Intellectual Property Department - Application process

Once we have received your application, our examiner will process it according to the stages set out in the diagram and described below. If there are no deficiencies in the application and no objections to the trade mark, then the whole application process can take as little as 6 months from receipt of application to registration.

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Application process

1Application

2Deficiencies Checking

Before beginning to examine your application, we will carry out a thorough check of the application form(s) and any attachments. This is to see if all the necessary parts of the form(s) have been filled in, if they are correct and if any required information is missing. If any required information is missing, we will ask you to provide the information to remedy the deficiencies within 2 months after the date of Registry's notice. Some amendments are very minor and will not affect the filing date of your application, e.g. the class number of the applied for goods. Others are more important and will therefore affect the filing date, e.g. you have not provided the representation of your trade mark. Also, major changes to the application will not be accepted, for example, changes to the representation of the trade mark.

If everything is in order, your application will proceed to the next stage (Search and examination).

3Search & Examination

After the deficiencies checking has been completed and all is found to be in order, we will conduct a search of the trade marks records to see if the same or similar trade mark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services.

We will also see if the trade mark satisfies the registration requirements laid down in the Trade Marks Ordinance. Some of these criteria are listed in the "Before you apply" section although this is not a comprehensive list.

The examiner will then issue an opinion in writing which will either lay out the grounds for objection to the mark or confirm the mark is acceptable for registration.

If the trade mark is acceptable for registration, please see Step 5.

4Objections & Hearing

Objections

If the requirements for registration are not met, we will object to the mark. You, the applicant, have 6 months in which to meet the requirements. A further 3 months extension may be granted.

How to overcome objections

We will indicate in the opinion why the mark does not meet the requirements for registration and may suggest ways of overcoming the objection if we think it is possible to do so.

If the objections remain

Even if you have tried to overcome the objections made in the initial opinion, we may still find that the requirements for registration have not been met and will issue a further opinion indicating these findings. The further opinion will be issued after expiry of the 6-month period specified in the initial opinion. At this stage, if you still wish to pursue your trade mark application, then you have 3 months after the date of the further opinion to satisfy the registration requirements or call for a hearing. You may ask for an extension of this period only in certain circumstances specified in the Trade Marks Rules e.g. where you need additional time to obtain the consent of the owner of an earlier trade mark.

Hearing

If you call for a hearing, all the evidence for and against the trade mark will be considered at a hearing, and a decision will be issued by a hearing officer.

5Publication for Opposition at the HK IP Journal (3 months)

Publication of Trade Mark

Once your trade mark has been accepted for registration, it is published in the Hong Kong Intellectual Property Journal.

Opposition to your Trade Mark by a Third Party

Anyone can view your trade mark in the Hong Kong Intellectual Property Journal and lodge an opposition to it. They have to file an opposition notice within the 3-month period beginning on the publication date. As the applicant, you may withdraw your application or respond to the opposition by filing a counter-statement. Please note that if you withdraw your application or lose in the opposition proceedings, you may have to pay the other party’s costs. You and the opponent are given the opportunity, within certain time limits, to file evidence in support of the application and opposition. When all the evidence has been received, a hearing will take place before a hearing officer who then makes a decision. The successful party in opposition proceedings is usually entitled to an award of costs.

6Registration

Once your trade mark has been accepted for registration, the Registrar of Trade Marks will enter the details of your trade mark into the trade marks register and you will be issued with a certificate of registration. Notice of the registration will be published in the Hong Kong Intellectual Property Journal and the registration of your trade mark will date back to the filing date of your application. That means as the owner of a registered trade mark, your rights take effect from the filing date of the application.

Please note that the Trade Marks Registry is performing quasi-judicial functions in the proceedings. In order to maintain our impartial role, we will not provide any legal advice to the public.