A new trade mark law (Cap.559) has been passed this year, effective from April 4, 2003, which is considerably different to the previous trade mark law in Hong Kong (Cap.43). The new definition of a trade mark is a sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically. A trade mark generally includes words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, and also sounds, smells, the shape of the goods or their packaging or any combination of these.
Trade marks registered on or after the commencement date of the new law should be classified in accordance with the International Classification in force.
Trademark applications are the responsibility of the Intellectual Property Department of Hong Kong.
- An application for registration must be filed on the specified form.
- Deficiency Check: If there appears to be a deficiency in the filing of the application, then the Registrar will send a notice to the applicant to correct the deficiencies within two months after the date of the notice.
- Search and Examination: If the application is in order, the Registrar will examine whether the application meets the requirements for registration, including a conducting of a search of the trade marks records to see if the same or similar mark has already been registered or applied for by another applicant.
- Objections: If the requirements for registration are not met the Registrar will send an official notice stating the reasons for objections. The applicant will have six months in which to meet the requirements (and a further three months extension may also be granted).
- Publication: If the application is in order, the application will then be published in the official Hong Kong Intellectual Property Journal.
- Oppositions may be filed by any person within three months from the date of publication. Copy of the opposition notice and evidence will be sent to the applicant who will then be given a specified time limit to file evidence in support of his/her application.
- If an opposition is filed and all submission of evidence is completed, the Registrar will set a date, time and place for the hearing and shall notify the parties in writing accordingly.
- Registration: If no oppositions are filed, or the opposition procedure has been decided upon in favour of the applicant, the mark will be entered in the trade marks register, registered and published in the official journal, and a certificate of registration issued. The owner's rights will take effect from the filing date of the application.
Filing Requirements : Trademarks and Service Marks
The documents required for filing include:
- Completing an application form, which incorporates the Form T2 and T2S (a graphical representation of the trademark).
- Form T2A if applying for a certification, collective or defensive mark, a sound or smell, to apply for a 3-D shape or colour as elements of a mark, or to include a disclaimer, limitation or condition.
- Two specimens of the trademark, adhered to as per the designated position on the two application forms (T2 and T2S), or indication if the trademark is a word mark.
- Indication of goods and services (Hong Kong has adopted the International Classification of Goods and Services).
- Convention priority details: If the applicant has applied for registration of the same trademark in respect of the same goods or services in a Paris Convention country or WTO member within six months from the date of filing of this application, right of priority can be claimed.
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