Hong Kong: Registration of Trade Marks. Service offer

A trade mark is a sign that distinguishes the goods and services of one trader from those of others. Typically, a trade mark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of these.

Designs can be registered for a wide range of products, including computers, telephones, CD players, textiles, jewellery, and watches.

Registered designs protect only the appearance of products, for example, the look of a computer monitor.

Computer software is protected under copyright law. Registered design owners have the right to prevent other trading companies from manufacturing, importing, using, selling or hiring the product’s design.

What is copyright? In general, copyright is the right given to the owner of an original work. This right can subsist in literary works such as books, computer software, musical works, dramatic works such as plays, artistic works such as drawings, paintings and sculptures, sound recordings, films, broadcasts, cable programmes and the typographical arrangement of published editions of literary, dramatic or musical works.

Copyright works made available on the Internet are also protected.

Unlike intellectual property, patents, trade marks and industrial designs need not be registered as copyright in order to get protection under the law of the Hong Kong SAR. In fact, there is no official registry in Hong Kong for registration of copyright works.

Trade marks registered in Hong Kong are not covered by the Madrid System[1], but the relevant legislative changes have already been made and entered into force in 2020. The Madrid Protocol is expected to be fully implemented in 2024, in accordance with the plans of the Hong Kong government.

It is necessary to make a request for preliminary advice on registrability. The Intellectual Property Department may consider the registrability request for up to 2 months, but in practice, in the case of simple graphic objects, it usually happens faster and takes no more than 3 weeks.

Application for registration of a trademark. Filling in and submitting the forms will take no more than 2-3 working days. The following is required for that:

• Trade mark in colour;
• Words, if any, in any language;
• Description of the colours, shape (3-dimensional), sound, smell;
• List of goods and/or services to be covered (one trade mark may combine several goods and/or services).

• before submitting applications at both stages, we will need to agree the classes of goods and/or services in accordance with the Nice Classification[2], for each class an additional fee is required;
• only minor changes can be made to the trade mark application after it has been submitted;
• if you submit copies of copyright-protected materials, including a sample of a sound or movement mark in the form of an audio/video file, please ensure the necessary consent from the copyright owner has been obtained;
• the application fees are non-refundable (only in exceptional circumstances), regardless of the outcome of the application.

[1] The Madrid System is an international trade mark registration system based on the Madrid Agreement of 1891. Filing a single application and paying one set of fees allows applying for protection in up to 124 countries.

[2] The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services used for the registration of marks.