Registration & Protection

Registration & Protection

The short answer: a mark only gains exclusive rights in a country or region once the Registry there registers it. Rights are strictly territorial: protection in Hong Kong comes only from a Hong Kong registration (Trade Marks Ordinance, Cap. 559). The Hong Kong process takes about 6 months and costs HK$2,500 for the first class, in four stages: formality examination, substantive examination, publication and the certificate.

What a trademark is

A trademark is any sign capable of distinguishing one undertaking's goods or services from those of others and capable of being represented graphically. A registered trademark is one the Registry has accepted and registered.

An application must list the goods or services by class under the Nice Classification, then be filed with the Registry on the prescribed form. Applicants may also instruct an experienced firm to handle it.

Territorial protection

Once registered, the owner holds the exclusive right to the mark and the law protects it. Any business or individual using the registered mark, or a similar one, in the course of trade without consent infringes that right; the owner can take legal action to stop the use and claim losses.

Those rights are strictly territorial: a registration protects the mark only in the country or region where it was granted. A mark registered elsewhere — even with a national trademark office — is not protected in Hong Kong. Protection here requires a Hong Kong registration under the Trade Marks Ordinance (Cap. 559).

The application stages

A Hong Kong trademark goes through four stages:

1. 1Formality examination
2. 2Substantive examination
3. 3Publication
4. 4Issue of the registration certificate

Three things to keep after registration

• Keep using it: years of non-use can support a cancellation application by someone else. Keep invoices, packaging and advertising as evidence of use.
• Watch the journal: similar applications must be opposed within the 3-month period; missing it leaves only the costlier revocation or invalidation routes.
• Renew on time: a Hong Kong registration lasts 10 years and must be renewed before expiry; late renewal brings a grace period and extra fees.

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