Hong Kong Trademark Introduction
Trademark protection rule
Under the combination of “First-to-file” and “First-to-use” rule, not only protection is granted to whom come first to register the trademark, but also those have been using the mark honestly and concurrently before any registration. Practically, disputes may arouse if you have not registered your brand and there are other entities using a similar trademark with you.
Under the principle of territoriality, trademark could only be protected in registered regions. Hence, protection is legally valid and limited only within Hong Kong if the applicants register his/her trademark there, and vice versa. Businesses that fail to register their trademark in Hong Kong will have very limited legal protection in Hong Kong against trademark infringement. Corporation should apply overseas trademark if they want to expand their business, so as to avoid the infringement of trademark against or by a third party.
Renewal of registration
Noted that trademark will be removed from registration if applicants do not apply for renewals of registration within a specific period.
Hong Kong Trademark Application Procedure
Application procedure normally takes 6 – 9 months, which included 3 months of publication for opposition.
Below is the procedure of applying Hong Kong trademark,
Hong Kong Trademark FAQ
Hong Kong Trademark Application
Q1：What are the requirements if I want to apply Hong Kong trademark?
A1： Applicant, as an individual or business entity, has to apply through Hong Kong Intellectual Property Department (HKIPD).
Q2：What do I need when I apply the trademark?
1. Application form：Should clearly state the basic information of applicants, including but not limited to name, address, nationality etc.
2. Classes of goods and services applied
4. Copies of ID documents (Individual application) / BR certificate (Corporation application)
Q3：Can I use the (R) symbol even I have not registered the trademark?
A3：(R) symbol could only be used on registered trademark. Any unregistered trademark with (R) symbol, would commit a criminal offence. Applicants can use TM symbol, with no protection rights, as a public announcement for his/her unregistered trademark.
Hong Kong Trademark Objection
Q1：What is trademark objection?
A1： An objection of trademark application after the examination of Hong Kong Intellectual Property Department (HKIPD) on applicant’s trademark.
Q2：Why my trademark is objected by HKIPD?
A2：Reasons include (1) High similarity with another registered trademark, (2) Violation of trademark law, (3) Indistinctive characteristics, (4)Generic trademark etc.
Q3：What should I do if my trademark is objected?
A3：HKIPD shall notify the applicant of the objection in writing, with clearly state the reason of objection. Applicants can file evidence in support of application within 3-months from receipt of notification. Should you have any inquiries about applying for a review, please feel free to contact our IP consultant anytime.
Q4：How much do I need to apply for a review?
A4：Reviewal fee varies based on the case situation. Should you have any inquiries about applying for a review, please feel free to contact our IP consultant anytime.
Hong Kong Trademark Opposition
Q1：What is trademark opposition?
A1： Anyone file an opposition notice to Hong Kong Intellectural Property Department (HKIPD) within the 3-month period beginning on the publication date.
Q3：What should I do if my trademark is opposed by a third party?
A3：Applicants can file evidence in support of application within 3-months from receipt of notification. Should you have any inquiries about trademark opposition or procedure, please feel free to contact our IP consultant anytime.
Q4：Is it possible not to submit evidence to HKIPD when I receive the opposition notice from HKIPD?
A4：Applicants have to file evidence in support of application, or else will treat as withdrawal of application.
Q5：What should I submit if I want to oppose a trademark?
A5：You have to submit the following documents, including but not limited to:
1. Opposition form
2. Reason of opposition with clear evidence.