What are Trademarks?
Trademarks are an important business asset. They are signs that help your customers identify your products and services, and to distinguish them from a competitor’s products and services. The recognition of your trademark by your customers enables:
- the building of your business reputation by virtue of the distinctive identity of your products and services;
- repeat business, because your customers will want to buy the identical product they have bought previously and liked
- loyalty business, where your customers will try a new product or service that you launch, because of the confidence they have in your existing products.
The recognition of your trademark by your customers therefore represents a very large part of the goodwill of your business. The trademarks of many companies represent a large part of the value of the company, such as the value of the following trademarks: Microsoft, Shell, McDonalds, Octopus, Cathay Pacific, Watson’s, Vitasoy, Café de Coral, Lee Kum Kee and Garden. You should protect your trademark, by registering it. This helps you stop your competitors, and others, from using your trademark, and by doing so, free-riding on the goodwill and reputation that your trademark has earned in the marketplace by your efforts.
How to proceed for Trademark Registration?
A trademark is a sign that distinguishes the goods and services of one trader from those of others. Typically a trademark 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. A sign must be capable of being represented graphically in order for it to be registered as a trademark.
Registering your trademark means that you have the exclusive right to use the trademark in relation to the goods and services for which the mark is registered. If other traders use it in Hong Kong, China in relation to the same or similar goods or services without your consent, they may be liable for infringement of your trademark and you may take legal action. If you do not register your trademark, you may still use it but it is harder to prove that you are the “owner” of the mark and as such your protection is limited.
Our Trademark Registration services include:
- To apply for international trademark registration
- To conduct trademark search and evaluation
- To give advice on trademark registration
- To change the trademark, to renew or replace the registration certificate and to assign or license the trademark
- To deal with the issues relating to the review, rejection, defense, revocation, opposition and dispute of trademark
- To collect the certificate of trademark registration on behalf of the applicant.
Examples of Hong Kong trademarks
The following are examples of trademarks that are registered in Hong Kong:
|A trademark can be||Examples|
|Word(s)||Apple, Cathay Pacific, Garden, Octopus, SaSa|
|Letters, numerals or a combination of both||HSBC, MTR, 737, 759, A380, 3M.|
|Names of individuals or fictitious characters||Batman, McDull, Walt Disney|
|Shape||Hennessy’s bottle for cognac and brandies, the sphere of Sony Mobile|
|Colour(s)||The red arc of Citigroup|
|Sound||Intel’s Bong jingle|
Trademark Registration Hong Kong
Hong Kong Trademark Registration is not mandatory. However, registered trademarks are assets, which can be owned, while unregistered trademarks are not assets. As well, it is easier to protect your rights over a registered trademark. As the owner of a registered trademark, you will have the exclusive right to use the trademark in relation to the goods and services for which the mark is registered. If others use your registered trademark in Hong Kong or a name which is identical or similar to your trademark in relation to the same or similar goods or services without your consent, you may take infringement proceedings against them. Unregistered marks are protected by the common law action of passing off. You must prove goodwill or reputation in the unregistered mark and must prove that the other person misrepresented his/her goods or services to be the goods or services under the unregistered mark and that person’s use of the mark will cause you damage. Passing off is usually a more difficult action to bring than an action for infringement of a registered trademark.
Rights of trademark owners
A registered trademark is a personal property. The owner of a registered trademark has exclusive rights in the trademark which are infringed by use of the trademark in Hong Kong without his consent. Generally, a person infringes a registered trademark if in the course of trade or business the person uses a sign which is identical or confusingly similar to the registered trademark in relation to identical or similar goods or services. An infringement of a registered trademark is actionable by the owner of the trademark. Your rights as the owner of a registered trademark include but are not limited to the following:
- the right to obtain a court order (called an injunction) to stop a competitor from infringing your trademark
- the right to obtain monetary compensation (called damages or account of profits) from an infringer that has unlawfully used your trademark
- the right to obtain a court order for delivery up or disposal of infringing articles or removal of an infringing mark
- the right to grant a licence to another person to use your trademark, in return for royalties and other payments
- the right to sell your trademark
- the right to make a gift of your trademark in your will.
Choosing a trademark
Some trademarks cannot be registered, or are harder to register, such as:
- a person’s surname, if it is common to use surnames in the relevant trade and that particular surname has been used to a large extent in that trade
- a sign that is descriptive of products or services, such as “modem” for Internet modems, “email” for computer software products, “cool fresh” or “good nature” for cosmetic and skincare products
- a sign that is devoid of distinctive characters, such as “wonderful” for processed nuts and “A New Way” for telecommunications services
- a trademark that is confusingly similar to a registered trademark
You can conduct an online search for trade marks that are already registered at the Trade Marks Registry, Intellectual Property Department, the Government of the Hong Kong SAR.
You can conduct a Trademark Search here.
You can use the ® symbol to indicate that your trademark is registered. If your trademark is unregistered, you cannot use the ® symbol, but you may use the ™ symbol. Using the ® symbol with an unregistered trademark is a criminal offence.
Documents required for Hong Kong Trademark Registration:
1.A soft copy of the trademark. Four black and white prints as well as fifteen color prints are required when a trademark is in colour.
2.A detailed list of products or services to be covered in the application.
3.A copy of the Certificate of Incorporation or Business Registration Certificate or anything of similar nature which shows the name and address of the applicant.
4.A priority document when priority is claimed. The document can be filed within 3 months after the filing date of the application.
5. Power of Attorney (POA) letter as required by some countries/regions