Q: If my address for service in Hong Kong has changed, what should I do to update the Registry's records?
A: An address for service in Hong Kong 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 you fail to inform the Registry of any changes in your address for service, documents may be delivered to an address that is no longer valid, and we will be unable to process your application further.
Q: Can I amend the representation of the mark applied-for?
A: You can file a request on Form T5B to amend an application for registration of a trade mark by adding to it a representation of a registered trade mark together with the registered particulars of that trade mark only if all the conditions set out in section 46(2A) 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 mark will render the Form T5B unacceptable and you will need to file a fresh Form T5B.
Q: What action can I take if I am not satisfied with your decision?
A: 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 Trade Marks Registry Work Manual - “Appeals against decisions of the Registrar”.
Q: How do I fill in the application form Form T2?
A: Please read our "How to apply to register a trade mark" 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 Trade marks forms and fees (Cap.559).
Q: How do I classify my goods and services?
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.
Q: Can I file an application directly with the Registry?
A: If you wish to register your trade mark in the Hong Kong Special Administrative Region (the Hong Kong SAR), you can file the application directly with the Registry. If you cannot come to the Hong Kong SAR to file the trade mark application, you can send the application with the application fee to us by post, or by courier. You may also submit your application electronically through our e-filing system. For details, please visit efiling.ipd.gov.hk.
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. Payment by credit card is only available for applications submitted through IPD e-filing system. For details, please visit efiling.ipd.gov.hk.
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 trade mark 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 How to classify my goods and services 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, 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 trade mark 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 trade mark application form for each item of goods and/or services?
A: No. Each trade mark application may include more than one item of goods and/or services. The application fee is HK$2,000 plus a fee of HK$1,000 per additional class (if any).
Q: How do I complete the fields “Applicant type”, “Country/Territory/Area of incorporation” and “State of incorporation” in Form T2?
A: You will be asked to indicate whether you are an individual, incorporated entity or unincorporated entity in Part 01(c) of Form T2. If you are an incorporated entity, you will also be asked to indicate your place of incorporation. These particulars may be entered in the register of trade marks to enhance the transparency of our records and to help the Registrar of Trade Marks and third parties better identify the applicant/owner of a trade mark.
Please bear in mind that the entity named as the applicant of a trade mark must be capable of holding property, including the trade mark. If you have any doubt as to whether you have legal capacity to hold property, please consult your legal advisers. The Registrar is not in a position to advise you on this.
Individual
Incorporated
If you are a corporation (i.e. a company incorporated in the Hong Kong SAR, or any other body corporate incorporated or established in or outside the Hong Kong SAR), please mark the box “Incorporated” and fill in the country/territory/area of incorporation in Part 01(d) of Form T2. If the corporation was incorporated in the United States, please also fill in the state in which it was incorporated in Part 01(e) of Form T2. Please note that it is mandatory for a corporation to indicate its place of incorporation. For details of the consequence of failing to do so, please refer to the Trade Marks Registry Work Manual chapter on “Deficiencies checking”.
Unincorporated
In many jurisdictions including the Hong Kong SAR, an unincorporated association is not a legal person.
If you are an unincorporated entity which nevertheless has legal capacity to hold property under the law of the place where it is established, please mark the box “unincorporated”.
Please note that the Registrar will not verify any information provided by an applicant regarding applicant type or place of incorporation before entering it on the register of trade marks. Persons who wish to ascertain such information should carry out independent inquiries and searches.
The above guidance applies also to the fields “Owner type”, “Country/Territory/Area of incorporation” and “State of incorporation” in Part 03(c), (d) and (e) of Form T10 in relation to an application for the registration of the particulars of an assignment or transmission of a trade mark.
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 the Hong Kong SAR.
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 in Form T2, 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 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.
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.
Q: What will happen to a deadline to remedy deficiencies under rule 11 of the Trade Marks Rules (Cap. 559A) (the “Rules”) if the operations of the Trade Marks Registry (the “Registry”) are interrupted?
A: In a situation where the Registry’s operations are interrupted and notified to be so by way of a Notice of Interruption in the Operations of the Patents Registry, Designs Registry and Trade Marks Registry (“Notice of Interruption”) as published in the Hong Kong Intellectual Property Journal, the deadline to remedy deficiencies originally set out in a Registrar’s deficiency notice issued under rule 11 of the Rules will be extended to a date specified in the Notice of Interruption, which will be the Registry’s first business day next following the day which interruption ends. To view a list of Notices of Interruption that the Registry has issued, please visit Notices published in the Hong Kong Intellectual Property Journal. Pursuant to the Notice of Interruption issued in 2020 recently on 28 January, 1 February and 8 February respectively (“said Notices of Interruption”), if the deadline falls on any day between 29 and 31 January, 3 and 7 February, or 10 and 14 February 2020, it will be extended to 17 February 2020 (“New Deadline”).
Please note that the statutory time period to respond to the Registrar’s deficiency notice is non-extendible. Given the said Notices of Interruption, if the deficiencies are not remedied by the New Deadline, the part of your application in respect of the deficiencies shall be treated as abandoned. It is therefore very important for you to plan well ahead as to when you should take action in remedying the relevant deficiencies in your application, bearing in mind that time is also required for the Registry to properly consider your proposal to remedy.
Q: What will happen to a deadline to file written submissions/requests in response to the Registrar’s opinion issued under rule 13 of the Rules if the operations of the Registry are interrupted? Can I apply for an extension of time?
A: When a Notice of Interruption is in force, the deadline to file written submissions/requests originally set out in the Registrar’s opinions issued under rule 13 of the Rules will be extended to a date specified in the relevant Notice of Interruption, which will be the Registry’s first business day next following the day which interruption ends. Given the said Notices of Interruption, if the deadline falls on any day between 29 and 31 January, 3 and 7 February, or 10 and 14 February 2020, it will be extended to the New Deadline of 17 February 2020.
The deadline to file submissions/requests under rule 13(2) and (5) of the Rules is extendible upon an applicant’s written request, subject to the conditions and requirements set out in rule 13(3) and (6) respectively of the Rules. Where a Notice of Interruption is in force, any request for time-extension made under rule 13(2) and (5) should be filed on or before the Registry’s first business day next following the day which interruption ends. In view of the said Notices of Interruption, a request for time-extension should be made on or before the New Deadline of 17 February 2020.
Q: I am a party to trade mark opposition proceedings. I notice that recently the Registry has issued Notices of Interruption in the Operations of the Registry under rule 96(1) of the Trade Marks Rules (Cap. 559A) covering a number of days. Would my deadline for filing a document in the proceedings be extended for the same number of days?
A: Not necessarily. If your original deadline falls on a date which is covered in such Notice, the deadline will be automatically extended to the first business day next following the day which interruption ends (“New Deadline”).
Parties are reminded that they should ensure that appropriate actions are taken by the New Deadline. This is particularly important where the original deadline is a non-extendible time limit under the Trade Marks Rules.
Q: Despite that the Registry has issued a Notice of Interruption, the other party has served a document on me. How does that affect my deadline for filing a document in the following round?
A: In normal circumstances, if your deadline is one to be determined by reference to the date of receipt of a document from the other party (e.g. for filing a counter-statement under rule 17(1) of the Rules), the deadline would begin to run from the date of receipt of the document (in this case, the notice of opposition). Hence, whether or not the date of receipt falls on a date covered in a Notice of Interruption should not affect the computation of your deadline in the following round.
For further information on service of documents, please refer to the Trade Marks Registry Work Manual – “Computation of time for service of documents between parties”, “Computation of time for filing at the Registry” and “Service of pleadings and evidence”.
Q: How do I contact the Department during a period of interruption of its operations?
A: Despite an interruption of operations, the Department maintains limited services and can be contacted as follows -
| Public Service Counter: | 24/F, Wu Chung House |
|---|---|
| Enquiry Hotline: | (852) 2961 6901/2961 6820 |
| Email: | enquiry@ipd.gov.hk |
Moreover, our public service counter on 24/F Wu Chung House will remain open at specified hours to receive the physical filing of applications and documents from members of the public. For details on the exact opening hours, please refer to What’s News. To safeguard your interests, we recommend that you consider using our electronic filing facility to the extent possible in the circumstance.
Q: How to compute the time for filing of documents under inclement weather conditions?
A: For computation of time in respect of filing of documents with the Registry under the Trade Marks Ordinance (Cap. 559) and the Trade Marks Rules (Cap. 559A), if the last day of a time period for filing of documents is a day on which Tropical Cyclone Signal No. 8 or above or a Black Rainstorm Warning Signal (“the signal”) is in force or extreme conditions exist throughout or on part of the day, such time limit of filing documents shall be extended to the next following business day of the Registry.
The typhoon, rainstorm warning and extreme conditions arrangements set out in the above paragraph still apply even if the signal is in force or the extreme conditions exist on part of the day which is not within the hours of business office hours of the Registry. For example, if Typhoon Cyclone Signal No. 8 was in force during the period from 1:00 a.m. to 3:00 a.m. only on the last day of a time period for filing of documents, the time limit for filing shall be extended to the next following business day of the Registry even though the signal was in force outside the hours of business of the Registry.
For details, please refer to paragraph (d) of the “NOTICE OF BUSINESS HOURS AND BUSINESS DAYS OF THE TRADE MARKS REGISTRY, PATENTS REGISTRY AND DESIGNS REGISTRY” published in the Hong Kong Intellectual Property Journal on 16 February 2024.
Q: If I am entitled to claim Convention priority for an application in the Hong Kong SAR, 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.
Q: 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 2022 with the goods or services classified in accordance with the eleventh edition of the Nice Classification and the class number concerned has been changed under the twelfth edition of the Nice Classification, what shall I do?
A: If you file the corresponding application for registration in the Hong Kong SAR on or after 1 January, 2023, the goods or services concerned need to be classified in accordance with the twelfth edition of the Nice Classification. For example, if the first Paris Convention application or WTO application contains the goods “hospital beds” which falls under Class 20 under the eleventh edition of the Nice Classification, when you file the corresponding application for registration in the Hong Kong SAR on or after 1 January 2023, you need to put the goods “hospital beds” under Class 10 in accordance with the twelfth edition of the Nice Classification. The difference in the class numbers of certain goods and services due to the application of the twelfth 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.
Q: If convention priority is based on my application filed in the European Union Intellectual Property Office (EUIPO), should I fill in “European Union Intellectual Property Office (EUIPO)” in the field “Country/Territory/Area” of Part 08(b) of Form T2? What about the name to be filled if the convention priority is based on my application filed in the Benelux Office for Intellectual Property (BOIP)?
A: According to rule 9(1)(a) of the Trade Marks Rules, where an applicant wishes to claim a right to priority under the Trade Marks Ordinance, he has to provide the name of each country, territory or area in respect of which a right to priority is claimed. As you should provide the name of the country, territory or area instead of organizations or IP offices, please fill in the name “European Union” in the field “Country/Territory/Area”, Part 08(b) of Form T2. Similarly, if a convention priority is based on an application filed in the Benelux Office for Intellectual Property (BOIP), you should fill in the name “Benelux”。
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: 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, and the application fee is paid in full. If your application does not include this information or full payment, 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: How would my trade mark application be affected if I do not pay the application fee at the time of submitting the application?
A: A trade mark application will not be given a filing date until the application fee is paid in full (see section 39(1) of the Trade Marks Ordinance). For calculation of the sum of your application fee, please refer to Trade marks forms and fees (Cap.559). Furthermore, a failure to pay the specified application fee remains a deficiency under rule 11(1)(b) of the Trade Marks Rules. If you fail to pay the application fee within two months after the date of the Registry’s notice requesting you to do so, your application shall be deemed never to have been made.
Q: If my trade mark consists of a Japanese character but I have not completed Part 05 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 05 (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 confirm the statement of use of the mark by signing Part 11 of Form T2.
Q: Can I file a specification for the whole class heading of a particular class of the International Classification of Goods and Services?
A: Yes. However, when a class heading is used as a specification in a trade mark application, it becomes a statement of goods/services in that trade mark application. If the class heading is not sufficient to cover the range of goods/services for which you have used or intend to use or license the trade mark, you should specifically list out the goods/services in the trade mark application.
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.
Q: Will the registry ask for a transliteration of a Japanese or Korean company's name if the company has provided its English name?
A: 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.
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?
You are not required to provide a description of the applicant. However, you will be asked to indicate whether you are an individual, incorporated entity or unincorporated entity in the application form. If you are an incorporated entity, you have to provide "country/territory/area of incorporation". For applicant incorporated in the United States, you also have to provide the state of incorporation in the application form.
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 is treated as abandoned.
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.
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.
Q: What are the common deficiencies and irregularities of trade mark applications?
A: Please see the common deficiencies and irregularities of trade mark applications for reference.
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.
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 Form T3.
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:
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.
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.
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 the Hong Kong SAR, the extent to which the public has been educated through advertising to recognize the mark, etc.
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 Marks 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.
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:
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, 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.
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 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 at our online Trade Mark Search System 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 any special requirements in applying to register a trade mark which comprises a packet or retail container of tobacco products?
A: Special consideration should be applied in relation to applications for trade marks for tobacco products which include any term, descriptor, figurative or any other sign that creates the false impression that a particular tobacco product is less harmful than other tobacco products. For details, please refer to the Trade Marks Registry Work Manual chapter on "Absolute grounds for refusal". Further, where the mark bears the representation of a packet or retail container of tobacco products, you should note that, under the Smoking (Public Health) Ordinance (Cap. 371) and its subsidiary legislations, it is an offence to sell, offer for sale or possess for the purposes of sale any tobacco products the packet or retail container of which does not bear in the prescribed form and manner a health warning and (if applicable) indication of tar and nicotine yields. You may access Cap. 371 and its subsidiary legislations at the Bilingual Laws Information System (https://www.elegislation.gov.hk)
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 consists of or contains any of the following—
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:
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.
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. We will usually issue a reply after expiry of the specified six-month period. On some occasions, we may give certain comments to the applicant by way of an “observation letter” prior to expiry of the specified six-month period. We will do so if we consider that minor adjustments to the application could help meet the requirements of registration. If your written representations cannot establish that the requirements for registration are met, after expiry of the specified six-month period, 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.
Q: I file a written submission or form by post on the date the time limit expires. Will it be deemed to have been made within the time limit?
A: No. Since it takes at least a day or two for a document to reach the Registry by post, a written submission or form shall not be deemed to be effected until it is received and recorded as received by the Registry (Trade Marks Rules 108(3)). For instance, the time limit for filing a written submission or form is 15 June, 2020. You shall ensure that such a document is received and recorded as received by the Registry on or before 15 June, 2020, so that it will be considered to have been filed within the time limit. Other than by post, you are advised to file a submission or form via our E-filing System (available from 03:00 to 00:00 Monday to Sunday) or by hand at our public service counter (open hours from 09:00 to 17:45 Monday to Friday), on or before the time limit. All in all, it is always advisable that any written submissions or documents should reach the Registry well ahead of the time limit.
Q: Can I obtain legal advice from the Registry in proceedings involving two or more parties?
A: We are performing quasi-judicial functions in these proceedings. In order to maintain our impartial role, we will not provide any legal advice to any party to such proceedings.
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:
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.
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.
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
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 trade mark 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 Trade Marks Registry Work Manual – “Taxation of costs”
Q: Can a registered proprietor rely on a prior mark registered in black and white to oppose an application for registration of a later mark if the prior mark in actual use is in colour?
A: Although the prior mark is registered in black and white, the trade mark proprietor may use the mark in colour. Whether the proprietor may successfully oppose an application for registration of a later mark on relative grounds depends on, among other factors, the comparison of the prior mark as registered, or as used by the proprietor, with the later mark. If the proprietor seeks to rely on the use made of the prior mark before the date of application for registration of the later mark, the proprietor should adduce evidence on the use which has been made of the mark.
Q: Can I send cash through mail or drop-box for payment?
A: We do not accept cash delivery (i.e. cash sent through mail or our drop-box, if in place) for payment of any fee in relation to any matter or proceedings before the Registrar of Patents/Designs/Trade Marks (collectively “Registrar”).
Non-acceptance of cash delivery leads to non-acceptance of its accompanying forms/documents, if any, to be filed with the Registrar, which can seriously prejudice filers’ interests, including but not limited to:
- the date of filing of an application be deferred;
- the relevant filing deadline# for remedying deficiencies in an application or otherwise for compliance with the relevant filing requirements (e.g. concerning filing a notice of opposition to a trade mark application, filing renewal of a registration etc.) be missed.
(# The relevant filing deadlines can be non-extendable in individual cases.)
The Government accepts NO liability for any loss or damage whatsoever arising from or in connection with any cash delivery.
Q: What strategies should I adopt to protect my trade mark in the Hong Kong SAR and separately, in the Mainland of China?
A: Some strategies that you should consider:
Q: How can I legally use a name for business in the Hong Kong SAR?
A: If you carry on business in the Hong Kong SAR through a company, partnership, as a sole trader, or under a business trading name, you must register the name at the Business Registration Office: https://www.ird.gov.hk
The name of a limited company will also need a registration at Companies Registry: https://www.info.gov.hk/cr
Registering a business or company name in the Hong Kong SAR 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 at our online Trade Mark Search System, the companies register (https://www.e-services.cr.gov.hk), 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 the Hong Kong SAR law if the infringing activity takes place in the Hong Kong SAR, or under Mainland law if the infringing activity takes place in the Mainland of China.
Q: Under what circumstances can I have a refund?
A: The relevant rules and regulations on refund are:
Where a fee is paid in error or in excess of the amount specified, the amount paid in error or the excess amount received would be refunded.
Refund is also made on the basis that the work has not begun on the application or matter, for example deficiency checking has not been started or notice of attendance (whether on Form TM-No.8 under Cap.43 or on Form T12 under Cap. 559) had not been marked out on file to the hearing officer.
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.
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 make a request for 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.
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 our online Trade Mark Search System.
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$2,670 for the first class of goods or services in the specification, plus HK$1,340 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.
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), see the data field of “Actual Date of Registration” in the record of a registered trade mark on our Online Search System.
In the case of a merged registration from 2 or more separate original registrations, for the purpose of determining when the three-year period may begin, you should first consider whether the grounds for revocation apply to all or some of the goods/services covered by the registration, and then ascertain the relevant actual date of registration of each original registration covering such goods/services by referring to the individual record of such original registration, instead of relying on the data field “Actual Date of Registration” in the online record of the merged registration.* The individual record of each original registration is easily accessible through hyperlinks on the online record of the merged registration in question.
* Such data field has been unnecessarily captured by the system. IPD will devise and implement appropriate system enhancement in due course to deal with the situation.
Q: How do I apply for registration of a three-dimensional shape mark?
A: You need to fill in Box 06(b) of Form T2 and 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'.
Q: Is smell registrable as a trade mark
A: One essential requirement for registration of a trade mark is filing with the Trade Marks Registry a clear representation of the mark which clearly depicts the mark in sufficient detail so as to —
In principle, a trade mark may consist of smell(s) and a smell mark is registrable. Nonetheless, in practice, it is still practicably impossible to represent a smell mark by reference to the status quo of the generally known scientific knowledge and available technologies in compliance with the aforesaid filing requirement.
Where an application for registration of a trade mark does not contain a clear representation of the applied-for mark, and such deficiency is not timely remedied, an official examination of the application cannot be properly conducted and the application would eventually be treated as abandoned.
Q: Can I describe my smell mark by provision/deposit of an odour sample?
A: No. As explained aforesaid, a trade mark applicant must provide a representation of the applied-for mark so as to describe and identify the mark in a clear and objective manner. Provision of an odour sample to/an offer to deposit the sample in the Trade Marks Registry does not constitute a clear representation of an applied-for mark in compliance with the aforesaid filing requirement.
Q: Can I describe my smell mark by a chemical formula?
A: No. A chemical formula of a smell mark is not readily intelligible to both the Registrar of Trade Marks and also the general members of the public to identify and ascertain the exact odour(s) of the mark. Such chemical formula is therefore not treated as a clear representation of an applied-for mark in compliance with the aforesaid filing requirement.
For further details about smell marks, see the Trade Marks Registry Work Manual - “Deficiency checking”.
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: 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).
If you wish to apply for an extension of time, you are required to file a request on Form T13 together with the specified fee. For details, please refer to the Trade Marks Registry Work Manual Chapters “Applications for extension of time (other than under rules 13(3) and13 (6)) ” and “Time limits in the examination process” .
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) will be granted upon receipt of the request on Form T13 with the prescribed fee filed within the prescribed 6-month period specified in the opinion.
A 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.
For further details, see the Trade Marks Registry Work Manual on Time limits in the examination process.
Q: 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?
A: 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:
For further details, see the Trade Marks Registry Work Manual on Time limits in the examination process.
Q: In circumstances of force majeure, can I obtain extension of time for meeting the time limit in proceedings before the Registrar?
A: We understand that in circumstances of force majeure (such as earthquake or other natural disaster), it may be difficult for affected applicants or parties to meet the specified time limits relating to their filings relating to trade marks, patents and designs applications and registrations (collectively “IP filings”). Due to the confines of our statutory obligations and powers, we have no discretion to initiate extension of time limits across the board.
You should review your IP filings and consider filing requests for extension of time in applicable cases in the interim to preserve your position under the Trade Marks Ordinance (Cap. 559), Patents Ordinance (Cap. 514), and Registered Designs Ordinance (Cap.522) as well as under their respective subsidiary legislation before the expiry of specified time limits. We may take into account the extraordinary circumstances faced by the affected applicants or parties in considering their requests for time extension on a case by case basis.
Q: What are registrable transactions under the Trade Marks Ordinance?
A: A registrable transaction is a transaction that affects any right in either a trade mark registered in the Hong Kong SAR or an application for registration of a trade mark filed in the Hong Kong SAR (collectively “TM right”).
The following are registrable transactions—
Q: Is it mandatory to register a registrable transaction in the Hong Kong SAR?
A: Registration of a registrable transaction is optional but strongly encouraged to safeguard the rights of the relevant party/parties to the transaction. More specifically, while registration is not a pre-requisite to the validity of the underlying transaction, non-registration may lead to certain adverse consequences, namely—
Q: Is there any deadline for applying for registration of a registrable transaction in the Hong Kong SAR?
A: It is advisable to apply for registration of a registrable transaction as soon as practicable after the date of the transaction. Where there is a change of ownership in or a licensing of the trade mark concerned by virtue of a registrable transaction, an application for registration of the registrable transaction should be filed within 6 months from the date of the transaction, or else the new owner or the licensee will be deprived of damages or an account of profits as aforesaid.
Q: How do I apply for registration of a registrable transaction?
A: An application for registration of a registrable transaction has to be filed with the Registrar of Trade Marks. The details are shown in Registrable transactions under Managing your trade mark.
Q: Do I need to produce documentary evidence for filing with the Registrar of Trade Marks in support of an application for registration of a registrable transaction?
A: No, provided that the relevant official form is signed by or on behalf of the assignor, the grantor of the licence/security interest, or the personal representative making the assent, as the case may be.
Otherwise, the documentary evidence of the registrable transaction required to be produced for filing will also be open to public inspection.
Q: What are the consequences if the document or other things sent to the Registrar by post bear insufficient postage?
A: The Registry will not accept any unpaid or underpaid mail items. Please ensure your mail items bear sufficient postage before posting. Any mail items bearing insufficient postage will be returned or disposed of by the Hongkong Post. For details, please refer to the Hongkong Post website (www.hongkongpost.hk).
Q: Can I use the ® with my trade mark?
A: You can only do so if you have registered the mark in the Hong Kong SAR, or if it is shown that the mark is in fact registered elsewhere, for your goods or services. If you have not registered your mark in the Hong Kong SAR or elsewhere, it is an offence to use the ® and you may be liable on conviction to a fine.
Q: 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 Registry?
A: 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.
Q: How do you know if a mark has been registered as a well-known mark, as distinct from any other mark?
A: 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 registration'.
Q: As well known marks do not have to be in use in the Hong Kong SAR to qualify as well-known marks, presumably they are immune from removal for non-use?
A: 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 the Hong Kong SAR or own any goodwill in a business in the Hong Kong SAR. However, protection by registration (defensive registration excepted) must be sustained by use.
Q: What additional protection is there for well-known marks?
A: 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 the Hong Kong SAR, 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.
Q: 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 fee?
A: 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 advertisement.
Q: 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?
A: 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 certificate.
Q: Are trade mark applications still published in the Government Gazette now that the Trade Marks Ordinance (Cap. 559) is in operation?
A: 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 will continue to be published in Supplement 6 of the Gazette of the Government of the Hong Kong SAR.
Please see our "Workflows on transitional matters".
Applications accepted under the Trade Marks Ordinance (Cap. 559) are published electronically in the Hong Kong Intellectual Property Journal on our website.
Q: What is the transitional arrangements for handling non-converted applications under Trade Marks Ordinance (Cap. 43)?
A: This diagram illustrates the arrangement.
Q: What is the transitional arrangement for handling renewal of registration?
A: This diagram illustrates the arrangement.
Q: What is the transitional arrangement for handling assignment and licence?
A: This diagram illustrates the arrangement.
Q: What is the transitional arrangements for handling opposition to trade mark applications under Trade Marks Ordinance (Cap. 43) and Trade Marks Ordinance (Cap. 559) ?
A: This table illustrates the arrangement.
Q: What are the differences between trade mark registration and company registration?
A : Separate laws and systems regulate the registration of company names, business names and trade marks in the Hong Kong SAR. A company name registration at the Companies Registry or a business name registration at the Business Registration Office (Inland Revenue Department) is not the same as a trade mark registration at the Trade Marks Registry. A business or company name registration is not an indication of trade mark rights.
There have been recent reports of registered trade marks or well-known trade marks being registered without authorization as company names with the Companies Registry (often with a minor variation of the name). We understand that such company name registrations are then used outside the Hong Kong SAR (principally in the Mainland of China) as a cover for promoting or dealing in infringing trade mark goods.
A Hong Kong SAR business registration certificate or a certificate of incorporation / registration does not by itself indicate that the business or company has rights to use its name or a trade mark in promoting or dealing in goods and services.
A trade mark registration is a guarantee of trade mark rights registered in the Hong Kong SAR *. On-line and free of charge, you can check registered trade marks, owners and persons or companies licensed to use the trade marks in the Hong Kong SAR at : esearch.ipd.gov.hk
Furthermore, to address possible misunderstanding of the Hong Kong SAR system in the Mainland of China, we have arranged a number of events to promote a better knowledge of our system among businessmen and at the local government level. We shall particularly stress that a company registration is not an indication of intellectual property rights.
Q: What are the differences among company registration, business registration and trade mark registration?
A:
Company registration, business registration and trade mark registration in the Hong Kong SAR serve different purposes. They are regulated by different laws and registration systems administered by different government departments.
The Companies Registry administers and enforces the Companies Ordinance (Chapter 622, Laws of Hong Kong). The Companies Registry is responsible for providing services for the incorporation of local limited companies and the registration of non-Hong Kong companies which were incorporated outside the Hong Kong SAR and have established a place of business in the Hong Kong SAR.
The Business Registration Office under the Inland Revenue Department administers the Business Registration Ordinance (Chapter 310, Laws of Hong Kong). The Business Registration Office is responsible for registering businesses carried on by an individual, a partnership, a local limited company or a non-Hong Kong company.
The Trade Marks Registry under the Intellectual Property Department is responsible for providing trade mark registration services to members of the public under the Trade Marks Ordinance (Chapter 559, Laws of Hong Kong) and the Trade Marks Rules (Chapter 559A, Laws of Hong Kong).
A company name registration at the Companies Registry or a business name registered with the Business Registration Office is not the same as a trade mark registration at the Trade Marks Registry. A business or company name registration is not an indication of trade mark rights. Having registered a company name with the Companies Registry or a business name with the Business Registration Office, you are still required to apply for registration of your trade marks with the Trade Marks Registry. Only the registered trade mark owner has an exclusive right to use the trade mark in relation to the goods and services in the Hong Kong SAR for which the mark is registered.
To form a local limited company, you have to propose a company name. You may find out whether the proposed name has already been used by an existing company by conducting a company name search free of charge through the Company Registry’s e-Services Portal (www.e-services.cr.gov.hk). You can also conduct the company name search at the e-Services Centre at the Companies Registry. Please note that:-
A company incorporated outside the Hong Kong SAR, which has established a place of business in the Hong Kong SAR, should deliver documents to the Registrar of Companies for registration within one month after the establishment of the place of business in the Hong Kong SAR under section 776 of the Companies Ordinance. Under the one-stop company and business registration service, any person who applies for registration of a non- company under the Companies Ordinance, if the company has not yet registered under the Business Registration Ordinance, will be deemed to have made a simultaneous application for business registration. Certificate of Registration of Non-Hong Kong Company and the Business Registration Certificate, if applicable, will be issued in electronic form for electronic application delivered at the Companies Registry’s e-Services Portal (www.e-services.cr.gov.hk); and in hard copy form for applications delivered in hard copy form. The certificate(s) will normally be issued within 9 working days (excluding the day of delivery). Certificates in electronic form or hard copy form have the same legal effect.
For details of the documents and fees required for registration, please visit the Companies Registry's website www.cr.gov.hk.
"Business" required to be registered includes:
You should apply for registration of your business within one month from the date of commencement of your business with the Business Registration Office. If you carry on business at a branch, you also need to apply for branch registration. Under the one stop company and business registration service, local limited companies or non-Hong Kong companies incorporated outside the Hong Kong SAR and have established a place of business in the Hong Kong SAR are only required to lodge the application for company and business registration with the Companies Registry. For further information on business registration, please visit the website www.gov.hk/br.
A trade mark is a sign that distinguishes the goods and services of one trader from those of others. Registering your trade mark means that you have an exclusive right to use the trade mark in relation to the goods and services for which the mark is registered. If other people use it in the course of trade in the Hong Kong SAR relating to the same or similar goods or services without your consent, you may consider taking legal action against them.
Before filing a trade mark application in the Hong Kong SAR, you may search the records of registered trade marks and trade mark applications filed with the Trade Marks Registry to find out if there are any marks in the register of trade marks which are identical or similar to the one you intend to apply to register. You can search the records by using the Intellectual Property Department's free online search services (esearch.ipd.gov.hk).
If there is no deficiency in your application and all requirements for registration are met, the application will be accepted for registration and published in the Hong Kong Intellectual Property Journal. If there is no opposition to the trade mark application by a third party within the three-month opposition period from the publication date, the registry will register your mark and send you a certificate of registration. The whole registration process may take as short as six months from the date of receipt of application by the Trade Marks Registry.
The trade mark registration system of the Hong Kong SAR provides territorial protection. Hence, trade marks registered in the Mainland of China do not automatically receive protection in the Hong Kong SAR. If you want your mark to be protected in the Mainland of China and the Hong Kong SAR, you should apply for registration in both places.
For further information on trade mark registration in the Hong Kong SAR, please visit the Intellectual Property Department's website www.ipd.gov.hk
Q: Do I need to make a separate application for business registration with the Inland Revenue Department after obtaining a Certificate of Incorporation/Registration issued by the Registrar of Companies?
A: No. Under the one-stop company and business registration service, any person who delivers an application for incorporation of a local limited company or for registration of a non-Hong Kong company at the Companies Registry will be deemed to have made a business registration application at the same time. Upon the approval of your application, the Companies Registry will issue both the Certificate of Incorporation and Business Registration Certificate in one go. For more information about the registration procedures, please visit the website of the BRO (http://www.gov.hk/br).
Q: Can my non-Hong Kong company apply for business registration directly with the Inland Revenue Department instead of making an application with the Companies Registry?
A: A non-Hong Kong company, which is a body corporate and has established a place of business in the Hong Kong SAR, should deliver its application for both company and business registration to the Companies Registry under the one-stop company and business registration service, unless the company has already been registered under the Business Registration Ordinance. Where there is an urgent need for a Business Registration Certificate, the non-Hong Kong company can submit application form (Form 1(b)), together with a copy of its Certificate of Incorporation or its equivalent issued by the relevant government authority in the place of incorporation, and pay the business registration fee and levy through the counter of the Business Registration Office of the IRD at 4/F., Revenue Tower, 5 Gloucester Road, Wan Chai, Hong Kong. When the company subsequently applies for registration with the Companies Registry, it must deliver the Notice to Business Registration Office (IRBR2) with the application form (Form NN1), and indicate in the IRBR2 that it has already registered its business and state its Business Registration Number. For more information about the registration procedures, please visit the website of the BRO (http://www.gov.hk/br).
Q: I would like to set up a sole-proprietorship or a partnership business in the Hong Kong SAR. Should I apply to the Companies Registry for registration?
A: The Companies Registry is responsible for the incorporation of local limited companies and the registration of non-Hong Kong companies incorporated outside the Hong Kong SAR which incorporated outside the Hong Kong SAR.
For your sole-proprietorship or partnership business, you should register the business with the BRO within one month of the commencement of the business.
Please complete the prescribed application form (Form 1(a) for sole-proprietorship business and Form 1(c) for partnership business) and submit it to the BRO together with a photocopy of your Hong Kong identity card or passport (and those of your partners in the case of a partnership). For more information about the registration procedures, please visit the website of the BRO (http://www.gov.hk/br).
Q: I have registered my trade mark with the Trade Marks Registry. Do I still need to apply for a business registration?
A: Yes. You still need to apply for a Business Registration Certificate for your business. If you carry on business in the Hong Kong SAR in the form of a local limited company or a non-Hong Kong company, you are required to deliver the application for both company and business registration to the Companies Registry under the one-stop company and business registration service. If you carry on another type of businesses like a sole-proprietorship or partnership business, you are required to apply to the Business Registration Office for the registration within one month of the commencement of business.
Q: I have registered my business, do I have the exclusive right to use my business name as my trade mark?
A: No. Business registration and trade mark registration in the Hong Kong SAR serve different purposes. They are regulated by different laws and registration systems administered by different government departments. To obtain the exclusive right for using a trade mark in relation to the goods and services for which the mark is registered, you need to apply to register your trade mark with the Trade Marks Registry.
Q: How do I know whether someone else has had registered my trade mark as his business name?
A: The BRO maintains a register of businesses for inspection by the public. The information recorded in the register includes the business name, its business nature, its business address, and the personal particulars of its owners (where applicable). Any person can inspect the register at any time and at any where via the Internet. For more details about the pubic inspection service, please visit the website of the BRO (http://www.gov.hk/br) .
Q: I have already registered the name of my limited company with the Companies Registry. Can I use the registered company name as a trade mark? Will my company name be protected as a registered trade mark automatically?
A: Company registration and trade mark registration in the Hong Kong SAR serve different purposes. They are regulated by different laws and registration systems administered by different government departments. The Companies Registry is responsible for the registration of local limited companies and non-Hong Kong companies incorporated outside the Hong Kong SAR which incorporated outside the Hong Kong SAR, while the Trade Marks Registry administered by the Intellectual Property Department is responsible for the registration of trade marks. Having the company name registered with the Companies Registry does not automatically confer on the company the right to use its name as a trade mark in promoting or dealing in goods and services. You have to file an application with the Trade Marks Registry for trade mark registration in order to obtain the protection under the Trade Marks Ordinance.
Q: Will the Trade Marks Registry give approval to the registration of the name of my limited company as a trade mark because I have registered it with the Companies Registry?
A: Company registration and trade mark registration in the Hong Kong SAR serve different purposes. They are regulated by different laws and registration systems administered by different government departments. The Companies Registry is responsible for the registration of local limited companies and non-Hong Kong companies incorporated outside the Hong Kong SAR which incorporated outside the Hong Kong SAR, while the Trade Marks Registry administered by the Intellectual Property Department is responsible for the registration of trade marks. The fact that the name of your company has been registered with the Companies Registry does not mean that it is registrable as a trade mark. The Registrar of Trade Marks examines each application to ensure that the requirements under the Trade Marks Ordinance (Cap. 559) and Trade Marks Rules (Cap. 559A) are satisfied. For details, please visit Trade Marks under the website of the Intellectual Property Department.
Q: How can I know whether my company name has been registered as a trade mark in the name of other company?
A: You can search the records of registered trade marks and trade mark applications filed with the Trade Marks Registry by using the free online search services provided by the Intellectual Property Department at our online Trade Mark Search System to find out whether your company name has been registered as a trade mark by other.
Q: If someone else makes an application to the Trade Marks Registry for registration of the name of my company as a trade mark, can I oppose to its registration?
A: If someone else makes an application to the Trade Marks Registry to register the name of your company as a trade mark and the application is accepted by the Registry, you may file an opposition notice together with the grounds for opposition, within the 3-month period beginning on the date of publication of the application in the Hong Kong Intellectual Property Journal. You are required to file evidence in support of the grounds for opposition in the opposition proceedings.
Q: What are the differences between trade marks and domain names?
A:
| Domain names | Trade marks |
|---|---|
| A domain name must be contextual in form (e.g. www.ipd.gov.hk). | A trade mark may consist of words, designs, letters, numerals, colours, the shape of goods or their packaging etc. and any combination of such signs. |
| A domain name is registrable if it is not identical to a previously registered domain name. | A trade mark may not be registrable if it is identical or similar to a previously registered trade mark. Further, similarity of the applied-for goods or services and the goods or services of the previously registered trade mark would be taken into account in assessing whether consumers would be confused about the trade origin of the applied-for goods or services. |
| A domain name may describe the characteristics of the applied-for goods or services, e.g. “freshbread.com” for a bakery. | A trade mark which consists exclusively of a sign which describes the characteristics of the applied-for goods or services may not be registrable. Signs such as “fresh bread” in respect of bakery services would be considered as descriptive and non-distinctive and hence not registrable (while “fresh bread” would be fine for clothing). |
| A domain name does not have to be registered in respect of a particular class of goods or services. | A trade mark shall be registered in respect of the class of goods or services as classified under the Nice Classification. |
| A domain name is valid for a contract period as agreed between the registrant and the accredited registrar and is subject to renewal. | A registered trade mark is valid for 10 years and can be renewed for further periods of 10 years. |
| Mandatory administrative proceedings before an approved dispute resolution service provider are required for certain types of disputes and legal proceedings may also be initiated in a court of competent jurisdiction. | Legal proceedings may be initiated before the Registrar of Trade Marks or the Court of First Instance in the Hong Kong SAR as appropriate. |
Q: Recently I have received some promotional emails referring to registration of "trade marks on the Internet". Will the Intellectual Property Department provide registration services for “trade marks on the internet”?
A: It has come to our attention recently that some trade mark owners / agents have received promotional emails, materials or telephone calls referring to registration of "trade marks on the Internet" which in fact relate to registration of domain names and not trade marks. The companies in question may use names that appear to have relationship with the Trade Marks Registry and send out materials which resemble the official records of the Trade Marks Registry with details of the trade mark, the proprietor, etc.
These companies are neither related to nor connected with the Intellectual Property Department. They do not provide official trade mark registration services in the Hong Kong SAR. Your particular attention is drawn to the fact that the Intellectual Property Department does not provide registration services for "trade marks on the internet" and has not authorised any party to provide such services.
Please refer to "Differences between trade marks and domain names" for further information.