Giving a business a name requires not only registering and incorporating it. There are plenty of other aspects that need to be taken care of as soon as you get your business ready and you have started to work.
Other than accounting, tax duties, and having all the requisite licenses and permits, you may also have to document other essential items. You may have made, for example, a logo or a symbol that can be used to create your identity or your business name, better known as a trademark. This trademark should also be licensed with the department. Why? much the same as registering your corporate name, it is equally as important to register your trademark.
You can read a step-by-step guide to the registration of a trademark in Hong Kong in this article!
What is a trademark?
Trademarks are symbols that help to distinguish the services and products for your consumers. This is important as every businessman understands that the secret to success is to separate them from the competition. In other words, this is what separates one’s products from others and produces a distinctive brand impression as well.
Terms (including personal names, for example), indications, patterns, letters, figures, numerals, figurative elements, colors, sounds, smells, the form of the products, or even their packaging may usually be used to make a trademark.
To be registered and recognized as a trademark, this sign must be capable of being portrayed graphically. In essence, the appreciation by buyers of your trademark ensures that by the recognizable branding of your products, you can develop your brand reputation. When your consumers continue to purchase the product, they are familiar with, it also helps create repeat sales.
Registered vs unregistered trademark
Usually, in Hong Kong, a registered trademark is a property right. This is the result of the trademark’s effective registration under the Hong Kong Trade Marks Ordinance.
The ® symbol tends to be standard to signify that your trademark is registered, while the unregistered trademark is sometimes affixed to the ™ symbol.
Remember that on an unregistered trademark, the ® symbol cannot be used, or it is considered a criminal act.
What can be registered as a trademark?
You have to come up with something special and distinctive to register a trademark. All sorts of symbols, markings, sentences, expressions, graphics, icons, and other indicators may be used in this. You can combine these as well and create your trademark.
Always remember that you have to be original, whatever you choose. In other words, you’ll have to find an alternative if someone else has claimed the same trademark.
It is also worth noting that a lot of people have the misunderstanding that it is possible to patent an idea. You need to know that an idea cannot, unfortunately, be trademarked.
In comparison, a patent would not have to be used beforehand. This is not a condition for applying for registration of a trademark.
How to register a trademark in Hong Kong?
Important points to remember before you apply:
It should be known that an application for registration of a Hong Kong trademark can be submitted online or physically lodged with the Registrar of Trade Marks.
An application to file a trademark in Hong Kong would usually include:
- A Trademark Registration Submission Form;
- Personal information, such as name and address, of the applicant;
- Specifications of the products or services on which the registration of a trademark is sought;
- A simple presentation of a possible trademark;
- The rules can call for additional documentation.
Applicants are advised to undertake a diligent search for a trademark to verify whether the trademark is either registered with the Registrar or is already registered with others upon previous application. Making sure that the trademark chosen to apply complies with clear conditions in compliance with the Trade Marks Ordinance. Applicants must therefore advise the claimant that the document must be filed in one of the official languages.
Application to the registration process
It is not that difficult to file a Hong Kong trademark. As we have summarized below, you should take a look at the following measures:
- They also will discuss the conformity with the Ordinance after you have submitted the complaint with the Registrar.
- It will be published in the Hong Kong Intellectual Property Journal as soon as your patent formalities follow all the criteria and there are no objections to the trademark. Notice that it will typically take you 6 months from the date of receipt of your application to the registration point.
- The next move is to see whether or not someone decides to claim your trademark.
- If no objection has been raised or the contrary conclusion has been concluded in favor of your trademark, the Registrar of Trade Marks shall issue a registration certificate for your trademark.
In case of objection to the trademark:
In the circumstance of a trademark objection (for example the new trademark is to be confused with another trademark), the applicants are then given a maximum of 6 months to meet all the registration conditions. It is therefore appropriate, under specific circumstances, to seek an extension of 3 months.
In addition to trying to resolve the objection by meeting all the requirements, claimants can also explore alternatives such as seeking an alternative trademark or asking for a hearing.
In case of opposition to the trademark
Opposition to a trademark by a third party can take place before a licensed trademark is attained. This suggests that someone in the Intellectual Property Journal has checked the trademark and found something confusing about his/her trademark. They then plan to send to the Registrar a note of resistance.
There are two alternatives for you in this scenario- the applicant:
- Withdraw your request (you are expected to cover the expenses of the other party in this case); OR
- File a counterstatement as an answer
- To prevail in the hearing office, both parties would then need to prepare evidence.
The Hong Kong Trademark Registry is very useful in offering search and provisional guidance services for those who seek to collect trademark information from official documents. You have to pay the filing charge for the registration of a trademark if you do so. The expense stands at HK$2,000. However, if there are any, there is an added cost of HK$1,00 per additional type of goods or services.
If you have searched for a trademark and finished your registration form (Form T2), you must provide a visual representation of your trademark and attach documentation of the fees covered.
Duration of a trademark
If a trademark is successfully licensed in Hong Kong, the trademark stays registered for a term of 10 years.
The registration of the mark should, logically, be renewed for an extended period of 10 years. There are renewal costs that need to be covered, though. If a person continues to register a trademark after 10 years, the trademark may last for an indefinite time.
Keep in mind, however, that a registered trademark may be contested in termination proceedings until it is used for a continuous duration of 3 years in Hong Kong. This is something that many firms neglect, but if you need to register for registration again, make sure you know this and save all the hassle.
So how would trademarks function across various jurisdictions?
A trademark that you have registered in the Hong Kong region is valid only in Hong Kong. If it is registered there, then it will be used there. You need to issue a completely separate trademark protection request if you want to have your rights protected (trademark) in other regions (other jurisdictions), including Mainland China. In other words, you need to start a separate trademark registration process for each distinct jurisdiction.
How to find out if something has already been trademarked?
You should undertake a trademark search and find out if something has been already trademarked. To do so you can search online for trademarks that have already been registered with the Trademarks Registry, the Department of Intellectual Property, and the Hong Kong SAR Government. Also, if you want to search for a trademark registered outside the Hong Kong SAR, you can do so on different websites, like:
- Intellectual Property Office (United Kingdom)
- The United States Patent and Trademark Office
- World Intellectual Property Organization
- National Intellectual Property Administration, PRC
- European Union Intellectual Property Office
It is straightforward that registration of trademarks is essential for any company. Even though registration of a trademark in Hong Kong is not compulsory, it is highly recommended for a company to have its trademark registered.
From its registration request, the entire process is not too complicated; however, it takes time to do so. It is advised that the Hong Kong Trademark Registration Application should be arranged as none of your business plans.
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