1. What is a Trade Mark ?
Trademark, protected by the Trade Marks Ordinance and the Common law doctrine in Hong Kong, is a sign used to distinguish goods and services between traders. Normally, a trademark may consist of words, numerals, figurative elements or a combination of colors. In Hong Kong, a trademark can be registered if it can be presented in a graphical manner. After the registration of a trademark, the company or user can then enjoy the exclusive right to use, license or sell it for the goods and services for which it is registered. You can register your trademark through trademark office/agents like us which can then help you go through the process of the application of this intellectual property.
2. What is the difference between company registration and trademark registration?
Company registration and trademark registration are very different because separate Hong Kong laws and systems are used to regulate company names and trademarks respectively. If your company or business had your company name registered at the Company Registry or your business name registered at the Business Registration Office, this does not mean that you are entitled to the trademark rights in Hong Kong, because you still need to have your trademark registered at the Trade Marks Registry to do so.
Having a business registration certificate or a company registration certificate does not grant your business or company the legal rights to use the company name or trademark in the promotion of your goods and services. For further enquiries, please feel free to email or phone our intellectual property office for more information. Our office will provide you with more details about trademarks and their differences between company registration and trademark registration.
3. Why register a trade mark?
A trademark can be the most important asset of a company because it represents the goodwill and reputation of your company. It is your responsibility to protect a trademark and prevent it from being used by other people and take advantage of the goodwill you have built all these years and earn profit. Although there is protection of trademarks by passing off alone, it is only the last resort because using this protection requires your company to bring a multitude of proofs (such as long-term advertisements) used to establish goodwill. Registration of your trademark ensures that you really have the right to take legal action and claim for damages when other businesses or companies use your trademark in Hong Kong without your consent. Also, by registering your trademark, you can then have the exclusive right to use the trademark in relation of the goods and services for which the trademark is registered.
4. What are the benefits of registering trade marks?
1. Trademark registration gives you the exclusive right to your trademarks.
After your trademark registration at the Trade Mark Registry in Hong Kong, you will receive a Trademark certificate which is the best proof that you own the trademark. You will then have the exclusive right to use your trademark in promoting and dealing your companies’ or your business’ goods and services that it covers in Hong Kong.
2. Trademark registration allow you to take legal action against anyone who infringes your right.
After your trademark registration, it is so much easier to take legal action against any person who uses your trademark without your consent in Hong Kong. Trademark registration also blocks other businesses from registering the same trademark on your company’s related goods or services. Trademark registration also gives you a strong, good ground to prevent other companies (such as your competitors) to register nearly identical trademarks in an attempt to take advantage of the goodwill and reputation you built in Hong Kong.
3. Trademark registration entitles you the right to use the ® symbol.
If you use the ® symbol without registering for a trademark, it is an offence. However, after your trademark registration, your company can then apply the ® symbol next to your company’s trademark and warn others against using the trademark.
4. A Registered Trademark is the most valuable asset in your company.
Your registered trademark is a symbol of your company’s reputation and goodwill that distinguishes you from other competitors. It is a very important company asset which can be used in making valuation of your company in M&A and Initial Public Offering cases.
5. Trademark registration reduces your worries.
After registering your trademark, not only will you feel safer about the protection of your trademark, you will also be less worried about unintentionally infringing a third party’s trademark.
5. Can any trade mark be registered?
No. A mark must have some element of distinctiveness which serves to distinguish goods/services sold under the mark from those of others. It is difficult to register a trade mark that describes your goods (eg. Radio) and services (eg. Electrician). It must not be a sign that other traders may wish to use to promote or describe their goods and services, nor can it mislead the public about the nature of your goods and services. For more information, please read the following question below : “What are the precautions of registering a trademark?”.
6. What are the precautions of registering a trademark ?
When your application goes to the Trade Marks Registry, the examiner will determine whether your application for trademark can be allowed or not. The set of guidelines used in the examination of the application is based on the criteria set up by the Trade Marks Ordinance. To prevent your application from being rejected, you should consider the following factors before applying to register a trademark. For further enquiries, feel free to contact our office.
1. Can your trademark be easily distinguished among others?
Is your trademark so unique that it easily stands out from the crowd? Can your trademark set yourself apart from other traders who provide similar or even different goods and services? During the process of examining the trademark application, the examiner may object the trademark if it does not satisfy the ‘distinctiveness’ quality. To provide you with more tips to succeed the application, the Trade Marks Registry considers newly coined words such as ‘SPOREZAP’ for spectacles, or simply everyday words that are not related to your goods and services, like ‘JASMINE’ for a sports company as distinctive.
2. Does your trademark merely describe the characteristics of your service?
If your trade mark is merely a description of the goods or services your company provides — including the traits, objectives, uses, quality, or mere demographic descriptions — the Trade Marks registry will very likely object your trade mark registration and application. Likely trade mark registration rejections include “Quality Tote bags”, “New York cheesecake”, “fresh and nice” etc.
3. Is it a common technical term in your field or line of business?
If your trademark name is a common, well-known term in your company’s type of goods and services , such as “V8” for vehicle engines, this trademark registration will very likely be rejected by the Trade Marks Registry.
4. Is your trademark similar to a registered trademark by another company?
Even if there are no registered trademarks that are the same as yours, your trademark registration may still be rejected if your trade mark looks or sounds similar to another registered trademark, or another trademark being applied for.
5. Trademark search
You are advised to conduct a trademark search to check if your trademark is the same as another registered trademark, or another trademark under application process. You can search for these trademark information online via http://ipsearch.ipd.gov.hk. Searching for similar or identical trademarks is important to ensure that your trademark registration application will be successful.
7. How long does the process take?
The total process takes about 6 to 9 months.
Within six months after filing the trade mark application, Trade Mark Registry will issue an examination report to analyze whether the trade mark can be registered. After all the criteria raised by Trade Mark Registry have been met, the trade mark application will be published on government journal for three months. When there is no one opposes the trade mark application within the three month period, the trade mark application is then completed.
8. Will the registration of trade mark expired? Can it be renewed?
The initial trade mark registration is effective for 10 years. It can be renewed for 10 years each time.
9. What is the meaning of “TM” and ®? Are there any limitations to use these symbols?
“TM” stands for “Trade Mark”. It indicates that the public can recognize the specific brand, goods and services through this trade mark. The “TM” symbol can be used either or not the trade mark is registered. The symbol ®” means that this trade mark is a registered trade mark. It is illegal to use the symbol ®” if you have not registered the trade mark in the local Registry.