Should I register a trademark in HK or Mainland China?
A trademark is a sign that is considered an intellectual property to distinguish the goods or services from one business entity to another. In order to obtain a registered trademark protection in Hong Kong, one must register it under the Trade Marks Ordinance. However, having your company name registered with the Company Registry does not mean you will be automatically granted with a trademark. To obtain a trademark, companies must submit an application to the Trade Marks Registry administered by the Intellectual Property Department. After the trademark is successfully registered, you will be granted exclusive right to exercise it for your business entity.
45 Classes of Trademark
There are generally as many as 45 classes of goods and services in which you can select for trademark registration and you must list the specific class of trademark in your application upon submission. It is highly recommended that you look up your company name in the registered records by conducting a search on the Intellectual Property Department official website before registering. It is possible that your proposed company name has already been registered as a trademark by other companies. The application process takes approximately 6-9 months and the registration is usually valid for a period of 10 years. It is recommended that you submit the renewal application 6 months prior to the expiration date.
Trademark Registration Process in Hong Kong
Once the trademark registration application is submitted to the Trade Marks Registry, they will go through a deficiencies check together with a search & examination of the proposed trademark. Simultaneously, a hearing will be held and a publication of opposition will occur before the final registration. If your application is deemed to be successful by the Trade Marks Registry, the company will be issued a certificate of registration. A registration notice will be published in the Hong Kong Intellectual Property Journal and your trademark registration will also state the filing date of your application.
Is the trademark distinctive enough?
An application can be rejected by the Trade Marks Registry if they find the trademark is not distinctive enough; too similar to another trademark that has already been registered; the mark is already a familiar term in your industry or if it is a description of a product. If a third party has registered your company name as a trademark, you have three months from the day the application was published in the Hong Kong Intellectual Property Journal to file an opposition notice, supporting documentation, and the reasons for your opposition. There will be a deadline within which both you and the opposition must submit supporting documentation for the application. Following the gathering of all available evidence, a hearing officer will preside over a hearing and provide a ruling.
Will a HK trademark get protection in Mainland China automatically?
If a trademark is registered in Hong Kong, it will not automatically be granted protection in Mainland China or anywhere else in the world. Although Hong Kong is part of China, both places share a completely separate system of protection and registration. Generally speaking, each jurisdiction independently decides whether a trademark can be registered in the place. Trademark laws in China is on a first-to-file basis, whoever files the trademark first will be the ultimate beneficiary. If two of the same applications are filed on the same day, the preliminary approval will normally grant to the one which was used first. To register a trademark in Mainland China, you can choose to submit an application either via the China Trade Mark Office or the World Intellectual Property Organization. The application process approximately takes around 12 to 18 months and the registration will usually last for 10 years. It is recommended that you file for renewal at least 6 months prior to its expiration date.
Should I register my trademark in Hong Kong or China first?
If you have a limited budget and are debating whether to register a trademark in Hong Kong or Mainland China first, we would recommend Mainland China. As mentioned above, Mainland China adopts a first-to-register system, meaning whoever registers first will get the trademark. Unregistered trademarks, on the other hand, can be the subject of common law litigation in Hong Kong. It implies you can still prove in court that you were the first to create the logo (mark) and finally win the case. Once your company has registered the trademark, it has the exclusive right to use the trademark in relation to the product class. If another company uses it without your permission, you can sue for infringement. If you do not properly register the sign, it can be difficult to prove that you were the first to design and use the mark.
We hope this article provides helpful information for those of you who want to incorporate a company in Hong Kong. If you have any further questions or concerns, feel free to message us on WhatsApp at +852 5404 0902 or send us an inquiry at info@cheapincorp.com!