PROCEDURE FOR FILLING TRADEMARK IN HONG KONG

Introduction 

Hong Kong attracts investors from all over the world as an international financial centre with a free economic system, low tax rate, and comprehensive infrastructure and supporting trade services. Hong Kong's industries, such as service, financial, textile, electronic, jewellery, logistics, gift and premium, and toys, are well known around the world, and it is working to improve its international reputation. Many investors have registered trademarks in Hong Kong to protect their brands and increase their competitiveness.

Before submitting application

It should be noted that applying for trademark registration in this country can be done online or in person with the Registrar of TradeMarks.

Typically, an application to register a trademark in Hong Kong will include: 

• A trademark registration application form;

• The applicant's subjective information, such as name and address;

• Specifications of the goods or services for which the trademark must be registered;

• The trademark has a flawless appearance;

• The rules would necessitate the submission of additional documents.

The applicant is directed to conduct a thorough search of the proposed trademark to determine whether it has previously been registered with the Registrar or is the subject of a prior application by others. Check that the trademark for which you have chosen to apply meets the Trade Marks Regulations detailed requirements. Furthermore, the applicant must sign in one of the authorized languages in order to file the application.

From application to registration procedure

The process of registering a trademark in Hong Kong is not difficult, and the following points are summarized below:

The applicant must file a form T2 either online or in person. After filing the application with the Registrar, the examiner will review it to ensure that it complies with the Regulation. The trademark will be published in the Intellectual Property Journal of Hong Kong once the application procedures have met all requirements and there have been no oppositions. It usually takes at least six months from the time the application is received. The next step is to determine whether anyone wishes to oppose the proposed trademark.

If no opposition is filed, or if the opposite outcome is reached in favor of the proposed trademark, the Registrar of TradeMarks will issue a certificate of registration for the trademark.

Case 1: In case of objection to the trademark:

If the mark is objected to (for example, because it is likely to be confused with another trademark), the applicant is given a 6-month period to complete all of the requirements for the proposed trademark registration. It is also possible to request a three-month extension in certain circumstances. Furthermore, in an effort to overcome the objection by satisfying all conditions, the applicant will consider options such as pursuing an alternate trademark or requesting attendance at the hearing.

Case 2: In case of opposition to the trademark

A third party may be used to involve the opposition. It means that the applicant's trademark was reviewed in the Intellectual Property Journal and found to be somewhat confusingly similar to the opposer's trademark. The opposing party then sends an opposition notice to the Registrar.

In this case, the applicant has two options: withdraw the application or file a counterstatement as the applicant's reply. In addition, in order to succeed in the hearing office, both parties must prepare proof.

WRITTEN BY: Ankush