Intellectual Property

A trademark is any sign which is capable of distinguishing your goods or services from those of others. It can include words, letters, characters, numerals, designs, colors, shapes of the goods or any combinations of these.

Once the trademark is registered, you will have the exclusive right to use the trademark in relation to the registered goods and services. You will have the right to take legal actions to stop unauthorized use of your trademarks in relation to the same or similar goods and services; and to seek compensation and other remedies.

A trademark should be distinctive and unique. It should not be similar to someone else’s registered trademark or a trademark being applied for. It should not be descriptive of your goods and services or descriptive of the quality or characteristic of your goods and services.

A search can be conducted at the online Trade Mark Search System of the Trade Marks Registry.

Generally, it can take around 6 to 8 months from the date of application to the grant of registration. It can take longer if the trademark application faces objection from the Trade Marks Registry or opposition from other parties.

The Trade Marks Registry may object an application for registration on the ground of lack of distinctiveness or similarity with an earlier application or other legal grounds. You should seek legal advice from an IP lawyer on whether and how you may overcome the objection(s).

After a trademark is accepted for registration by the Trade Marks Registry, it will be published in the Hong Kong Intellectual Property Journal. If within 3 months from the date of publication, someone files a notice of opposition against your application, then your application will be suspended until after the opposition proceeding is concluded. You should seek legal advice from an IP lawyer on whether you should withdraw your application or defend the opposition.

Currently the goods and services for the purpose of trademark registration are divided into 45 types/ classes. You must list the goods and services and their class number(s) in your application for registration of a trademark. Since a registered trademark may be cancelled for non-use for a period of 3 years or more, you should only select those goods and services on which you are using your trademark or will soon start using.

In Hong Kong, a registered trademark is initially valid for 10 years from the filing date of the application for registration.

It can be renewed for further 10-year periods as long as the trademark is still in use and the renewal fees are paid. A registered trademark may however be challenged in revocation proceedings if it is not used for a continuous period of 3 years.

TM stands for Trade Mark and indicates that a particular word, phrase, logo or sign is being used as a trademark. The TM symbol can be used whether or not the trademark is registered.

On the other hand, ® symbol means that the particular trademark is a registered trademark. In Hong Kong, it is against the law to use the ® symbol if the trademark is not registered in Hong Kong or elsewhere.

We would suggest that you try to collect evidence of the unauthorized use of your trademark, such as photographs of the products using your trademark, screenshots of the website which display products using your trademark, or even purchase a product which uses your trademark and retain the invoice and receipt for payment. This is important and can help to establish your case. You should then promptly consult an IP lawyer for legal advice on ways to stop the unauthorized use.

The Mainland China and Hong Kong have independent legal systems for trademark registration and enforcement. In fact, trade mark rights are territorial in nature. If your trademark is registered in Hong Kong only, it will not enjoy protection in Mainland China or elsewhere. Similarly, if your trademark is registered in Mainland China only, it will not enjoy protection in Hong Kong.

If you use your trademark in Mainland China, for example, your products bearing the trademark are sold or manufactured in Mainland China, you should protect your trademark by applying for registration in Mainland China.

Since most jurisdictions impose use requirements for registered trademark, you should register your trademark only in those countries or places where you use or will soon start using your trademark. It may not be a good idea to register your trademark in countries or places where you do not and will not use your trademark.

Your company name by itself is not protected as a trade mark despite your company is incorporated and registered with the Companies Registry. In fact there is a “Note” at the bottom of every certificate of incorporation which says “Registration of a company name with the Companies Registry does not confer any trade mark rights or any other intellectual property rights in respect of the company name or any part thereof”.

If you use your company name as a brand name of your goods and services, then you should register your company name/ brand name as a trademark.