Category Archives: Articles

leaflet-download

Guide to Understanding Certification Marks in Hong Kong SAR

Posted on by

Guide to Understanding Certification Marks in Hong Kong SAR

What is a Certification Mark?

A certification mark is a specialized category of trademark used to guarantee that a product or service meets specific defined standards.

It certifies key attributes including:

  • Origin: e.g., made in Scotland.
  • Materials or Ingredients: e.g., whisky made exclusively from malted barley.
  • Manufacturing Process: e.g., distilled and matured strictly according to legal regulations.
  • Quality or Performance: e.g., meeting minimum aging and maturation standards.
  • Other Characteristics: Any other quality standards approved by the certifying authority.

Who Can Apply?

Only qualified entities that meet strict regulatory requirements can apply for a certification mark:

  • Do not trade in or supply the goods or services they are certifying.
  • Possess adequate expertise and resources to certify products consistently.
  • Have established reputation or standing in the relevant industry.

Example Candidate: Scotch Whisky Association (SWA) — An industry association representing Scotch whisky producers worldwide.

Non-candidates (Ineligible Entities): Entities that trade in or profit directly from the certified goods cannot apply, including individual producers/distilleries, brand owners certifying only their own products, distributors, importers, retailers, or companies with a direct commercial interest.

Core Principle: Certification marks must remain strictly independent and free from any conflicts of interest.

How to Register a Certification Mark in Hong Kong SAR

  1. Prepare Regulations for Use: Define detailed standards, conditions, and rules for using the mark. These regulations must be filed with the Trade Mark Registry within 9 months of application.
  2. Submit a Declaration of Competency: Provide verifiable evidence that the applicant can reliably certify the goods/services, showing technical expertise, resources, and oversight mechanisms.
  3. Application Review: The Registry examines both the regulations and competency declaration. This process may take 20+ months due to legal examination requirements.
  4. Supervision and Control: The applicant must actively monitor the mark's use to ensure all certified products strictly comply with rules (e.g., SWA ensures only whisky distilled in Scotland under strict laws bears the 'SCOTCH WHISKY' mark).

Benefits of a Certification Mark

  • For Consumers: Gives immediate confidence in product authenticity, geographic origin, and quality.
  • For Brand Owners & Associations: Provides robust legal grounds to take direct enforcement action against unauthorized or counterfeit use.

Case Example: Before registration, SWA had to rely on 'passing off' common law actions, which were costly, complex, and slow. After registration, SWA can enforce rights directly using the registered certification mark.

Official Registration Costs

Item Official Fee (HKD)
First Class HKD 8,800
Per Additional Class HKD 1,800
Note: This article is for informational purposes only and does not constitute legal advice.

 

Trademark Ownership After Company Dissolution – Hong Kong vs Singapore

Posted on by

Safeguarding Intellectual Property: Trademark Ownership After Company Dissolution in Hong Kong vs. Singapore

When a business winds down or is struck off the registry, intellectual property (IP) is frequently overlooked. While physical inventory, bank accounts, and real estate are carefully liquidated or distributed, valuable intangible assets like registered trademarks are often forgotten. Under the corporate laws of both Hong Kong and Singapore, once a company is formally dissolved, any remaining undistributed assets—including trademark rights—may become unclaimed property, legally termed bona vacantia, and automatically vest in the government. This means your brand, logo, and the goodwill attached to them could suddenly belong to the state, frozen from commercial use.

 

LEGAL FRAMEWORK & OWNERSHIP TRANSITION

In both jurisdictions, intellectual property is strictly classified as property that forms part of an insolvency or dissolution estate. In Hong Kong, registered trademarks are recognized as intangible property under the Trade Marks Ordinance (Cap. 559). Upon dissolution, these assets vest in the HKSAR Government as bona vacantia, managed by the Government Property Agency (GPA). Similarly, Singapore treats trademarks as personal property under the Trade Marks Act 1998. Upon a company's dissolution, these assets vest in the Singapore Government as bona vacantia, with the Ministry of Finance (MOF) – Insolvency Office acting as the relevant authority. Under either government's ownership, the trademark becomes commercialized deadwood—frozen and legally unusable by the original founders, affiliates, or third parties unless recovered through formal, complex channels.

 

COMPARATIVE ANALYSIS: HONG KONG VS. SINGAPORE

While both regions follow a similar common-law approach to unclaimed property, the exact pathways to recovery, statutory provisions, and administrative bodies differ. The table below outlines these crucial operational and legal distinctions:

 

STRATEGIC RECOMMENDATIONS

Relying on post-dissolution recovery is a high-risk strategy. Government bodies exercise strict, discretionary oversight over bona vacantia claims. The process is lengthy, expensive, and legally uncertain. To avoid losing your hard-earned brand equity, Accolade IP recommends taking proactive measures before any dissolution procedures begin:

 

Essential Checklist Before Dissolution

Conduct a Comprehensive IP Audit: Identify all registered trademarks, patents, designs, and pending applications owned by the company slated for dissolution. Execute Trademark Assignments: Draft and legally execute assignment documents transferring ownership to a parent company, sister company, individual founder, or a trust.

Record the Transfer: Promptly file the appropriate recorded forms with the respective IP registries—Form T6 with the Hong Kong IPD, or Form CM6 with IPOS in Singapore.

Protect Your Brand in Southeast Asia: First-to-File Determines Who Owns the Rights

Posted on by

Protect Your Brand in Southeast Asia: First-to-File Determines Who Owns the Rights

What is the First-to-File Rule?

In many Southeast Asian countries, trademark rights go to the first person to register, even if someone else has been using the brand longer.

Act early—protect what’s yours!

Early registration safeguards your brand against copycats, legal disputes, and missed business opportunities.

Why First-to-File Matters:

  • Protects your brand before competitors
  • Stops unauthorized use by copycats
  • Strengthens your legal enforcement rights
  • Increases the value of your business
  • Makes international expansion smoother
First-to-File Countries in South East Asia (SEA): Country First-to-File? Key Notes
Brunei Yes First-to-file principle enforced strictly
Cambodia Yes Registration secures exclusive rights
Indonesia Yes Limited protection for unregistered marks
Laos Yes Legal rights granted mainly to registrant
Malaysia Yes Registration required for full protection
Myanmar Yes Registration is key for protection
Philippines Yes Rights mainly from registration, not prior use
Singapore Yes Fast processing, strong legal enforcement
Thailand Yes Registration dominates disputes
Vietnam Yes Early registration essential for enforcement

 Benefits of Registering Your Brand First:

  • Exclusive Ownership – Only you can use your trademark legally.
  • Business Asset – Trademark registration increases your brand’s value.
  • Legal Advantage – Easier to stop infringement and copycats.
  • Peace of Mind – Avoid disputes over who used it first.
  • Regional Expansion – Registration makes entering SEA markets smoother.

 

Take Action Today! Secure your brand before someone else does.

Register across Southeast Asia and safeguard your business, your reputation, and your future growth.

Note: This leaflet is for informational purposes only and does not constitute legal advice

[AIPHK] HK Trademark Opposition

HK Trademark Opposition

Posted on by

Hong Kong Trademark Opposition

Q: Who may file an Opposition to a trademark application?

Section 44 of the Trade Marks Ordinance (Cap. 559) provides that “any” person may give notice to the Registrar of opposition to the registration of a trade mark as an Opponent. The only qualification to this broad statement is that the notice must be given in writing within the prescribed period, in the prescribed manner, and shall contain a statement of the grounds of opposition.

Q: Is it compulsory to defend my application when being opposed by others?

As a trademark Applicant, it is compulsory to defend your application by filing a counter-statement to avoid abandonment. You can also provide evidence in the form of a statutory declaration or affidavit to support your argument. NOTE: The foregoing estimates are approximate only. For
opposition cases, settlement of the matter can occur relatively early in the proceedings or at any point thereafter (in case both parties reach a deal).

Q: How long is the process time and What is the procedure?

The main steps to be taken by Applicant and Opponent are set out below:-

HK Trademark Opposition Procedure Flow Chart

Quotation (HKD)

Filing a formal opposition as Opponent: $5,800

Filing a counterstatement as Applicant: $8,800

Filing evidence:
Basic fee: $8,800
Notarization: $1,500
Evidence review:
$80 per page

Filing extension of
time (once): $500

Hearing
(non-mandatory):
$60,000 or more

ASEAN E-COMMERCE & TRADEMARK PROTECTION

Posted on by

Do You Need a Trademark to Start Selling?

You can start selling on platforms such as Shopee, Lazada, and TikTok Shop without a registered trademark.
However:
Once you build your own brand or scale your business, a trademark becomes essential in practice.

PLATFORM REALITY TODAY

Selling Generic Products
  • No trademark required
  • Low barrier to entry
  • Highly competitive, price-driven market
Selling Branded Products
Must show:
  • Trademark ownership, or
  • Authorization from the brand owner
Without proof:
  • Listings may be removed
  • Accounts may face restrictions
PLATFORM REQUIREMENTS (OVERVIEW)
Platform Program Key Requirement
Shopee Shopee Mall Brand ownership / authorization
Lazada LazMall Trademark (strongly required in practice)
TikTok Shop Official Shop Trademark or authorization

WHY TRADEMARK REGISTRATION MATTERS

  • Protect Your Brand
    • Remove counterfeit and copycat listings
    • Enforce your rights directly on platforms
    • Prevent unauthorized sellers
  • Qualify for Official Store Status
    • Verified brand badge
    • Priority placement in search
    • Access to exclusive campaigns
  • Boost Visibility & Sales
    • Better exposure through platform algorithms
    • Participation in mega campaigns
    • Access to ads and marketing tools
  • Build Consumer Trust
    • “Official store” = authenticity assurance
    • Higher conversion rates
    • Stronger brand positioning
  • Control Your Distribution
    • Decide who can sell your products
    • Protect pricing and brand reputation
  • Enable Regional Expansion
    • Secure your brand across ASEAN markets
    • Support licensing and distribution deals
    • Build long-term brand value

RISKS OF NOT HAVING A TRADEMARK

Failure to secure trademark protection may result in: No Effective Enforcement
  • Difficulty removing infringing listings
  • Platforms may reject complaints
Brand Hijacking
  • Third parties may register your brand first
  • You may lose rights or be forced to rebrand
Listing Takedowns Against You
  • Others can file complaints against your store
  • Your products may be removed
Limited Platform Access
  • No entry to Shopee Mall / LazMall / Official Shop
  • Reduced visibility and trust
Weak Business Value
  • No ownership of brand as an asset
  • Harder to expand, license, or attract investors

Note: This leaflet is for informational purposes only and does not constitute legal advice

Intellectual Property Enforcement Action Hong Kong

Intellectual Property Dispute Enforcement in Hong Kong

Posted on by

Intellectual Property Dispute Enforcement in Hong Kong

A Practical Guide for Brand Owners & Businesses

Protecting your brand in Hong Kong is both practical and effective, with clear legal pathways available to address infringement and enforce your rights.

What Rights Are Protected?

Hong Kong protects both registered and unregistered rights, including:

  • Trade marks
  • Copyright
  • Registered designs
  • Patents

Unregistered rights may also be enforced through passing-off actions

Your Enforcement Options

1.     Cease & Desist (First Step)

A fast, cost-effective way to stop infringement.
Often results in a binding undertaking without litigation.

2.     Civil Action

Handled by the
High Court of Hong Kong

  • Formal legal proceedings against infringers
  • Typical timeline: 15–30 months

Remedies include:

  • Injunctions
  • Damages / profits recovery
  • Delivery up of infringing goods

3.     Urgent Relief

Available in serious cases:

  • Injunctions
  • Search & seizure orders
  • Asset freezing

4.     Criminal Enforcement

Through the Hong Kong Customs and Excise Department

  • Investigates infringement
  • Seizes counterfeit goods
  • Prosecutes offenders

Customs & Border Action

While no formal recordal system exists, rights holders can file complaints with Customs to:

  • Detain suspicious shipments
  • Seize counterfeit goods
  • Initiate prosecution

Key Takeaways

  • Act early to maximise protection
  • Strong evidence is critical
  • Settlement is often encouraged
  • A combined strategy (civil + criminal + customs) is most effective

How We Can Help

We provide end-to-end support, including:

  • Enforcement strategy
  • Cease & desist actions
  • Litigation and dispute management
  • Customs and anti-counterfeiting coordination

Which IP Enforcement Option Is Right for You?

Option Cost Speed Binding Best Use
Cease & Desist Low Fast No Early disputes
Mediation Low–Medium Fast No Settlement
Arbitration Medium–High Medium Yes Contractual disputes
Registry Actions Low Medium Yes TM validity
Customs Low Fast Yes Counterfeits
Litigation High Slow Yes Complex disputes