Ordinance (Cap. 559)
to support my application?
A converted application is treated as filed on the commencement
date of the
Trade Marks Ordinance (Cap. 559). You can file evidence of acquired distinctiveness
through use before the commencement date to support your converted
Trade Marks Ordinance (Cap. 43), I had two addresses for service, one for the
application for registration and one for the application to record
a registered user. Can I keep the two addresses for service?
Now that the
Trade Marks Ordinance (Cap. 559)
is in operation, you can retain, or file, only
one address for service for all proceedings relating to your application
for registration or registered mark.
Are trade mark applications still published in the Government Gazette
now that the
Trade Marks Ordinance (Cap. 559)
is in operation?
For the purpose of opposition, trade mark applications for registration
filed before the
Trade Marks Ordinance (Cap. 559)
came into force and not converted to the
Trade Marks Ordinance (Cap. 559)
will continue to be published in Supplement 6 of the Gazette
of the Government of the Hong Kong SAR.