What counts as a trademark?
A trademark usually takes the form of a logo or sign that would serve as distinctive corporate identity. It may consist of text and numbers, as well as more intangible elements such as colour, sound, smell and shape.
The full definition according to the Intellectual Property Department (IPD) of Hong Kong is as follows:
A 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 these. A sign must be capable of being represented graphically in order for it to be registered as a trademark.
How much variation is allowed in one application?
A group of no more than 4 trademarks can be filed as a series in a single application. For the trademarks to qualify as a series, they have to:
- Resemble each other in their material details;
- Differ only in matters of a non-distinctive character; and
- Their differences must not substantially affect the identity of the trademark.
Some examples of variations that are accepted in a series of trademarks include:
- The same word in different scripts or fonts;
- The same word represented with or without a border, underlined or not underlined;
- The same Chinese words in traditional and simplified characters;or
- Variations in colour, if colour is only a non-distinctive feature of the mark;and others.
In the case of different designs, multiple applications can be made for more comprehensive protection.
Who processes the applications for trademarks?
Trademark applications in Hong Kong are processed by the IPD examiner.
How long does it usually take to process an application?
It usually takes around 10 months for one application.
On what grounds may an application be rejected?
An application may be turned down for several reasons, for example:
- If the trademark is not distinctive;
- If the trademark describes the goods and services to which it belongs or contains the use of a geographical name;
- If the trademark is a well-known term in the line of business it represents; or
- If the trademark is found to be the same as or similar to another trademark that has already been registered or applied for by another applicant in respect of the same or similar class of goods or services.
For details, one may refer to the absolute grounds and relative grounds for refusal outlined by the IPD. Applicants are also advised to study the IPD guidelines and conduct a trademark search online free-of-charge before the application to check if the trademark to be applied for resembles another registered one.
When do you own your trademark?
Applicants officially own the trademark on the filing date of application. In case of disputes, ownership can also be claimed by evidence of use.
Can you start using a trademark while it is pending approval by the IPD?
Yes. A trademark can also be used before it is filed for trademark application.
What is the difference between ™ and ®?
The ® symbol can be used for registered trademarks only. Unregistered trademarks may use the ™ symbol but not the ® symbol.
I have registered my business with the Business Registration Office and my company name with the Company Registry. Can I use my company name as a trademark?
Business names, company names and trademarks are governed by different laws and systems in Hong Kong. Successful business or company registration does not equal the registered status of the trademark. Business or company owners are advised to file for trademark registration separately for full protection of their intellectual property rights.
In case of disputes, what ways are there to appeal or to resolve them?
When the IPD objects to an application, they will indicate the criteria that the trademark fails to meet and suggest ways of overcoming the objection. The applicant will have 6 months to rectify the application.
If the objection remains, the applicant will have 3 months to satisfy the registration requirements, or the applicant may take the matter to court. A decision will be issued by a hearing officer after considering all evidence for and against the trademark. The applicant is advised to consult a lawyer in advance in case of disputes.
Published in Asia Law Network in 11 July 2018; updated on 1 December 2020
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