|Guide & Procedure|
|Trademarks & Service Marks||Standard Patents, Short-term Patents, Design|
F A Q - H. K.
1. Who can apply for a trademark in Hong Kong?
Hong Kong trademark law is applicable to the following people:
An application may be made by an individual, a firm or a body corporate. Applicants not residing or carrying on a business in Hong Kong must give an address for service in Hong Kong.top
2. How do I register a trademark in Hong Kong?See Filing Requirements: Trademarks and Service Marks. top
3. How long does a trademark registered in Hong Kong remain valid?
Ten years starting from the approval of the application. It should be renewed prior to six months before its expiration.top
4. What are the procedures concerning the filing of an Opposition?
Once a trademark is accepted for registration it is published in the Hong Kong Intellectual Property Journal, and anyone can lodge an opposition to the mark within three months of publication of this notice.
Upon receipt of an opposition, the applicant will be notified of the opposition. The applicant may respond by filing a counter-statement. Both parties are given a prescribed time period in which to file evidence in support of the application and opposition. When all evidence has been received, the Registrar of Trademarks will set a time for a hearing to take place, and at the conclusion of the hearing will then make a decision.top
5. Can I 'register' a trademark before I'm ready to use it?
Yes, even if you do not immediately use the trademark, you may register provided that the same or similar trademark has not already been registered, and your mark satisfies the other necessary requirements. Then you will have all rights in the trademark, even if somebody subsequently attempts to use it before you are ready to use. However, the trademark must be used within three years. If you have not used the mark for three (3) consecutive years after the registration without any justified reason, any party may request to cancel the trademark.top
6. Can I claim priority for a trademark?
If you have lodged another trademark application in a member country in the Paris Convention and within six months lodge an application in Hong Kong your application will be given priority, provided that on your application you write down your prior application number, date and time of lodge, and name of the country. The Registrar may at any time require the applicant to file a certificate of priority issued by the registering authority of the country in which the corresponding mark has been registered.
If you have not lodged any trademark application in any member country in the Paris Convention, you need to submit proofs that you are actually using that trademark.top
7. What will happen once a trademark is registered?
Registration of a trademark requires payment of a registration fee, after which the Registrar of Trademarks will enter details of the trademark into the trademarks register and the owner issued with a certificate of registration. Notice of the registration will be published in the official journal.top
8. What are the regulations concerning the assigning of a trademark?
Trademarks can be freely assigned with or without the goodwill of the business, and for all or some of the goods or services for which it is registered. In case of assignment without the goodwill, it is now no longer necessary to advertise the assignment. In addition, associated trademarks are no longer required to be assigned together; they can now be assigned independently.
An assignment is to be registered in order to be effective against third parties. Documents required are: 1. Request for registration, signed by agent or assignee. 2. Deed of assignment, signed by both assignor and assignee. 3. Power of attorney from assignee.top
9. What is the trademark use and protection timeframe?
Trademark registration is effective from the date of authorization, lasting for ten years, counting from the approval of the application. It is renewable for ten years at a time, and must be renewed prior to six months before its expiration.top
10. Can I divide my application?
Yes. You may request to divide your application after it has been given a filing date and before it is registered.top
1. Who can apply for a patent?
Standard patent: An application may be filed by the applicant in the designated patent application or his/her successor in title (e.g. an Assignee), but if another person is entitled to ownership in Hong Kong, that person can apply.
Short-term patent: An application may be filed by any person, either alone or jointly.The right to apply for a standard patent belongs to the inventor(s) or his successor in title (e.g. Assignee).top
2. What's the difference between a standard patent and a short-term patent?
Standard patents are not independent, in that they can only be granted on the basis of a patent granted in a designated patent office. So, a previous patent application must be already filed in the following designated patent offices: Chinese Patent Office, the U.K. Patent Office and the European Patent Office. In addition, the duration of a standard patent is 20 years from the filing date, with no extension.
However, short-term patents are applied for directly with the Hong Kong Patents Registry and are independent of patents or patent applications in other countries. A short-term patent has different examination procedures from that of a standard patent; and its duration is four years from the date of filing, renewable once with a further four year period, and no extension.top
3. What can be patented?
"Inventions" are patentable. An invention must be useful and susceptible of industrial application, novel and involve an inventive step compared to the closest prior art. Its inventive step must not be obvious to a person skilled in the art.top
4. What can't be patented?
Discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules or ways of performing mental acts, games or doing business; computer programs; the presentation of information; methods of treatment of the human body by surgery or therapy; anything considered by the Registrar to be contrary to public order.top
5. Which application is deserved the grant of patent when two or more applications to the same invention are filed?
The patent will be granted to whichever party files the first patent application, regardless of who made the invention first. It is therefore important not to delay filing a patent application.top
6. Is it necessary to conduct prior art searches before filing a short-term patent application?
If possible, it is best to conduct a search before applying for a patent. If the invention has been disclosed elsewhere, then the invention may not be patentable. The search will determine whether patents or publications disclosing the invention exist.
As the cost of a search is generally far less than the cost of a patent application, a search is a relatively inexpensive method for an inventor to decide wheher to spend a larger amount on a patent application.
Searches can take considerable time, however, which some inventors may not have. Moreover, it must be remembered that no search can absolutely determine the pantentability of any invention. Search results are merely a useful guide in deciding whether an invention may be worth patenting.top
7. May I disclose the invention before I apply for a patent?
It is safest to keep your invention strictly confidential, at least until you file a patent application. If your invention is disclosed in any publication anywhere in the world, and more than six months passes, the invention is no longer patentable.
If you have disclosed your invention, and wish to file a patent application, then the date of disclosure should be specifically stated in the application at the time of filing and the relevant document should be submitted within 30 days of the filing date.top
8. What recourse do I have if my patent application is rejected?
If the examination finds that the patent cannot be accepted, then an examination report will be sent to the applicant, who will be notified to reply to the objections within two months. The applicantˇ¦s reply should remove doubts and lead the Registrar to conclude that the patent should be granted and published in the Government Gazette. If the applicant fails to convince the Registrar then the Registrar will propose that the patent be rejected, and this result will also be published. Appeal then may be lodged with the High Court, and further appeal to the Court of Appeal.top
9. How long does a patent and utility model registered in Hong Kong remain valid?
|Standard Patent* protection:||20 years from the date of application|
|Short-term Patent protection:||4 years from the date of application; renewable once with a further four year period.|
|Designs:||Initial term of five years from the date of application; renewable for four terms of five years each. Application for renewal is to be made the renewal fee paid during the last three months of a five-year period.|
* The owner of a standard patent must exploit it. If no use occurs for three consecutive years without just cause, a compulsory license may be issued in some cases.
10. What are the costs of filing a patent, utility model and design in Hong Kong?
See (H.K.) Feestop