trademark - faqs

 Macau trademark law is applicable to the following people:

• Macau residents
• Citizens of any country in the Paris Convention union (or its revised versions).
• Any person who resides in or owns a business location in any country in the Paris Convention union.
• Citizens of those countries that have signed related agreements with Macau.

See Filing Requirements: Trademarks and Service Marks.

Additional Points to Note:
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.

Notices of filing a trademark application are published in the Macau Official Gazette, so that opposition can be filed within two months from the date of publication of this notice.

Upon receipt of an opposition, the Macau Economic Services will notify the applicant of the opposition within 15 days and the applicant can present a statement of defense. Then, the Macau Economic Services will proceed to review the application for registration and make a decision. The aggrieved party may lodge an appeal to the court within 30 days from the publication of the decision in the Macau Official Gazette.

The first to file rule applies in Macau. That is, registration of ownership of a trademark is granted to the first applicant for registration, except in the case of priority awarded to application for registration originally filed in one of the Paris Convention countries and of priority based on the use of a non-registered trademark.

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 consecutive years after the registration without any justified reason, any party may request to cancel the trademark. 

If you have lodged another trademark application in a member country in the Paris Convention and within six months lodge an application in Macau, 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. You must also submit a copy of the prior application to the Macau Economic Services within three months after you lodge your application.

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.

 Registration of a trademark requires payment of a registration fee, after which a corresponding registration certificate will be issued. The establishment of a trademark is also reported to the Automobile and Commercial Registry.

Any person having been assigned the rights shall have no locus standi against any third party unless application for change of applicant has been approved. The holder of the trademark is allowed to assign his right aside from the business premises. This assignment is executed by private contract, or by notary deed when there is an assignment of the trademark and of the business premises. There is a presumption of assignment of the trademark in the event of assignment of the general business, unless otherwise stipulated.

The license holder can grant a license for exploitation through a written contract, provided that it is signed before a notary public. The licensee is not allowed to assign his/her right unless he/she obtains permission or if this is provided in the contract.

Trademark registration is effective from the date of authorization, lasting for seven years, counting from the approval of the application. It is renewable for equal lengths of time, and must be renewed prior to six months before its expiration.

Non-registered trademarks can be used. Whoever uses a non-registered trademark for six months has priority and within this period of six months, has filing priority and may oppose applications already filed by others.

The holder of the trademark has the right to attach indications of trademark or any equivalent expressions or abbreviations in English, or any equivalent expressions or abbreviations in English, or their equivalent in Chinese or the Romanized expressions from Cantonese or Mandarin.

Seven years starting from the date of approval of the application. It should be renewed prior to six months before its expiration.

Seven years starting from the date of approval of the application. It should be renewed prior to six months before its expiration.

The right to apply for a patent belongs initially to the inventor(s), with some exceptions. If an inventor sells the rights to an invention to another party, then that party may apply for the patent. If an invention is made during the course of an inventor's employment, the employer may, in some circumstances, automatically acquire the right to apply for the patent. If an inventor dies or is incapacitated, the right to apply may then rest with the inventor's executor, administrator or other representative. 

 A patent must show inventiveness, which is measured by the level of applied technology, and should involve a degree of creativity surpassing the prior art; practical applicability (i.e. can be mass-produced), and novelty.

Utility models, however, are models of objects or parts of objects (appliances, instruments, tools, etc.) made for practical use, which, by means of a new shape or configuration or a new mechanism, increase or improve the handling of such objects. Utility models must be three-dimensional.

"Inventions" are patentable. An invention must be useful, novel and involve an inventive step compared to the closest prior art. A new product, process or apparatus will generally be patentable; a new improvement to an existing product, process or apparatus also can be patented. 

No. A patent does not entitle the patent owner to make, use or sell the patented invention; it only allows the patent owner to prevent others from doing so. To make, use or sell one's own invention may infringe another patent, particularly if an invention is an improvement on a prior invention. In this situation, producing the improved product may infringe a patent for the original product. To prevent this from occurring, infringement searches can be conducted. 

The first to file rule applies. 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. 

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 whether 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.

 It is safest to keep your invention confidential, at least until you file a patent application. If your invention is disclosed in any publication anywhere in the world prior to the filing of the application, the invention is no longer patentable. 

If the examination finds that the patent cannot be accepted, then the examination report will be sent to the applicant, who will be notified to reply to the rejections within two months. The applicant’s reply should remove doubts and lead the Examiner to conclude that the patent should be granted and published in the Industrial Property Gazette (IPG). If the applicant fails to convince the Examiner, then the Examiner will propose that the patent be rejected, and this result will also be published. 

Yes. An examination of the application is conducted together with the respective international classifications, after which a report is prepared within six months from the publication of the notice of application. A patent is granted or rejected according to the examination. If the examination is favorable, a notice will be published in the Macau Official Gazette, to allow for third party opposition. If there is no opposition or rejection of the patent, the patent will be granted. 

No. You can prohibit others from making, using or selling your invention only after you receive a patent for your invention. However, provisional protection is provided for a laid-open published application, which enables you to recover compensation as a license royalty for the patented invention, if granted. To do this, you must notify the third party that you are applying for a patent for your invention and that the application is laid open published. 

Yes. Once the application is laid-open, any party can submit information claiming that an invention lacks novelty and/or an inventive step together with related evidence. An examination will be made of the invention. After the examination is complete, the Examiner will advise the submitter of whether or not such material was used in making the examination. 

Patents: 20 years from the filing date of the application.

Utility Models: 6 years from the filing date of the application, extendable two times with 2 additional years, so that the maximum duration of the registration is 10 years from the filing date of the application. 

Industrial Designs & Patterns: 5 years from the filing date of the application, extendable four times with a further 5-year period, so that the maximum duration of the registration is 25 years from the filing date of the application.