TRADEMARK REGISTRATION IN HONGKONG
I. REQUIREMENT DOCUMENTS
a. Name, address and nationality of applicant;
b. The country and filing date of the priority application if the right of priority is claimed.
c. Original Power of Attorney;
d. The trademark details and clear copy of the mark, logo to proceed with the application;
e. The designated class/goods thereof;
f. Priority documents if the right of priority is claimed
II. GENERAL TIME FRAME OF TRADEMARK REGISTRATION IN A SMOOTH CASE
The approximate time from application to registration (for a regular prosecution, without opposition) is about 6 months, assuming that no Office Action is needed.
III. VALIDITY TERM
The duration of the protection of a trademark right is 10 years from the date of registration of the trademark.
The registration of the trade mark can be renewed for further periods of 10 years each, with the payment of renewal fees. The registration of a trade mark can therefore last indefinitely if it continues to be renewed.
However, a registered trade mark may be challenged in revocation proceedings if it is not used in Hong Kong for a continuous period of 3 years.
IV. PROCEDURE
1. Deficiencies Checking
Before beginning to examine application, IPD (Intellectual Property Department) will carry out a thorough check of the application form(s) and any attachments. This is to see if all the necessary parts of the form(s) have been filled in, if they are correct and if any required information is missing.
If any required information is missing, IPD will ask the applicant to provide the information to remedy the deficiencies within two months from the date of Registry’s notice. Some amendments are very minor and will not affect the filing date of application, e.g. the class number of the applied for goods. Others are more important and will therefore affect the filing date, e.g. applicant has not provided the representation of his/her trademark. Also, major changes to the application will not be accepted, for example, changes to the representation of the trademark.
If everything is in order the application will proceed to the next stage.
2. Search & Examination
After the deficiencies checking has been completed and all is found to be in order IPD will conduct a search of the trademarks records to see if the same or similar trademark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services.
IPD will also see if the trademark satisfies the registration requirements laid down in the Trade Marks Ordinance. Some of these criteria are listed in the “Before you apply” section in the “How to apply to register a trademark in the Hong Kong SAR” although this is not a comprehensive list. The examiner will then issue an opinion in writing which will either lay out the grounds for objection to the mark or confirm the mark is acceptable for registration.
3. Publication
Once the trademark has been accepted for registration, it is published in the Hong Kong Intellectual Property Journal
4. Registration
Once the trademark has been accepted for registration, the Registrar of Trade Marks will enter the details of the trademark into the trademarks register and it will be issued with a certificate of registration. Notice of the registration will be published in the Hong Kong Intellectual Property Journal and the registration of the trademark will date back to the filing date of application.
In case you require more information or require advice on trademark in HongKong... as well as other IP matters, please do not hesitate to contact us via:
Email: info@lawfirmelite.com
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