This guide is an introduction to the trademark registration procedure in Hong Kong. The relevant authority for registration of trademarks in Hong Kong is the Trade Marks Registry.

What is a trademark?

A trademark is a distinct sign that serves to distinguish goods and services of an enterprise from those of another. Trademark registration protects the owner of the mark and the exclusive rights to use the mark to identify the trademark owner’s goods or services. In other words, it prevents another trader or enterprise from using a similar mark to promote his goods or services. For example, the “Coke” trademark prevents other companies from selling drinks under this name to compete with the Coca Cola company.

A trademark can include one or more of the following:

• Words, letters, characters, phrases, slogans, numerals
• Logos, symbols, designs, figurative elements
• Sounds, jingles
• Colors
• An aspect of packaging

For registration as a trademark, a sign must be a graphic representation.

According to the World Intellectual Property Organisation, “trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.”

Who can register a trademark in Hong Kong?

Coming soon

Trademark Registration Procedure in Hong Kong

Trademark law in Hong Kong consists of the Trademarks Ordinance and Trademark Rules. Trademark registration in Hong Kong is required for territorial protection of registered trademarks within the geography of Hong Kong. In other words, trademarks registered under the Trademark Registries of other countries, including the People’s Republic of China, do not receive protection in Hong Kong.

Step 1: Self-search for possible conflicts with existing trademarks

Prior to registering a trademark, it is essential that you conduct a preliminary online search of existing trademarks that are already registered with the Trademarks Registry. This will ensure that there is no prior trademark that is identical or similar to the one that you propose to use.

Step 2: Identify class of goods or services

The next step involves determining the class of goods or services for which you are seeking trademark protection; you will need to list this class in your application form. It is important to list the goods and/or services in the classes they fall in by referring to the World Intellectual Property Organization’s International Classification of Goods and Services. There are 34 classes of goods and 11 classes of services.

Step 3: File application and pay application fee

You must complete the application form and submit it along with a graphic representation of your trademark to the Trademark Registry of Hong Kong. You must also pay a non-refundable fee of HKD 1300. Note that there is an additional fee of HKD 650 for every additional class of goods or services included. The application can be submitted either in person to the Registry or filed online.

Step 4: Application examination for completeness and compliance by the Trademarks Registry

Once the Trademarks Registry receives your application, it will a) acknowledge receipt of your application, notify you of the allotted application number, and b) proceed to review your application for deficiencies. In other words, the Registry will check if your application is complete and contains the correct details regarding applicant’s name, address, representation of the mark etc. If there any deficiencies, the Registry will notify you of the same and will grant you a period of two months to make the necessary corrections. If the application is complete, it will proceed to the next stage.

Step 5: Application examination for conflict with existing trademarks and for conflicts with law by the Trademarks Registry

On completion of the deficiency check, the Registry will conduct a formal search of its trademark records to ensure there is no conflict between the proposed trademark and a) an already existing one or b) trademark applications made by other entities that are awaiting approval. The Registry will also check if the trademark application satisfies the requirements of the Trademark Ordinance and Rules. In this regard, the Registry will check if the proposed trademark:

• Is distinct: The trademark must serve to distinguish your goods or services from those of other enterprises
• Is not descriptive of your goods or services: The trademark must not describe the goods or services and must not include any geographical names. Examples: ‘Quality shoes’, ‘Hong Kong Fashion’ etc.
• Is not a well-known term in your business field: The trademark must not be a term or representation that is well known in your business field. Examples: ‘software’, ‘computing’ etc.

Step 6: Notification of refusal or acceptance of registration

If your application conforms to the registration requirements, the Registry will confirm its acceptance of your trademark for registration. However, if your application does not satisfy the requirements, the Registry will issue a notice of refusal of registration indicating deficiency areas and suitable remedial measures. You are required to execute the remedial measures within six months of receiving the notice. In certain cases, the Registry may still find the application to be incomplete despite the first round of remedial measures. Under such circumstances, you can satisfy the registration requirements within a three-month period on the recommendations of the Registry. Alternatively, you can call for a hearing where all evidence for and against the trademark will be considered. The hearing officer’s decision will be final and non-contestable.

Step 7: Trademark publication for opposition

Once the Registry accepts the trademark application for registration, it will publish the trademark in the Hong Kong Intellectual Property Journal. Any third party can oppose the registration of the trademark within three months of the date of publication. If a third party raises an objection, you can either withdraw your application or make a counter-statement. A hearing officer will make a decision on the application after hearing both parties.

Step 8: Trademark registration

If there are no third party objections or if the objections were resolved in your favor, the Registry will accept your trademark for registration. Details of your trademark will be recorded in the Trademark’s Register and a Registration Certificate will be issued. The notice of registration will be published in the Hong Kong Intellectual Property Journal.

Hong Kong Trademark Registration FAQs

How long does it take to register a trademark in Hong Kong?

The trademark registration process in Hong Kong normally takes around 6 months, provided there are no deficiencies or objections. In case of deficiencies or objections, the registration process can take up to 18 months.

What is the validity period of a trademark registration in Hong Kong?

In Hong Kong, a registered trademark is valid for 10 years from the date of application. The trademark registration can be renewed indefinitely for 10 years at a time by paying a renewal fee of HKD 3000 and an additional fee of HKD 1500 for each additional class.

What are the typical causes for rejection of trademark applications?

The typical reasons for refusal of trademark registration in Hong Kong include:

• The trademark is similar to an already existing trademark or a trademark applied for by another enterprise
• The trademark is not distinct
• The trademark is deceptive or descriptive of the implied qualities in the product or service

What do the symbols and ^TM mean?

indicates that the mark is a registered trademark and hence protected under the trademark law. ^TM is a symbol used to indicate that the mark is being used by the company as a trademark. It does not denote that the mark is registered nor protected under the trademark law.

Do I need to register a trademark for each class of goods/services separately?

No. You can submit a single application for multiple classes of goods/services. However, you are required to pay a fee of HKD 650 for every additional class.

Is it mandatory to register my trademark in Hong Kong?

No, it is not mandatory to register your trademark in Hong Kong. However, it is advisable to do so for the following reasons:

• A registered trademark confers exclusive ownership rights to you and prevents others from using a similar mark
• It generates a strong public perception about the authentic ownership of the goods/services
• You can seek legal action against an infringer of your trademark
• Registering a trademark gives you the right to use the symbol

Can I file my trademark application directly with the Registry or do I need to hire a firm?

It is not mandatory to hire a firm for your trademark registration application filing and you can choose to self apply. However, it is advisable to engage the services of a professional firm for the following reasons:

• The firm will ensure that your application complies with the legal requirements, thereby minimizing the chances of application rejection.
• A firm will competently respond to any clarifications sought by the Registry or any objections raised during the registration process.
• By hiring a professional services firm, you will save time and resources.