The following articles shall comprehensively guide to register trademark in Hong Kong which the trademark applicant should note prior to officially filing Hong Kong trademark.
| QUESTIONS | ANSWERS |
| What is trademark rights in HONG KONG: first to file or first to use? | The rule “first to use” is recognized popularly in Hong Kong |
| What is advantage of trademark registration in HONG KONG? | Registration is not mandatory to set up rights to trademark, but it bring many benefits for the owner: provides the first facie evidence of ownership, local and area protection of trademark, prevents the third party from using trademark illegally, permits the owner to license the third party and have a chance to generate royalties from licensing.
Besides, when infringement occurs, the owner do not have to provide evidence of using trademark and only need to give the proof of registration in order to deal with this infringement. Moreover, He can claim cancellation to any illegal actions of others. Therefore, If the owner only uses trademark without registering, he may spend more time, expense, effort to prove for ownership of trademark.
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| Definition of trademark in HONG KONG (i.e. What can be a trademark in HONG KONG)? | A trademark can be known as signs which include one of factors: words, names, devices, certain – three dimensional shapes, colors, slogans, trade dress, which is presented graphically or in black and white color, used to distinguish goods/services of other organizations/individuals.
However, a trademark can be sounds, smells, holograms and motions, but they need to be shown in the graphical form for the ability of distinctiveness. Take sounds as an example, sounds need to be represented as musical notations. Therefore, the graphic representation of the trademark must be clear, precise, intelligent, easily accessible, self-contained, durable and objective to enable determination of precise nature of the trademark. |
| Do we need to conduct trademark search in HONG KONG before officially filing trademark in HONG KONG? and Why? | It is not mandatory. However, it is very useful for applicant to determine the chance of success when filing a trademark application in Hong Kong. |
| What international treaties HONG KONG is a member? | Although Hong Kong is not recognized as a country, it is a special subject of international law system. Therefore, Hong Kong has rights to negotiate and sign in international treaties individually and has joined international treaties relating to intellectual protection, such as: Paris Convention, Nice agreement. Joining in these treaties brings better protection for the trademarks registered in Hong Kong totally |
| When is opposition to trademark application in HONG KONG? | Any parties have the right to file the opposition against an applied trademark before it has been granted the protection. |
| What rights do owners of trademark have after getting trademark registration in HONG KONG? | If trademark is registered successfully, the owner will be granted Trademark protection certificate by the entitled office.
From that, the owner will have following rights: + right to use trademark exclusively + right to oppose subsequence conflicting applications + right to claim cancellation against subsequence conflicting registration + right to license the third party use the trademark + right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction + right to obtain damages for infringement.
Besides, the holder can have rights to claim for priority in other countries signing treaties containing provisions on priority in which Hong Kong has joined. Therefore, a successful trademark registration brings many rights and benefits to the holder.
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| What is term of trademark in HONG KONG? | After the certificate is granted, the holder has rights to use their trademark, oppose the subsequent conflicting application, bring a cancellation action against a subsequent conflicting registration, sue for infringement against confusingly similar third-party trademark use, license other third parties to use the trademark, apply for seizure by customs authorities for importation of counterfeit goods and obtain damages for infringement. Moreover, 6 months before the certificate is expired, the holder need to renew their trademark protection certificate. |
| What is required documents for renewal trademark in HONG KONG? | The holder need to renew their trademark protection certificate with 10 years per time. |