What is a trade mark?
A trademark is a sign that distinguishes the goods and services of one trader from those of others.
The sign shall be capable of being represented graphically. Typically, a trademark can be words (including but not limited to English characters, Chinese characters, numbers and punctuations), device, word + device, colours, sounds, and/or any combination of above mentioned. Here are some examples:-
Wordmark Device Mark Figurative Mark
Why is TRADEMARK registration important?
Once a trademark is registered, you have the exclusive rights to your designated goods and/or services in that particular jurisdiction. The use of your trademark on identical or similar goods or services, without your consent may lead to trademark infringement, and you may take legal action against it.
Some shops, organizations, entities and/or e-commerce platforms also require you to provide trademark registration certificates to protect you and your clients.
What name(s) cannot be registered as TRADEMARK?
A sign cannot be registered as trademark if any of these grounds is present: (a) devoid of any distinctive character, or (b) contrary to accepted principles of morality, or (c) likely to deceive the general public, or (d) filed in bad faith.
The use of the national flag, emblem or anthem, unauthorized use of words such as Red Cross (紅十字會), Heung Yee Kuk (鄉議局), Sheng Kung Hui (聖公會) and/or others as a trademark or an element of a trademark is not allowed.
What is mark DISTINCTIVENESS?
Distinctiveness means a mark is “capable of distinguishing” the goods or services of one undertaking from those of other. A mark is distinctive if it has the ability to let the relevant public easily identify and distinguish goods or services.
Marks which are simply composed of quality, quantity, purpose, value, geographical origin use, and characteristics which are dependent on the goods or services concerned are considered as devoid of distinctiveness. Such application shall be refused. Here are some examples:-
Signs which are devoid of distinctiveness Signs which are distinctive in character
1) Fruit shop applies "Apple" for "fruit" ❌
1) Mobile phone seller applies "Apple" for "mobile phone" ✔ 2) Fashion shop applies "XXL" for "clothing" ❌ 2) Cosmetic company applies "XXL" for "skin care products" ✔ 3) Logistic supplier applies "Pick Up" for "delivery service" ❌ 3) Restaurant applies "Pick Up!" for "meat; fish; eggs" ✔
What is CLASS? What is GOODS/SERVICES? Is there a limit on how many I choose in each class?
Class(es) and Goods/Services refers to your business nature. There are 45 classes. Class 1-34 are for goods. Class 35-45 are for services.
In your trademark applications, you must indicate your designated class with a list of all goods and services which you want to register your trademark with. Here are some examples:-
CLASS GOODS/SERVICES 3 Cosmetics; 5 Nutritional supplements; medicinal oils; 9 Computer software, recorded; 10 Medical masks; apparatus for DNA and RNA testing for medical purposes; 35 Import-export agency services; advertising; business consultancy; 39 Delivery of goods; 43 Restaurant services;
Please note that the number of selected goods/services in each class may impact your quotation. For example, our quotations only cover 10 goods/services in each class in China, 20 in Taiwan, South Korea, Canada, Indonesia, 6 in Vietnam and 5 in Thailand.
My trademark has been registered in Hong Kong. Do I have to register in other countries and/or regions?
Trademark protection is territorial. Your HK registration will only grant protection in Hong Kong. If your business covers multiple jurisdictions such as China, Taiwan, Macau, the United States, Canada, the United Kingdom, and Australia, you need to register in each of these countries and/or regions separately.
My trademark has three elements, English characters, Chinese characters and a device. Shall I file three applications or file one application as a whole?
We suggest to file the in the same manner as it is in practical use. That is to say, if you only use the trademark as a whole, you shall register it as a whole. If you use every component independently, then you need to register the individual elements one by one.
Does WORDMARK covers different fonts?
A wordmark is one where the trademark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or colour. Generally, you have greater flexibility in the use of fonts. However, please note that if you use an original font, or your mark has been changed significantly, you must re-file it.
My trademark has various colours and/or colour combinations. Shall I register my trademark in colour or Black and White? How many applications shall I make if I decided to protect all variants?
Please provide us with your mark image(s) for further assessment. Generally speaking, “black and white covers all” works in the most of the IP offices. It will regard that the applicant does not claim/limit to specific colours and therefore renders more flexibility in practical use.
In jurisdictions such as China, Japan, South Korea, the United States, the European Union, etc., only one (1) mark image is allowed in one trademark application. Therefore, you must choose one among your variants.
Hong Kong, Singapore, and the United Kingdom accept serial trademark applications. Assuming that your colour combinations do not affect the distinctive elements of your mark, you may submit multiple versions of your mark in one application at no additional cost.
My trademark has been changed after registration. Do I have to re-file it?
Please provide us with your mark image(s) for further assessment. Generally speaking, there is no need to file a new application if the identity of your mark remains unchanged. Nevertheless, if there are additions and/or deletions of content(s) and/or obvious change in your mark, you will need to file a new application.
My trademark application has been refused in China. Do you have any suggestions for me?
CNIPA examiners tends to exam each elements of your mark (English characters, Chinese characters, and device) independently. Identical and/or similar to each component will lead to refusal to the whole mark.
❖ To increase the success rate, you may file every component one by one. Take our company logo “”as an example, we file four applications, “” as a whole, Chinese characters “”, English characters “” and device “”.
❖ If the search result is not optimistic and/or the new application has been refused, you may consider remedies such as copyright recordal, cancellation, filing response against official refusal, opposition, invalidation etc.
❖ You may adopt defensive strategy of “file new application every three years” to deal with non-use cancellation filed by third parties.
Once registered, no one can register my trademark, is it correct?
If someone applies identical and/or similar trademark with identical and/or similar goods/services which is likely to cause public confusion, the Trade Mark Registry will reject its application. However, if someone file the identical mark in a different class, the Registry may allow it. To get the full picture of the potential threats in 185 jurisdictions, you may subscribe our trademark monitoring services.
Once registered, no one can use my trademark, is it correct?
Trademark registration and business operations are different. Even your trademark has been registered; someone may still “steal” your mark and use it for making money. To reduce the risk and potential loss, you will need to collect pieces of evidence of the infringement and discuss with your lawyer for taking possible legal action(s) against it.
My company name / company address has been changed. What should I do?
You should inform the Trademark Registry for a change of company name and/or change of company address to ensure that the official records are up-to-date.
What is COPYRIGHT? How to register?
A copyright is a form of protection provided to the authors of "original works of authorship" fixed in any tangible medium of expression. It is an automatic right and it arises when a work is created.
Unlike other intellectual property rights such as trademarks, no registration system is required in Hong Kong. In order to get protection under the law of Hong Kong, authors shall keep good records of their works.
There is a Copyright Office in China, ACCOLADE can assist you for copyright recordal in China.
How to use the ® symbol, the ™ symbol, and the © symbol? Can I include them in my trademark applications?
The ® symbol means your mark has been registered. If you have not registered your mark in Hong Kong, or elsewhere for your goods or services, it is an offence to use the ® symbol and you may be liable on conviction to a fine.
The ™ symbol is used for an unregistered mark. You may also use it when you application is under examination.
The © symbol, or the copyright symbol, is used in copyright notices for your original works.
Does one local registration enable “global” protection?
It is not surprising to hear this idea: a one-stop registration, with a low set of fees, can grant protection across the globe. Unfortunately, using whatever route of filing, if a mark is applied in one jurisdiction; under normal circumstances, when protection is granted, it will only be limited over there. If “global” protection is sought after, probably the applicant will have to settle application fees for each jurisdiction.
Can I register a trade mark and bar others from using it with whatever business?
First, when an application is submitted, the applicant must specify the protection scope. Filing fees are associated with how diverse the scope is. The wider the protection scope is specified, the wider the protection will be. However, if the protection scope of a mark of prior rights is found to be irrelevant to that of another later mark, it is possible that the prior rights owner cannot affect the use of the latter mark.
NICE Classification is an international system common to most jurisdictions in the world. With a total number of 45 Classes, it generally categorizes different protection scope. The Classification is open to public inspection through this link (insert hyperlink: http://www.wipo.int/classifications/nice/nclpub/en/fr/), but it is generally advised to provide information to our consultants for free analysis of your business scope.
I know where to file and the scope of protection now. What are the fees?
“Transparency” from our firm’s motto is the best term to describe our pricing. Price quoted in our online fee schedule are all-in fees inclusive of governmental fees, our service and disbursement charges and registration fees. If the case is smooth, you do not have to pay an extra penny apart from our quoted fees. The schedule can be viewed here (insert hyperlink: use HK for HK site; SG for SG site). As some jurisdictions offer slightly lower official fees, we also list out the costs for the additional Class after the first. Please do not hesitate to contact our consultants for a formal quotation without any service charges.
Before u Apply
When the official receive your application, their examiner will check it and decide whether they need to object to your trade mark based on the criteria laid down in the Trade Marks Ordinance. Therefore there are a number of factors which you must consider before applying to register a trade mark. Listed below are some important points:
Is it distinctive?
Does your trade mark stand out from the crowd? Does your trade mark, be it a logo, word, picture, etc. clearly set your goods and services apart from those of other traders? Examiner will object to the mark if they do not think it does.
Is it a description of your goods and services?
If your trade mark describes the goods and services or shows the quality, purpose, quantity or value of them, then examiner is likely to object to the mark. Similarly we are likely to object to the use of geographical name in a mark.
Is it a well-known term in your line of business?
If your trade mark is a well known term or representation in your line of business examiner would object to it. For example “V8” for vehicle engines.
Other people’s trademarks
Has someone else already registered or applied to register the same or similar trade mark for the same or similar goods and services? If your trade mark looks or sounds the same or similar to another registered mark, or one that is being applied for, examiner will object to your mark.
It is important to conduct a search of the trade mark register to see if your trade mark is already registered or has been applied for by another trader.