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FAQ
> Trade Marks > Trade Marks
Ordinance (Cap. 559)
Trade
Marks Ordinance (Cap. 559)
Transition
from Trade Marks Ordinance (Cap. 43) to Trade Marks Ordinance (Cap. 559)
Application
for registration of a trade mark
Q:
How do I fill in the application forms (Form
T2)?
A:
Please read our "How
to apply to register a trade mark in the Hong Kong SAR"
before you fill in Form T2. The explanatory notes and sample
forms give you information on how to fill in the forms.
Q:
What are the fees under the Trade Marks Ordinance (Cap. 559)?
A:
Please refer to the Table of Trade
Marks Forms and Fees (Cap.559).
Q:
How do I classify my goods and services?
A:
Under the Trade Marks Ordinance (Cap.559), the 9th edition of the
Nice Classification applies. There are 45 classes of goods and services
in the 9th edition. 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.
Q:
Can I file an application directly with the Registry?
A:
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.
Q:
How can I pay the fee? Which account can I send the remittance?
A:
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.
Q:
Are there any special requirements in filling in the statement of specification of ¡§goods and/or services¡¨?
A:
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.
Q:
Do I need to file any documents to prove the applicant¡¦s identity when submitting the application?
A:
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.
Q:
If I cannot provide the address for service in Hong Kong, China, can I collect the letters from the Registry?
A:
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.
Q:
How long will the whole trademark application process take?
A:
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.
Q:
Is it necessary to file an individual trademark application form for each item of goods and/or services?
A:
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).
Certification,
Collective and Defensive trade marks
Q.
What is a 'certification mark'?
A.
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.
Q.
What is a 'collective mark'?
A.
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
the association.
Q.
What is a 'defensive trade mark'?
A.
Defensive registration is available to protect marks that have become
exceptionally well-known in Hong Kong.
Colour
marks
Q:
What is a colour claim?
A:
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.
Q:
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?
A
: 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
Marks".
Q:
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"?
A:
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, this is also acceptable.
Q:
If I claim colour, what should I do to show the colour(s) clearly in the representation of my mark?
A:
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.
Convention
priority
Q:
If I am entitled to claim Convention priority for an application
in Hong Kong, China, when should I do so?
A
: 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.
Q:
Do I need to file Convention priority documents ?
A:
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.
Q:
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?
A:
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.
Deficiencies
in application for registration
Q:
When will I know that my application for registration has been given
a filing date?
A:
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.
Q:
Will deficiencies in my application for registration affect my filing
date?
A:
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.
Q:
Can I file an application for registration without paying the application
fee?
A:
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.
Q:
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?
A:
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.
Q:
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?
A:
You can provide a statement of use of the mark by marking the appropriate
box in Part 06 of Form T2.
Q:
Can I file a specification for the whole class heading of Class
9 of the International Classification of Goods and Services?
A:
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:
Will the registry ask for a transliteration of a Japanese company's
name even if the company gives its English name? If the company
did not give a transliteration when it filed its application for
registration, is this a deficiency?
A:
As a Japanese company registers its name in Japanese characters
in the Register of Companies in Japan, we will continue our practice
of asking for a transliteration of the characters. An applicant
can provide a transliteration after filing an application for registration.
This will not affect the filing date of the application.
Q:
If an application is filed in the wrong name, will this affect the
filing date?
A:
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.
Q:
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.
Q:
If I have not remedied deficiencies in my application within the
two-month period, can my application proceed?
A:
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 cannot proceed.
Q:
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?
A:
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
deficiencies.
Dividing
applications
Q:
At what stage can I divide my application for registration?
A:
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.
Evidence
of distinctiveness
Q:
What is evidence of distinctiveness?
A:
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
declaration explaining:
- what
the mark is
- how
it is used
- that
it is used by you, or by another person under licence from you
- how
long you have used it and in what circumstances
- how
it has become distinctive, in other words, that customers recognise
the goods or services sold under the mark as your goods or services.
If
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.
Q:
Is there any guideline on the period of use required to establish
the factual distinctiveness of a trade mark?
A:
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.
Examination
Q:
How does the Registry examine conflicting applications for registration?
A:
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.
Q:
Will the Registry inform me that an earlier application for registration
provisionally cited against my application has lapsed?
A:
Both you and the Registry should keep track of the status of the
conflicting mark.
Q:
Are there co-pending citations?
A:
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
the Ordinance).
Q:
Can a disclaimer assist the registrability of my mark?
A:
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 Mraks Ordinance
(Cap.559) confines the Registry's objections to limited grounds
that do away with the need for disclaimers.
Q:
Can I offer a disclaimer after filing my application for registration?
A:
Yes, you can, at any time before registration, amend your application
to add a disclaimer by filing Form T5A.
Examination
process
Q:
What happens to my application for registration after I file it?
A:
There are four stages in the process of examining an application
for registration:
- deficiency
checking
- examination
against the requirements of the Trade Marks Ordinance
- acceptance
and publication for opposition
- registration
and issue of certificate of registration.
We
explain, below, what is involved at each stage but if your application
is complete and correct on filing and meets the requirements for
registration, the first that you will hear from us is when you receive
a notice telling you that your application is accepted and is about
to be published in our Hong Kong
Intellectual Property Journal for opposition.
Q:
If my application for registration is accepted, is my mark automatically
registered?
A:
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.
Q:
What is deficiency checking of my application for registration?
A:
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.
Q:
What is involved in examining my application for registration?
A:
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) .
Q:
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:
- filing
an amendment to your application to cut out goods and services
affected by the objection
- filing
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,
above)
- filing
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
- filing
a consent from the owner of an earlier registered mark or application
that prevents your mark from being registered
- filing
written representations to establish that your application meets
the requirements for registration.
You
have six months to take action in reply to the opinion.
Q:
If I file written representations in reply to an opinion under rule
13(1), what is the next step?
A:
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.
Merging
applications for registration
Q:
What conditions apply to merging applications?
A:
Trade Marks Rule 28(2) provides for merger of separate applications
into a single application if the applications:
- are
in respect of the same trade mark;
- claim
the same protection under the Trade Marks Ordinance;
- bear
the same filing date; and
- are,
at the time of the request, in the name of the same person.
Q:
Can I merge three separate applications for registration of the
same mark if only two of the applications have the same filing date?
A:
You can only merge the two applications that have the same filing
date.
Q:
Can I merge several converted applications into one multi-class
application?
A:
If the applications are for the same mark in different classes,
you can file Form T4 to merge the converted applications.
Merging
registrations
Q:
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?
A:
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.
Q:
If I have several registrations that have different disclaimer conditions,
can I merge them into one registration?
A:
No, you cannot merge the registrations because they do not provide
the same protection under the Ordinance.
Q:
Will a merged registration have a new number, or a new certificate
of registration?
A:
A merged registration will have a new number but not a new certificate
of registration.
Numbering
of Division, Merger and Partial Assignment
Q:
Will a new number be assigned to an application or registration
after they have been merged, divided or partially assigned?
A:
New number will be assigned. This diagram
illustrates the numbering for a Trade Mark which has undergone the
following:
Division
->Partial Assignment ->Division ->Merging
Opposition
Q:
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?
A:
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
(Form
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.
Protecting
trade marks in Hong Kong and Mainland China
Q:
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: http://www.customs.gov.hk/pdf/pdf_major/IPR_protection.pdf
- 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.hkdnr.net.hk/hkdnr/index.jsp ) 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
The name of a limited company will also need a registration at Companies Registry:
http://www.info.gov.hk/cr
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?
A:
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.
Registered
trade marks - alteration
Q:
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?
A:
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.
Q:
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
owner?
A:
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.
If
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.
Registered trade marks - use of ®
Q:
Can I use the ® with my registered trademark?
A:
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 hearing
Q: What is a registrability hearing?
A:
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:
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?
A:
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?
A:
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.
Renewing
and restoring registrations
Q:
When should I renew my trade mark?
A:
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
search (http://ipsearch.ipd.gov.hk).
A
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.
The
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).
Q:
Can I restore my trade mark registration, if it has expired and
has been removed from the register?
A:
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
be extended.
Q:
If my registration in class 42 is reclassified into more than one
class of services, what is the renewal fee?
A:
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.
Q:
If I renew my trade mark registration, will it be given a new number?
A:
No, your registration will keep the same number.
Revocation
of registration for non-use
Q:
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?
A:
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).
Shape
marks
Q:
How do I apply for registration of a three-dimensional shape mark?
A:
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'.
Smell
marks
Q:
I can register a smell mark if it is distinctive. What does this
mean?
A:
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?
Q:
Can I describe my smell mark by a chemical formula?
A:
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.
Time
limits - examination and opposition
Q:
The Trade Marks Ordinance (Cap.559) sets time limits for examination
and opposition. How do they apply?
A:
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.
Applications
for registration filed before the commencement date of Trade Marks
Ordinance (applications
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).
Applications
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
(Cap.
43).
See
the table on "Transitional
arrangements - Opposition to trade mark applications
under Trade Marks Ordinance (Cap. 43) and Trade Marks Ordinance (Cap. 559)
".
Q:
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?
A:
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.
If
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.
If
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.
A
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
time. </ | 
