What is a Trade Mark?
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.
Why Register Trade Mark?
Registering your trademark 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, China in relation to the same or similar goods or services without your consent, they may be liable for infringement of your trademark and you may take legal action. If you do not register your trademark, you may still use it but it is harder to prove that you are the "owner" of the mark and as such your protection is limited.
Classification of Trade Mark
Your application must include a list of all goods and services which you want to register your trademark with. You must list the goods and services in the class(es) they fall in. You should also state the number of class(es) they fall in. Currently, we are now applying the general classification under the 2018 version of the 11th edition of the Nice Classification by the World Intellectual Property Organization (WIPO), which effect from 1 January, 2018，and totally 45 classes.
The Classes 1-34 are for Goods and the Classes 35-45 are for Services.
You may find details of the Nice Classification http://www.wipo.int/classifications/en.
Once a trade mark is registered, the owner will enjoy an exclusive right of the trade mark, and protected by law. Without your consent/license, any company and/or individual that uses the registered trade mark or a similar trademark for business purposes is a tort, and the owner can take legal action to require the infringer to stop the infringement and even compensate the economic loss.
Trademark rights are strictly regional, and registered trademarks are only legally protected in the jurisdictions where they are registered. Hence, trademarks registered with the Intellectual Property Office of the People’s Republic of China or trademark registries of other jurisdictions do not automatically receive protection in Hong Kong. In order to obtain protection of a trademark in Hong Kong, you must register it in Hong Kong.
While the Trade Mark Office/Registry receive a trade mark application, a receipt will be issued, and an application number will be assigned.
Before examination of the registrability of the applied-for mark, the Trade Mark Office/Registry reviews details as filled in the application form, to see whether the required parts of the form have been filled correctly, the relevant information is correct and the required information is completed.
If any information is missing or incomplete, the Trade Mark Office/Registry will require the applicant to remedy the deficiencies within the specified period. If everything is right, the application process will go to the next stage (search and examination).
Search and Examination
While no deficiency is found, the Trade Mark Office/Registry will obtain searches of the previous trade mark records, to ensure there is no any identical or conflicting similar prior trade mark is pending or registered in respect of identical or similar goods/services in the similar or similar class.
Meanwhile, the Trade Mark Office/Registry will considering whether the applying mark fulfill the relevant trademark regulation.
The Examiner will then issue an examination report, either preliminary approve a trade mark application, or refuse a trade mark application with grounds and reasons.
Official Rejection and Refusal
If the application is rejected or refused, the applicant must make amendments, response or appeal within a specified period.
While the trade mark application is approved, it will be published on an official journal for opposition purpose. Some jurisdictions also require the applicants to make their own publication in public newspapers.
Opposition by third party
Any person may submit an opposition to a trademark application when it is published. As an applicant, you may choose to withdraw the trademark application or submit a counter-statement against the objection. Both parties will have opportunity to submit affidavits and evidence for the opposition within the specified period. After the Trade Mark Office/Registry receives and reviews all documents, a decision will then be granted.
Once the Trade Mark Office/Registry accepts registration of a trade mark, a registration certificate will be issued.
Documents required for Registration
Strategies that you may take, to protect your own trademarks: -