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A Guide to Trademark Registration in Hong Kong
1. What is a Trademark?
2. What is a Trade name?
3. What is the difference between Trade Name and Trademark?
4. Why Register your Own Trademark?
5. Why register a Hong Kong trademark?
6. Are there different kinds of trademarks?
7. How many classifications of trademarks?
8. Can we use a trademark before it is registered?
9. How to Register a Trademark in Hong Kong?
10. How Much Does it Cost to register a Hong Kong Trademark?
11. What documents needed for a trademark application?
12. What are the follow-up services and cost?
13. Why Choose Tannet as a Trademark Agent?
14. Contact us
A trademark is one of the family members of intellectual property family, which also includes patent and copyright. Intellectual property not only adds value to the business assets, but also performs business distinguishing and corporate image. Before we go for trademark registration, make sure whether your focus is on brand name promotion, market protection or both.
1. What is a trademark?
A trademark is any word, phrase, symbol, design, or any combination thereof, used to distinguish the products or services of one person or organization from those of others. Trademarks come to represent not only actual products and services, but the reputation of the producer. As such, they are considered valuable intellectual properties and a key component of the goodwill of a business. A registered trademark can be protected through legal proceedings from misuse and imitation.
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2. What is a trade name?
trade name is the name under which you conduct business, whether it is your own name, the name of a corporation, a partnership or a name adopted for a segment of that business, i.e. a division of a company. The trade name can be registered as a trademark if it is also used as a trademark that is, used to identify wares or services.
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3. What is the difference between trade name and trademark?
A business name, by itself, is not a trademark. A trade name is the name under which you conduct business, while a trademark is used to identify wares or services, A trade name can be a container of a trademark, or the same as a trademark. You are advised to consider also having a search of trade names done before you go any further. Trade names, as discussed previously, are often also used as trademarks, even if they are not registered as such.
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4. Why register your own trademark?
A company has a lot of reasons to register a trademark; here are only a few for your reference:
(1). Your identity in the market place - Registering your trade mark means that you have the exclusive right to use the trademark in relation to the goods and services for which the mark is registered. If other traders use it in Hong Kong, in relation to the same or similar goods or services without your consent, they may be liable for infringement of your mark and you may take legal action. If you do not register your mark, it is harder to prove that you are the owner of the mark, so that your protection is limited.
(2). Brand name distinguishing: Success, in today's business world, depends largely on the message you convey and project. You may have an excellent product or service to offer, but if people can't pick you out easily in the crowd, you will probably be overlooked in favor of a firm with a stronger presence.
(3). Protect market share：A key way of protecting a corporate identity is through trademark registration. Registration of your trademark is legal title in much the same way as a deed is title to a piece of real estate. Whether you are just starting out on a business venture or have been in the field for a long time, it pays to know about trademarks. It's part of working strategically in a fast paced world.
(4). Make intangible assets tangible: A smart businessman will attach great importance to intellectual property,
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5. Why register a Hong Kong trademark?
Hong Kong is a freest trading port in the world, it is popular to have triangular trading through Hong Kong, One can register a Hong Kong trademark for the market protection purpose when the international transfer of goods is going on here. In Hong Kong, acceptance of application is effective, and it takes only a few months to process the application if the trademark application is qualified.
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6. Are there different kinds of trademarks?
Yes, there are three basic types. Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services which meet a defined standard set by a governing organization. Distinguishing guise identifies the unique shape of a product or its package.
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7. How many classifications of trademarks?
There are forty-five classifications of trademarks ranging one sector to another, before we go to the trademark office, we should be aware of which category our trademark falls in. For detailed, please refer to the website www.iptannet.com.
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8. Can we use a trademark before it is registered?
Yes, you can use a trademark before it is registered in Hong Kong. But you’d better be fully aware of the difference between a registered trademark and an unregistered trademark. A registered trademark is one that is entered on the Trademark Registry. You are not required to register your trademark. In Hong Kong using a mark for a certain length of time cannot establish ownership, so registration is highly recommended. Registration is direct (prima facie) evidence of your ownership and enables you to more easily protect your rights, should someone challenge them. In a dispute, the registered owner does not have to prove ownership. Use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it. Keep in mind also that a registered trademark is a valuable asset for business expansion through licensing and franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.
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9. How to Register a Trademark in Hong Kong?
You register a trademark by filing an application with the Intellectual Property Department of Hong Kong Government. The application then goes through a stringent examination process to make sure that it meets all requirements of the Trademarks Law. The processing steps are as
Logo/mark design => preliminary search => filing with trademark office => acceptance => search and research => examination =>public advertisement => allowance and registration; or opposition and lawsuit
(1). Logo or Mark Design and preliminary search: Design and search to work out a distinguishable logo and mark.
(2). Trademark Application/ Filing with the Intellectual Property Department of Hong Kong Government
(3).Filing Date: When your application arrives at the Trademarks Office, the office staff will check to make sure it is complete. If anything is missing, they will write to ask for comments or information. Once this process is finished, the office will acknowledge receipt of the completed application and assign a filing date, that is, the date that your application is officially filed. (Do not confuse this date with the registration date.) This filing date is particularly important for proposed use trademark applications; it takes one to three months to finish this preliminary processing. After the formal filing you may not make any modifications. Any changes, however, would entail the trouble and expense of another filing. To avoid this take great care in preparing the application.
(4). Search and Research: Trademarks Office staff conducts a thorough search of the records to verify that your trademark cannot be mistaken for anyone else's. They also conduct research to determine whether his mark fulfills all the criteria of the Hong Kong Trademarks Law, in other words, that it does not fall into any of the categories discussed in the section, "Making sure your trademark can be registered." The results are considered by the Trademarks examiner assigned to your case.
(5). Examination: A critical element in the evaluation of your application is the comments of the examiner. The examiner studies the data and decides whether your application can be accepted. If there are questions, the examiner will notify the applicant in writing of the objections. You will be given an opportunity to respond. If your answers still fail to satisfy the examiner, you will receive a letter informing you that this application has been refused and the reasons why. In the event of refusal, you have the right to appeal to the Hong Kong Court. We can not stress strongly enough the need to have examiners questions responded to by a knowledgeable agent. Prepublication search - Let's suppose your application for the trademark has been approved for advertising in the Trademarks Journal. The Examiner could find no grounds to disqualify it. Does that mean registration is completed? No. There are still hurdles to overcome. The Office does another search, called a pre publication verification, to ensure that in the intervening months no one has registered or applied for registration of a trademark those conflicts with yours. The Office will again correspond with you if necessary seeking comments on any such trademark.
(6). Advertisement - Suppose the Pre publication Verification has not unearthed any new objections. Now your application is ready for advertisement in the Trademarks Journal. This journal contains details about every application which has been approved for advertisement. When an application is advertised, it allows members of the public an opportunity to raise objections to pending applications prior to registration. It is another means of weeding out trademarks that conflict with those of other owners.
(7). Opposition: Any person with valid grounds for doing so may oppose a trademark as advertised in the trademarks Journal. An opposition must be made within two months of the publication date by either filing a statement of opposition together with a fee of $1600(including government fee), The Trademarks Office will dismiss an opposition it considers to be frivolous. The exact fee is determined by different conditions.
(8). Allowance and Registration: If there is no opposition, or if an opposition has been decided in your favor, the application is allowed. The Trademarks Office will not consider any further challenges.
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10. How much does it Cost to register a Hong Kong Trademark?
There are three sets of fees you should be prepared to pay.
(1). Preliminary search fees. Even though you can use the internet to perform a number of searches on your own you would be well advised to have a professional searcher to conduct the task. Private search HKD300, Government search HKD1000
(2). Registration Fee by Hong Kong Intellectual Property Department is HKD1,300, and HKD650 per additional class .
(3). Tannet service fee is HKD2,500,
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11. What documents needed for a trademark application?
The principal document in the registration process is your application form. A separate application for each trademark to be registered, although one application may cover both wares and services or a number of wares or services, must be filed. If your application is based on the current use of a design then three specimens of the mark as used should be submitted at the time of filing. The appropriate application form filled out by you or your agent.
Your written authorization is needed, if someone other than you or your agent has signed the application;
(1), Your ID duplicate or your company's business license
(2), A clear picture of your design
(3), The items (services or products)
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12. What are the follow-up services and cost?
(1).Trademark renewal – Hong Kong trademarks should be renewed in ten years by filing the renewal documents with the Hong Kong Trademark Registry. It costs RMB1,800 Yuan.
(2). Trademark transfer – Any trademark can be transferred after it is registered. It costs RMB1,800 Yuan.
(3). If your trademark is distinguished and want to extend your business to Hong Kong, Tannet can take care of all the formalities on trademark authorization.
(4). Trademark lawsuit – if one comes across opposition or legal action from the opposites, Counter-opposition and legal respond can be arranged by Tannet.
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13. Why Choose Tannet as a Trademark Agent?
Tannet, a trademark agent, works on behalf of the clients. Tannet has filed more than 20,000 trademark applications with the Trade Marks Offices worldwide. An experienced, competent trademark agent, who is well briefed, can save your problems that are caused by such obstacles as a poorly prepared application or inadequate research. If you intend to register marks in other countries, the use of a trademark agent such as Tannet is strongly recommended. You may file on you own, but it is highly recommended that you hire a registered trademark agent to do so on your behalf.
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14. Contact us
If you have further queries, don’t hesitate to contact Tannet anytime, anywhere by simply visiting Tannet’s website www.tannet.net, or calling Hong Kong hotline at 852-27826888 or China hotline at 86-755-82143697, or emailing to tannet-overseas@hotmail.com . You are also welcome to talk with Overseas SME Service Department online by simply joining our MSN: tannet-overseas@hotmail.com.
Declaration:
The information contained in this document and on this website is not intended as legal advice; it is intended to provide general information only. While we have done our best to give you useful and accurate information, laws and procedures change often and are subject to interpretation.
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