Trademark Registration & Intellectual Property Protection.
The Government of the Hong Kong is fully committed to protecting all kinds of intellectual property rights (IPR). This commitment is supported by comprehensive intellectual property legislation, vigorous enforcement actions, sustained public education efforts and close co-operation with intellectual property owners in fighting piracy and trademark counterfeiting.
Trade Marks can be used to identify brands, products or related services that are provided. The Trade Marks Ordinance provides for the registration of trade marks in Hong Kong. The certificate of registration of a mark in Hong Kong is prima facie evidence of subsistence and ownership of the trade mark right.
Hong Kong Patents and Registered Designs
Novel inventions can also be protected by patents in Hong Kong (which include standard patents and short-term patents) under the Patents Ordinance, Both types of patents protect products, substances, or processes which are new and inventive. The term of protection of standard patents is up to 20 years whereas the term of protection of short-term patents is up to 8 years.
New designs of physical products can be protected under the Registered Designs Ordinance though restoration. Civil action can be taken against infringement of an inventive patent or a new design pursuant to the new ordinances.
Full co-operation between the Government of Hong Kong and intellectual property owners is vital in the battle against copyright piracy and trademark counterfeiting activities. A key element of such co-operation is the assistance of intellectual property owners to provide evidence of ownership to facilitate enforcement and prosecution actions from the Government.
From time to time AsiaTax has regular meetings with representatives from the copyright industry to exchange intelligence and formulate effective anti-piracy strategies. An example is a discussion forum held in September 2012 between AsiaTax and the Hong Kong Digital Entertainment Association where AsiaTax explained to the industry representatives in detail the enforcement efforts and complaint procedures regarding the protection of digital entertainment and other copyright and trademark works.
What is a Registered Trademark ?
A trademark is a distinctive sign which distinguishes the goods or services from different undertakings, to enable consumers to identify the goods or services from those undertakings.
Is a trademark the same as a generic or product name?
A trademark is essentially different from a generic or product name. The trademark is a sign attached onto goods or packages of goods, to distinct the different manufactures/distributors; while the generic or product name identifies type, material and use of goods.
The trademark should be used together with the generic or product name, to enable consumers to identify the origin of goods; and the generic or product name of goods could be used alone to describe the kind of goods.
Must a trademark be the same as a trade name?
A trade name is consisted of words as part of the company name and could identify the representative undertaking itself, while a trademark could be consisted of words, figurative elements, colours, sounds, smells etc., and is only used to distinguish the goods or services from different undertakings. The undersigns could also use the whole or park of their trade names as the signs, i.e. trademarks of their goods or services.
Do i really need to register a trademark?
It is not obliged to have a trademark registered. However the owner of the trademark could be entitled to exclusive rights to use of trademark only if the trademark is registered. In another word, only if the trademark is registered, the exclusive rights to use of the trademark could be enforced.
As the owner of a registered trademark, What right do i have?
The owner of a registered trademark has exclusive rights to use of the trademark. That is, the owner has rights to use the trademark in relation to the goods or services covered by the trademark, or give permission to, or license other parties to use the trademark.
The owner also has rights to prevent other parties from using identical to or similar trademarks in relation to identical or similar goods or services.
What kinds of trademarks can be registered in Hong Kong?
Trademarks may be one or a combination of words (including personal names), indications, design, letters, characters, numerals, figurative elements, colours, sounds smells, the shape of gods or their packaging. However, only a sign capable of being represented graphically could be registered as a trademark in Hong Kong.
Is my trademark registered in other country or region also protected in Hong Kong?
The trademark registration could only provide territorial protection. That is to say, trademarks registered in one country or region do not automatically receive protection in the others. Hence, trademarks registered with the Chinese State Intellectual Property Office or Trademark Registries of other countries or regions do not automatically receive protection in Hong Kong. In order to obtain protection as registered trademarks in Hong Kong, applications for registration of trademarks must be filed in Hong Kong separately.
What is the process for registering a trademark in Hong Kong?
First of all, the trademark to be registered and the applied applied-for goods or services should be determined. It is suggested to conducting a trademark search to determine wether or not an identical or similar trademark has already been registered by others in relation to identical or similar goods or services.
Then, an application for registration of the trademark should be filed with the Trade Mark registry of Hong Kong. Upon receipt of the application, the Trade Marks Registry will conduct a trademark search and substantive examination on the trademark. Where all requirements for registration are satisfied, the application for registration will be published for opposition in the Hong Kong Intellectual Property Journal. Anyone may lodge an opposite to the application within the 3-month period beginning on the publication date.
If no opposition is lodged or the oppositions are defeated, the trademark shall be registered.