Hong Kong Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided. An applicant must provide details of an address for service in Hong Kong. If the applicant is not domiciled in Hong Kong, he may apply for registration through a local agent/attorney/representative, who must provide details of a local address where they reside or carry on business activities. Please note that a post office box or "care of" address is not acceptable.
Joint applicants are permitted in this jurisdiction.
Either actual use or intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
description of trademark;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of use;
statement of intention to use;
official filing fee.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
description of trademark;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of use;
statement of intention to use;
official filing fee.
The list of goods and services in this jurisdiction may specify:
the relevant Class heading;
a list of the common commercial names for the specific goods or services of interest.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
none.
In this jurisdiction, the following type of registration is available:
national. Although the People's Republic of China (PRC) resumed sovereignty over Hong Kong as of July 1, 1997, and the PRC acceded to the Madrid Agreement and to the Madrid Protocol in October 1995, the PRC and Hong Kong still maintain independent trademark registration systems. Local registration is the only way to register a trademark in Hong Kong.
This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
Applications can be filed online at the following URL: http://www.ipd.gov.hk/. Electronic filing is available but only where the e-filer has a prior arrangement with the national office and there is a Hong Kong address for service.
The official file cannot be accessed online.
Applications are officially searched as to prior trademarks.
B. Priority
Under Trade Marks Ordinance (Cap.559), the priority date is only the date for establishing which rights take precedence where there are conflicting applications and no longer determines the date of registration of a trademark. A trademark applied for is registered as of the filing date of the application for registration, not the date of the convention application or WTO application, unlike the position under the repealed Trade Marks Ordinance (Cap. 43).
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.
For a multi-class application, the applicant must pay additional class fees if the goods/services fall into more than the following number of classes: one.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction: an applicant who is not a citizen of Hong Kong or not domiciled in the jurisdiction can file directly if a Hong Kong address for service is provided;
the applicant, but only if a citizen of or domiciled in the jurisdiction: an applicant who is a citizen of Hong Kong or is domiciled in the jurisdiction can file directly if a Hong Kong address for service is provided;
a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.
IV. APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available to the public:
online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
application number;
application date;
goods/services;
priority claim information;
representation of trademark.
B. Examination
Applications are examined in respect of:
formalities, i.e., for compliance with the filing requirements;
classification, i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity, i.e., that descriptions are clear, and are understandable;
descriptiveness, i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness, i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness, i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
conflict with an earlier registration or prior filed application.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and cited registrant will be accepted as evidence permitting registration of the application.
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may not be requested
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application (While an earlier filed application cannot be formally cited against a subsequent conflicting application, it will form a bar in that the subsequent conflicting application cannot proceed further until the earlier application proceeds to registration or is withdrawn);
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application (An earlier application can also be used to oppose subsequent applications upon registration. Rights begin on the application date.).
D. Opposition
An application can be opposed when it has been published for opposition in the Hong Kong Intellectual Property Journal.
The following can be grounds for opposition:
relative grounds (based on proprietary rights, e.g., conflicting prior registration);
absolute grounds (based on non-proprietary rights, e.g., descriptiveness, non-distinctiveness);
bad faith (e.g., deceptiveness, disparagement);
breach of copyright;
rights under Art. 6 bis (notorious or well-known mark) of the Paris Convention;
rights under Art. 6 septies (registration in the name of the agent or other representative of the proprietor of the mark) of the Paris Convention;
rights in a company name;
rights under Art. 8 (trade names) of the Paris Convention;
registered design rights;
rights in a personal name;
unauthorized use of specially protected emblems or national insignia.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: the date on which particulars of the application for registration are published in the Hong Kong Intellectual Property Journal.
The opposition period ends on the following date: three months from the date of publication of the application for registration in the Hong Kong Intellectual Property Journal and is extendible for two months provided that the request is filed within the opposition period.
The following parties may oppose an application:
any interested party;
the owner of an earlier right;
a licensee.
Oppositions cannot be filed online.
