Trademark registration in Hong Kong have to undergo a strict procedure and examination process at all stages. Therefore, you need to pay attention to some note related to the application form, trademark extension period or trademark sample that you intend to register. These below notes may help you avoid some of the hassle in the process of filing a trademark application and avoid the return of your application by the National Office of Intellectual Property in Hong Kong.
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.
And what is the meaning of “TM” and ®? Are there any limitations to use these symbols? To answer this question: “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.
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.
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.
Trademark search in Hong Kong
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.
Will the registration of trade mark expired? Can it be renewed?
According to section 49 of the Hong Kong Trade Marks Ordinance Cap. 559, a Hong Kong trademark shall be registered for a period of 10 years beginning on its date of registration.
A Hong Kong trademark registration may then be renewed for further periods of 10 years in accordance with section 50 of the Hong Kong Trade Marks Ordinance Cap. 559. This states that a request to renew a Hong Kong trademark registration must be made, and a Hong Kong trademark renewal fee paid, before the expiry of the registration.
In other words, the deadline for paying the Hong Kong trademark renewal fees is the last day of the 10-year period beginning on the date of registration or the day after the previous 10-year period (depending on the age of the Hong Kong trademark registration).
When calculating Hong Kong trademark renewal fees deadlines, it’s important to note that the date of registration is taken to be the filing date (not the priority date) of the Hong Kong trademark registration, as stated in section 48 of the Hong Kong Trade Marks Ordinance Cap. 559.
The renewal application can be filed within the 6 months before expiry. To renew a Hong Kong trademark registration, a request for renewal must be submitted within the applicable deadline to the Hong Kong Intellectual Property Department (IPD) using official form T8. The Hong Kong trademark renewal fees must also be paid within the deadline.