|
|||||
|
FAQ > Trade Marks > Trade Marks Ordinance (Cap. 559)
Trade Marks Ordinance (Cap. 559)
Transition from Trade Marks Ordinance (Cap. 43) to Trade Marks Ordinance (Cap. 559)
Q. If my address for service in Hong Kong, China has changed, what should I do to update the Registry's records? A: An address for service in Hong Kong, China must be filed with an application for registration of a trade mark. The Trade Marks Registry will send document or other things in relation to that application to the address for service provided. If there has been a change in your address for service, you have to file Form T5 or inform us in writing to update the Registry's records. If we have not been informed of the change, the document or other things sent by the Registry to your address for service which is no longer valid may be undelivered and we are unable to process your application further.
Q. Can I amend the representation of the mark applied-for? A: You can file a request on Form T5B to amend the representation of the mark applied-for by adding to it a representation of a registered trade mark only if all the conditions set out in section 46(2) of the Trade Marks Ordinance are met. Please ensure that the representation of the applied-for mark to be included in the amended mark in Form T5B is the same as the one in the original application. Any discrepancies (including colour) in the representation of the applied-for marks will render the Form T5B unacceptable and you will need to file a fresh Form T5B.
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 Trademarks Registry Work Manual - “Appeals against decisions of the Registrar”.
Application for registration of a trade mark Q: How do I fill in the application forms Form T2? A: Please read our "How to apply to register a trade mark in the Hong Kong SAR" before you fill in Form T2. The explanatory notes and sample forms give you information on how to fill in the forms. Q: What are the fees under the Trade Marks Ordinance (Cap. 559)? A: Please refer to the Table of Trade Marks Forms and Fees (Cap.559). Q: How do I classify my goods and services? A: Under the Trade Marks Ordinance (Cap.559), 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 trademark in Hong Kong, you can file the application directly with the Registry. If you cannot come to Hong Kong to file the trademark application, you can send the application with the application fee to us by post, or by courier. Q: How can I pay the fee? Which account can I send the remittance? A: You can pay by bank drafts which should be in Hong Kong Dollars, made payable to the Government of the Hong Kong Special Administrative Region and crossed. We do not accept telegraphic transfer (T/T) and foreign currency cheques. Q: Are there any special requirements in filling in the statement of specification of “goods and/or services”? A: Your application must include a list of all goods and services which you want to register your trademark with. You must list the goods and services in the class(es) they fall in. You should also state the number of class(es) they fall in. The goods and services should be classified according to the International Classification of Goods and Services (NICE Classification). Please visit http://www.ipd.gov.hk/eng/intellectual_property/trademarks/how_to_classify.htm to find out the class(es) that your goods and services falling into. Q: Do I need to file any documents to prove the applicant’s identity when submitting the application? A: It is generally not required. However, if we think that it is necessary when we examine the application, we will notify the applicant to file relevant documents. Q: If I cannot provide the address for service in Hong Kong, China, can I collect the letters from the Registry? A: According to the Trade Marks Rules, you must provide an address for service in Hong Kong. The address for service should be a valid residential address or business address. P.O. box address, “care of” address or email address is not acceptable. Q: How long will the whole trademark application process take? A: Upon receipt of the application, the examiner will process the application according to the Trade Marks Ordinance and Trade Marks Rules. If there is no deficiencies and no opposition, the whole process (from receipt of application to the application being approved) will take as short as six months. Q: Is it necessary to file an individual trademark application form for each item of goods and/or services? A: No. Each trademark application may include more than one item of goods and/or services. The application fee is HK$2,000 plus a fee of HK$1,000 per additional class (if any). Certification, Collective and Defensive trade marks Q. What is a 'certification mark'? A. Certification marks are registered by non-trading organisations certifying the quality of goods or services, for example the Hong Kong Tourism Board's 'Q Quality Tourism Services' mark. Q. What is a 'collective mark'? A. Collective marks indicate goods or services provided by members of a trade association. They are registered by trade associations with regulations that control the use of the mark by members of the association. Q. What is a 'defensive trade mark'? A. Defensive registration is available to protect marks that have become exceptionally well-known in Hong Kong. Q: What is a colour claim? A: A colour claim makes it clear what rights are claimed when you apply for registration of a mark. Your trade mark registration will protect you against infringing use by an identical or similar mark. In certain circumstances, a colour claim may help you to show that an infringing mark is similar and that your mark has been infringed. Q: If I have filed an application for registration without making a colour claim or filing Form T2A, can I subsequently claim colour as an element of the trade mark? A : You should claim colour at the time you file your application. After filing an application, applicant can only add a colour claim under limited circumstances. For details, please refer to the Trade Marks Registry Work Manual - "Colour Marks". Q: If I claim colour, do I need to state the particular colour in the claim? Can I simply put "the colour as shown in the representation"? A: You should state the particular colour claimed, for example "the applicant claims the colours red and green as elements of the trade mark". If you wish to state the colour by reference to Pantone numbers 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: If I am entitled to claim Convention priority for an application in Hong Kong, China, when should I do so? A : Although you can file an application for registration claiming priority at any time during the six-month priority period, you should file your application for registration as early as possible and you must make the claim to priority at the time you file. Once you file your application for registration, we will "provisionally" cite your mark against any earlier filed competing application that has not already been published: see Examination, below. If an earlier filed competing application has already been published in the Hong Kong Intellectual Property Journal and becomes registered, it will not prevent your application which has priority from being registered because it is not an "earlier trade mark" to be cited against your application. If the earlier filed application is still within the opposition period, that is within three months after publication or extension of that period, you can exercise your priority right by filing a notice of opposition to the application. Q: Do I need to file Convention priority documents ? A: You do not need to file Convention documents to support a claim to priority unless we ask you to do so. We will usually require Convention documents only where there is a potential conflict between your mark and an earlier filed application. Q: If I have claimed priority under section 41 of the Trade Marks Ordinance but deficiencies in my application result in my filing date being deferred beyond the six-month priority period, will I lose my priority? A: If the filing date given to your application is six months after the filing of your Convention priority application, you will lose your claim to priority. Q: If convention priority is based on my application filed in the Office for Harmonization in the Internal Market, what should be filled in the field “Country/Territory/Area” of Part 04 of Form T2 ? A: There has been a change of name of “Office for Harmonization in the Internal Market (OHIM)“ to “European Union Intellectual Property Office (EUIPO)” with effect from 23 March 2016. Since the Trade Marks Registry will use the name “European Union’ in a trade mark record to reflect the claim to priority based on an application filed in EUIPO, please fill in the name “European Union” in the field “Country/Territory/Area”, Part 04 of Form T2 (paper form). For electronic Trade Mark Form T2, please continue to choose “European Trade Mark Office” in the field “country, territory, area” of Box 04. The name “European Union” will be displayed subsequently in the online trade mark record. 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 2016 with the goods or services classified in accordance with the tenth edition of the Nice Classification and the class number concerned has been changed under the eleventh edition of the Nice Classification, what shall I do? A: If you file the corresponding application for registration in Hong Kong on or after 1 January, 2017, the goods or services concerned need to be classified in accordance with the eleventh edition of the Nice Classification. For example, if the first Paris Convention application or WTO application contains the goods “medicated soap” which falls under Class 3 under the tenth edition of the Nice Classification, when you file the corresponding application for registration in Hong Kong on or after 1 January 2017, you need to put the goods “medicated soap” under Class 5 in accordance with the eleventh edition of the Nice Classification. The difference in the class numbers of certain goods and services due to the use of the eleventh 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. Deficiencies in application for registration Q: When will I know that my application for registration has been given a filing date? A: We aim to check for deficiencies shortly after receiving the application. If your application satisfies the filing date requirements, we will inform you of the filing date given to your application. If there are deficiencies in your application, we will send you a notice to remedy them. Q: Will deficiencies in my application for registration affect my filing date? A: You must remedy all deficiencies in your application for registration within two months after the date of the Registry's notice to remedy them. The two months cannot be extended. We will accord your application a filing date if it includes a request for registration of the trade mark, the applicant's name and address, a statement of the goods or services, and a representation of the trade mark. If your application does not include this information, we will not be able to accord a filing date until it does. If other information in the application is deficient, it will not affect your filing date provided you remedy the deficiencies within the two months. Q: Can I file an application for registration without paying the application fee? A: Filing an application without the specified fee is a deficiency under rule 11(1)(b). You have to remedy the deficiency within two months after the date of the Registry's notice. Q: If my trade mark consists of a Japanese character but I have not completed Part 03 of Form T2, is this a deficiency? If it is, will it affect the filing date of my application? A: You need to fill in Part 03 (see rule 120). If you fail to do so when you file your application, we will ask you to provide the information later, but this will not affect the filing date of your application. Q: Under section 38(3) of the Trade Marks Ordinance, an applicant for registration has to provide a statement of use of the mark. How can I meet this requirement? A: You can confirm the statement of use of the mark in Part 07 of paper Form T2 or Part 10 of electronic 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? A: You do not have to file a description of the applicant. However, you should check that the applicant is a legal entity capable of owning property before you file an application for registration. Q: If I have not remedied deficiencies in my application within the two-month period, can my application proceed? A: If you have not remedied deficiencies in your application within the two-month period, your application fails and we will send you a notice informing you that your application 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 Forms T3 and T3S. Please ensure that the representation of the applied-for mark(s) in the Form T3S is/are the same as the one(s) in the original application. Any discrepancies (including colour) in the representation of the applied-for marks will render the Form T3S unacceptable and you will need to file a fresh Form T3S. 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 Hong Kong, China, 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. Examination process Q: What happens to my application for registration after I file it? A: There are four stages in the process of examining an application for registration:
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 deficiency checking of my application for registration? A: Shortly after you file an application for registration, we will check that the information about your name, address, the representation of the mark, the goods and services and other information is complete and correct. If the application is not complete and correct, we will send you a deficiency notice so that you can correct the deficiency within two months. The deficiency notice will tell you whether the deficiency affects the filling date of your application and which Registry form you should use to file your correction. Q: What is involved in examining my application for registration? A: We examine your application to decide if it meets the requirements of registration under the Trade Marks Ordinance. To be registrable, your mark must have a distinctive character in respect of your goods and services. It cannot be a mark that consumers would expect other traders would use generally to describe or promote the goods and services. Additionally, to be registered, your mark cannot be similar to an earlier registered mark or application, for similar goods or services. We search our electronic register of registered marks and applications (http://ipsearch.ipd.gov.hk) to determine whether there are marks that prevent your mark from being registered. If your mark does not meet the requirements for registration, we will send you an opinion under rule 13(1) of the Trade Marks Rules explaining the objections and giving you six months to resolve them. Q: Are there 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 includes flags or emblems protected by international convention (to search, see the WIPO link at 'online services') or the national or regional flag or emblem (search for 'national flag' and 'regional flag' at the Bilingual Laws Information System (https://www.elegislation.gov.hk) . 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. If it does not meet the requirements, we will send you an opinion under rule 13(4) of the Trade Marks Rules, explaining the objections and giving you three months to resolve them by taking any of the steps explained under What steps can I take if my application for registration does not meet the requirements for registration?, above. Alternatively, you can file a request for a hearing before the three-month deadline expires. Merging applications for registration Q: What conditions apply to merging applications? A: Trade Marks Rule 28(2) provides for merger of separate applications into a single application if the applications:
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: 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.
Numbering of Division, Merger and Partial Assignment Q: Will a new number be assigned to an application or registration after they have been merged, divided or partially assigned? A: New number will be assigned. This diagram illustrates the numbering for a Trade Mark which has undergone the following:
Q: If someone has made an application to register a trade mark that is similar to my mark and for similar goods or services, how can I oppose the application for registration? A: If a trade mark is accepted for registration by the Trade Marks Registry, it will be published in the Hong Kong Intellectual Property Journal. If you wish to oppose the application for registration, you have to file an opposition notice (Form T6) within 3 months beginning on the publication date. The opposition notice should state the grounds on which you oppose. The grounds are stated in the Trade Marks Ordinance . A usual ground of opposition is that the mark applied for is confusingly similar to an earlier mark for similar goods or services but you will need to consider, with the advice of a solicitor or trademark agent, the grounds relevant to your opposition. Within time limits, the applicant will file a counter-statement and you and the applicant will have an opportunity, within time limits, to file evidence in support of the opposition and application. After we have received all the evidence, a hearing will take place. After the hearing, the hearing officer will make a decision and the successful party in opposition proceedings will usually be entitled to an award of costs. Q: What happens if my application for registration is opposed? A: If someone opposes your application, you will need to consider whether to withdraw your application or to continue in the opposition proceedings. Advice from a solicitor or trade mark agent will enable you to assess your position and the costs involved in withdrawing or continuing. 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. back to topProtecting trade marks in Hong Kong and Mainland China Q: What strategies should I adopt to protect my trade mark in Hong Kong, China and separately, in Mainland China? A: Some strategies that you should consider:
Q: How can I legally use a name for business in Hong Kong? A: If you carry on business in Hong Kong through a company, partnership, as a sole trader, or under a business trading name, you must register the name at the Business Registration Office: http://www.ird.gov.hk Registering a business or company name in Hong Kong does not give you the right to use the name for activities that infringe someone else's trade mark or pass off someone else's business goodwill and reputation. Before you register a name or carry on business under it, you should search the trade marks register (http://ipsearch.ipd.gov.hk/trademark/jsp/index.html), the companies register (http://www.icris.cr.gov.hk/csci/), trade directories, telephone directory (business) yellow pages and the Internet, to check that your business activities will not infringe someone else's trade mark or pass off someone else's business goodwill and reputation. You can also instruct a lawyer or agent specialising in intellectual property to make searches for you. Q: Am I liable for infringement or passing off if I use someone else’s registered trade mark without authorisation? A: You will infringe, if without authorization you use someone else's registered trade mark or a confusingly similar mark, for identical or similar goods and services. Even if your goods and services are different, you may be liable for infringement if your mark is similar to a well-known trade mark. You will also be liable in a legal action in court for 'passing off', if you make deceptive use of someone else's trade mark, business or company name to mislead consumers and damage the business goodwill and reputation.
A: Yes, the unauthorised use of another person's trade mark as part of a trade name or company name is trade mark infringement. You can take action against the infringement under Hong Kong law if the infringing activity takes place in Hong Kong, or under Mainland law if the infringing activity takes place in the Mainland.
Registered trade marks - alteration Q: Section 55 says that only the name and address of the owner can be altered but rule 54 contemplates alteration to the mark itself. What is the position? A: If an owner's name or address appears in the trade mark itself, for example in a label mark, the trade mark can be altered by a request filed under rule 54. Q: The old Ordinance allowed a proprietor to alter his registered mark if its identity would not be substantially affected. Why is this now restricted to marks that contain the name and address of the owner? A: An owner does not need to alter his mark on the register to use it in a slightly varied form. He can still proceed against infringers and defend his registration against revocation for non-use, if he uses his mark in a form that differs only in elements that do not alter the distinctive character of the registered form. If an owner wants to make a more than a minimal change to his mark, he can make an application to register the varied mark. If the owner's name or address appears in the mark and the name or address changes, it is recognised that the owner has a particular interest in altering his mark on the register. Registered trade marks - use of ® Q: Can I use the ® with my registered trademark? A: Yes, if you have registered the mark in Hong Kong, or elsewhere for your goods or services. If you have not registered your mark, it is an offence to use the ® and you may be liable on conviction to a fine. 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. Renewing and restoring registrations Q: When should I renew my trade mark? A: You should renew your trade mark on or before its expiry date. You can check the expiry date of your trade mark by using the on-line search (http://ipsearch.ipd.gov.hk). A mark registered under the Trade Marks Ordinance (Cap. 559) shall be registered for a period of 10 years beginning on its date of registration. For example, if the date of registration for your mark is 10 September 2003, it shall be registered for an initial period of 10 years until 9 September 2013. You should renew your mark during the six-month period ending on the date of expiry, i.e. latest by 9 September 2013. The registration of the mark may be renewed for further periods of 10 years. In the above example, if you renew your mark for a further period, the next expiry date will be 9 September 2023 (assuming all the above dates are business days). Q: Can I restore my trade mark registration, if it has expired and has been removed from the register? A: There is a deadline for restoring your registration. You must file a request to restore the trade mark within six months after the date the mark is removed (rule 35). The six-month period cannot be extended. Q: If my registration in class 42 is reclassified into more than one class of services, what is the renewal fee? A: The reclassified registration becomes a "multi-class" registration. The fee for renewing the registration is HK$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. Revocation of registration for non-use Q: If I take proceedings to revoke a registration on the grounds of non-use under section 52(2)(a) of the Trade Marks Ordinance (Cap.559), from when do I count the three-year period of non-use? A: Under section 52(8) of the Trade Marks Ordinance (Cap.559), the three-year period can begin at any time on or after the actual date on which particulars of the trade mark were entered in the register under section 47(1). Q: How do I apply for registration of a three-dimensional shape mark? A: In addition to Form T2, you need to fill in Form T2A. In Part 13, you need to include a statement claiming the shape as the trade mark, or (if your mark includes additional elements, such as words or colours) as an element of the trade mark and give a description of the mark. For example, "The mark consists of the three-dimensional shape of [ ] with the words [ ] and the device [ ] appearing on it. The applicant claims the shape of [ ] as an element of the mark." If a single view cannot represent the shape accurately, you can show several views. You should mark each view, for example, 'front view' , 'side view' and 'top view'. Q: I can register a smell mark if it is distinctive. What does this mean? A: A smell is unlikely to be distinctive as a trade mark for goods that are bought for their smell, or goods that have a smell, for example, shampoo, cosmetics, tea, washing powder, etc. Additionally, a smell will not be distinctive unless it is recognised by consumers as a trade mark, and not a sales gimmick. In other words, does the smell identify the product as the applicant's and no one else's because, for example, of a prominent advertising campaign of the smell as a trade mark for the product? Q: Can I describe my smell mark by a chemical formula? A: A trade mark must be clearly depicted in the application in sufficient detail to permit a proper examination to be made of the trade mark. It must also be clear to members of the public looking at the electronic register exactly what is being applied for. A chemical formula without words describing what the smell is will not be readily intelligible to persons searching the register of trade marks. Time limits - examination and opposition Q: The Trade Marks Ordinance (Cap.559) sets time limits for examination and opposition. How do they apply? A: Applications for registration filed on or after the commencement of the Trade Marks Ordinance (Cap.559) and applications converted to the Trade Marks Ordinance (Cap.559) are subject to the time limits of Trade Marks Ordinance (Cap.559) for examination and opposition. Applications for registration filed before the commencement date of Trade Marks Ordinance (applications under Trade Marks Ordinance (Cap. 43)) and pending on the commencement date are subject to the time limits for examination under the Trade Marks Ordinance (Cap. 43). Applications under Trade Marks Ordinance (Cap. 43) advertised on or after the commencement date are subject to time limits of Trade Marks Ordinance (Cap.559) for filing notice of opposition and counter-statement (rule 121). Other time limits for opposition proceedings are governed by the Trade Marks Ordinance (Cap. 43). See the table on "Transitional arrangements - Opposition to trade mark applications under Trade Marks Ordinance (Cap. 43) and Trade Marks Ordinance (Cap. 559) ". Q: 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. Q: I intend to file evidence of distinctiveness acquired by use of my mark to establish that the requirements for registration are met. Can I extend time for filing the evidence? A: Under Trade Marks Rule 13(2), you have six months (say, until 12 December 2003) to file written representations, including a statutory declaration evidencing distinctiveness acquired by use of your mark. If you need to extend the time for filing written representations including a statutory declaration, you must file an extension request on or before 12 December 2003. If you file the statutory declaration on or before 12 December 2003, or on or before the expiry of an extended period of three months (assuming time is extended under rule 13(3)) and the Registrar after considering the declaration, considers that the application does not meet the statutory requirements for registration, an opinion under rule 13(4) will issue: see the Trade Marks Registry Work Manual on Examination of applications. If you are unable to file the statutory declaration on or before 12 December 2003 but you file written representations by that date, an opinion under rule 13(4) will issue and you will have three months to establish that the requirements for registration are met, by filing the statutory declaration or taking other appropriate action. Any extension request under rule 13(6) must be filed within the three-month period, or within the period as extended. A request for extension of time under rule 13(3) should be supported by full reasons and will be granted on the established principles relevant to the exercise of the Registrar's discretion: see the Trade Marks Registry Work Manual on Applications for extension of time. 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. 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 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: 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 Hong Kong, China 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 Hong Kong, China or own any goodwill in a business in Hong Kong, China. However, protection by registration (defensive registration excepted) must be sustained by use. 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 Hong Kong, is entitled to an injunction against an infringing use of the mark for identical or similar goods which is likely to cause confusion. Defensive trade mark protection (for exceptionally well-known marks) is available. Transition from Trade Marks Ordinance (Cap. 43) to Trade Marks Ordinance (Cap. 559)
Q: Must associated trade marks be assigned together under the Trade Marks Ordinance (Cap. 559) ? A: On the commencement of the new Ordinance, association of existing registered marks ceased to have effect (see section 2(4) of Schedule 5). Trade marks can now be assigned independently even though they were associated trade marks under the Trade Marks Ordinance (Cap. 43) . Q: I want to assign my trademarks. What do I need to do? What are the fees? A: If you want to assign your trademarks to another legal entity, you can file Form T10 (HK$800) to request for recordal. The Form T10 and the prescribed fee can be downloaded from “Trademarks Forms and Fees (Cap. 559)” at ../../../eng/forms_fees/trademarks_559.htm . Please note that the Trade Marks Registry will only process the recordal of assignment but not the assignment documents. Converting applications under Trade Marks Ordinance (Cap. 43) to the Trade Marks Ordinance (Cap. 559) 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: If I have converted my application for registration to the Trade Marks Ordinance (Cap. 559), can I file evidence of distinctiveness acquired before the commencement date of the Trade Marks Ordinance (Cap. 559) to support my application? A: A converted application is treated as filed on the commencement date of the Trade Marks Ordinance (Cap. 559). You can file evidence of acquired distinctiveness through use before the commencement date to support your converted application. Q: Under the Trade Marks Ordinance (Cap. 43), I had two addresses for service, one for the application for registration and one for the application to record a registered user. Can I keep the two addresses for service? A: Now that the Trade Marks Ordinance (Cap. 559) is in operation, you can retain, or file, only one address for service for all proceedings relating to your application for registration or registered mark. 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 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. Workflow on transitional matters 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 diagram illustrates the arrangement. |
|||||
|
|||||
