If you wish to register a trademark under the Trade Marks Ordinance (Cap. 559), you should apply to the Registrar of Trade Marks (i.e. the Director of Intellectual Property). Nonetheless, as registering a trademark is a complicated process, you should speak to a lawyer or an expert in the field for handling the registration process and any related matters.
Requirements of your trademark
To be able to qualify for registration, your trademark must satisfy two basic requirements:
- It must be capable of distinguishing your goods or services from those of other traders.
- It must be capable of being represented graphically.
Moreover, according to sections 11 and 12 of the Ordinance, your trademark cannot be objectionable on any of these grounds:
- The trademark is descriptive of the relevant goods or services (e.g. quality, value, intended purpose, geographical origin or other characteristics of such goods or services).
- The trademark has become customary in the established practices of the trade or in the current language.
- The public is likely to be deceived by the trademark.
- The trademark is similar or identical to another registered trademark, or another trademark for which a registration application has already been made, for similar or identical goods or services.
- The trademark is similar or identical to a well-known trademark.
Otherwise, your application may be refused by the Registrar of Trade Marks. Therefore, you should carefully consider all possible reasons for objection and make all necessary changes before you submit your application. You can use the Intellectual Property Department’s Search and Preliminary Advice Services prior to submitting your application as the Services can indicate whether your trademark is eligible for registration.
Application process for trademark registration
There are multiple steps to take when applying for a trademark registration:
- Conduct a trademark search by using the Search and Preliminary Advice Services (submit a Form T1) or conducting your own search at https://esearch.ipd.gov.hk/nis-pos-view/#/
- Fill in your application form (Form T2)
- Provide a graphic representation of your trademark
- Attach the required fee to your application
You should send your trademark registration application to Trade Marks Registry, Intellectual Property Department, 24/F, Wu Chung House, Wanchai, 213 Queens’ Road East, Hong Kong. You can also choose to file your trademark application electronically via the Intellectual Property Department’s e-filing system. For more details, you may visit https://efiling.ipd.gov.hk/nis-efiling/home/home.action#/.
In your trademark registration application, you must specify:
- The list of services or goods in respect of which registration is sought; and
- The class(es) in which the services or goods fall.
If your application is successful, the trademark will be registered in your name. If you want to know more about applying for a trademark registration, you may visit the Intellectual Property Department’s website at https://www.ipd.gov.hk/eng/trademarks.htm.
Can anyone apply to register a trademark in Hong Kong?
Foreign individuals and/or companies can apply to register their trademarks in Hong Kong. There is no residency requirement or nationality restriction to apply. Hence, broadly speaking, anyone can apply to register a trademark in Hong Kong.
Key takeaways
- You should ensure that the trademark that you want to register fulfils the relevant requirements and will not be refused by the Registrar of Trade Marks.
- The application process generally consists of:
- Conducting a trademark search;
- Filling in your application form;
- Providing a graphic representation of your trademark; and
- Attaching the required fee
Bibliography:
Intellectual Property Department, ‘How to apply to register a trade mark in the Hong Kong SAR?’: https://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/how2apply.pdf