Trademark is a sign that distinguishes the goods and services of one
trader from those of others. Typically a trademark can be words
(including personal names), indications, designs, letters,
characters, numerals, figurative elements, colours, sounds, smells,
the shape of the goods or their packaging or any combination of the
above. A sign must be capable of being recognized literally or
graphically in order for it to be registered as a trademark.
Purpose of Trademark Registration
Registration of trademark is not compulsory in Hong Kong. Whether a
trademark has been registered or not, it is already been protected
under the common law. The trademark owner must prove its loss and
the justification of the value of the trademark. However, if the
trademark is properly registered under the Trademarks Ordinance, the
trademark owner has the right to prohibit the others to usage its
trademark on any products or service before obtaining his approval.
This can prevent other people using its trademark on their products
or services. The right of a trademark owner is more easily enforced
if the trademark is properly registered.
Once the Intellectual Property Department (“IPD”) receives a
trademark application, an examination officer will be assigned for
processing the application. If there is sufficient information
provided in the application and no objections to the trademark
registration, then the whole application process can take as little
as 6 months from receipt of application to approval of the
registration. Upon receipt of the trademark application, “IPD” will
issue a receipt and notify the application number. Before examining
the application, “IPD” will carry out a throughout check of the
application form(s) and the attachments for completeness and
If there is missing information, “IPD” will ask for supplementary.
Some minor amendments will not affect the filing date of the
application, e.g. the class number of the applied trademark.
However, major changes to the application will not be accepted, for
example, changes to the graphical representation of the trademark.
After completing the submission of all information of application,
the process will go to next stage, i.e. search and examination.
After checking the completeness of information and confirming no
missing information, “IPD” will conduct a search of the trademarks
records to see if the same or similar trademark has already been
registered or been applied for by another registrant in respect of
the same or similar class of goods and services.
“IPD” will also see if the trademark satisfies with the registration
requirements set out under the Trademarks Ordinance. The examination
officer will then issue a written opinion either on the grounds for
objection to the trademark or confirming acceptance for
registration. If the application does not meet the requirements for
registration, “IPD” will object to the trademark registration and
applicant should meet the requirements within 6 months. A further 3
months extension may be granted.
Your trademark will be published in the Hong Kong Intellectual
Property Journal unless an opposition to it has been lodged. An
opposition notice should be filed within 3 months from the
registration date. As the applicant, you may withdraw your
application or respond to the opposition by filing a
counter-statement within certain time limits. When all the evidence
has been received by the “IPD”, a hearing will take place before a
hearing officer who then makes a decision. If you withdraw your
application or lose in the proceedings, you may have to bear the
legal fees of the other party.
Once your trademark has been accepted for registration, the “IPD”
will enter the details of the trademark into the trademarks register
and will issue a certificate of registration to the owner. Notice of
the registration will be published in the Hong Kong Intellectual
Property Journal and the registration of your trademark will date
back to the filing date of your application. That means the rights
of the owner of a registered trademark take effects from the filing
date of the application.
Validity of a Registration
The validity of a registered trademark is 10 years. Subsequent
renewal is allowed and unlimited.
We provide free-of-charge preliminary consultancy and assessment.
Quotation will be given after preliminary assessment on the
company’s situation and the scope of services required.