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I. Trademark in HongKong
Introduction
The trade mark registration system has been operated in Hong Kong for over 100 years, with a Trade Marks Registry being opened in 1873, two years before open of the UK Trade Marks Office. While the Hong Kong Trade Mark Law is mainly based on the UK Trade Marks Act of 1994, it is now an independent legislation since 2003, following first-to-use principle and recognizing well-known trade mark rights under the Paris Convention.
Who May Apply
A trade mark application may be applied for by any party who claims to be the legitimate owner of the trade mark and has an intention to use the trade mark in Hong Kong. No proof of use is required for registration of a trade mark unless the trade mark is regarded by the Examiner as being indistinctive and/or in conflict with trade marks already existing in the Register.
Application Requirements
1) Name and address of the applicant (Only one languge from Chinese and English could be chosen)
2) A specimen of the trade mark
3) Details of the goods and/or services to be covered
4) There are two versions of Registration Certificate in HongKong-Chinese and English. The applicant must choose only one of them.
Timeframe
It usually takes about 6-8 months to achieve a straight-forward trade mark registration in Hong Kong, the duration of which is 10 years, renewable for unlimited periods of each 10 years without prooving use of trade mark.
Maintenance of validity of registration
1) Ensuring that the trade mark is used on or in relation to the goods / services as registered, non-use of a trade mark for a continuous period of three years in Hong Kong is subject to the registration thereof being revoked by third parties.
2) Ensuring that the mark is used correctly.
3) Ensuring that, if the trade mark is used by others, such use is adequately controlled by the registered proprietor.
Application Process
Once having received your application, the examiner will process it according to the stages set out in the diagram and described below. If there are no deficiencies in the application and no objections to the trademark then the whole application process can take as little as 6 months from receipt of application to registration.
·Application
Upon receipt of the application form (Forms T2 or T2A), the Hong Kong trade mark registry will issue a receipt notifying the alloted application number.
·Deficiencies Checking
Before beginning to examine the application, the examiner will carry out a thorough check of the application form(s) and any attachments. This is to see if all the necessary parts of the form(s) have been filled in, if they are correct and if any required information is missing. If any required information is missing, the examiner will ask to provide the information to remedy the deficiencies within two months from the date of Registry's notice. Some amendments are very minor and will not affect the filing date of application, e.g. the class number of the applied for goods. Others are more important and will therefore affect the filing date, e.g. the applicant have not provided the representation of the trademark. Also, major changes to the application will not be accepted, for example, changes to the representation of the trademark. If everything is in order the application will proceed to the next stage (Search and examination).
·Search & Examination
After the deficiencies checking has been completed and all is found to be in order the examiner will conduct a search of the trademarks records to see if the same or similar trademark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services.
The examiner will also see if the trademark satisfies the registration requirements laid down in the Trade Marks Ordinance. Some of these criteria are listed in the "Before you apply" section in the "How to apply to register a trademark in the Hong Kong SAR" although this is not a comprehensive list. The examiner will then issue an opinion in writing which will either lay out the grounds for objection to the mark or confirm the mark is acceptable for registration.
·Objections
If the requirements for registration are not met, the examiner will object the mark application. The applicant, have 6 months in which to meet the requirements. A further 3 months extension may be granted.
·How to overcome objections
The examiner will indicate in the opinion why the mark does not meet the requirements for registration and may suggest ways of overcoming the objection if he/she thinks it is possible to do so.
·If the objections remain
Even if the applicant have tried to overcome the objections made in the initial opinion, the examiner may still find that the requirements for registration have not been met and will issue a further opinion indicating these findings. At this stage, if the applicant still wish to pursue your trademark application, then he/she has 3 months from the date of the further opinion to satisfy the registration requirements or call for a hearing. The applicant may ask for an extension of this period only in certain circumstances specified in the Trade Marks Rules e.g. where he/she needs additional time to obtain the consent of the owner of an earlier trademark.
·Hearing
If the applicants calls for a hearing, all the evidence for and against the trademark will be considered at a hearing, and a decision will be issued by a hearing officer.
· Publication of Trademark
Once the trademark has been accepted for registration, it is published in the Hong Kong Intellectual Property Journal at http://www.ipd.gov.hk/eng/ip_journal.htm.
·Opposition to your Trademark by a 3rd Party
Anyone can view the trademark in the Hong Kong Intellectual Property Journal and lodge an opposition to it. They have to file an opposition notice within the 3-month period beginning on the publication date. As the applicant, the applicant may withdraw your application or respond to the opposition by filing a counter-statement. Both parties are given the opportunity, within certain time limits, to file evidence in support of the application and opposition. When all the evidence has been received, a hearing will take place before a hearing officer who then makes a decision. If the applicant withdraws his/her application or loses in the opposition proceedings, he/she may have to pay towards the other party's costs.
·Registration
Once the trademark has been accepted for registration, the Registrar of Trade Marks will enter the details of the trademark into the trademarks register and the applicant will be issued with a certificate of registration. Notice of the registration will be published in the Hong Kong Intellectual Property Journal and the registration of the trademark will date back to the filing date of your application. That means as the owner of a registered trademark, the applicant's rights take effect from the filing date of the application.
II. Trademark in Macao
Flowchart of Application Process for Trademark in Macao
Macao Trademark Application
A trademark is a sign that is used to distinguish the goods or services of a company from those of others. Trademark is one of the essential components in the field of intellectual property.
Types of trademarks
The Macao SAR allows the formation of these different kinds of trademarks:
Product trademark: a trademark used on products or their packaging.
Service trademark: a trademark used in the course of the rendering of a service, in order to identify the service provider.
Association trademark: a specific sign belonging to an association of individuals and/or bodies corporate, whose members use or have the intention of using the sign for products or services.
Certification trademark: a specific sign belonging to a corporate entity that controls the products or services or establishes the regulations with which they must comply and that is to be used on the products or services subjected to that control or for which the regulations were established.
Three-dimensional trademark: a trademark based on the 3D appearance of the product or its container.
Sound trademark: a type of non-physical trademark that uses a specific type of sound used in trademark registration. A product or a type of service may be represented by means of a distinct tone or strings of tones.
Service target and eligibility of application
1. Any individual who is holding a Macao SAR Resident Identity Card;
2. Any body corporate registered in the Macao SAR and constituted according to the law of the Macao SAR;
3. For those who do not hold a valid Macao SAR Resident Identity Card, or are not a body corporate registered in the Macao SAR, they can appoint one of the following entities as their proxy, and submit the relevant “Power of Attorney”:
(1)A lawyer registered with the Macao Lawyers Association;
(2)A body corporate registered in the Macao SAR;
(3)An official industrial property agent authorized or accredited in the Macao SAR (currently not applicable).
Necessary documents
1. The completed “Application for Registration of Trademark” form, (can be prepared by our firm);
2. Notarized Power of Attorney;
3. Where appropriate, submit the following documents:
(1)Document of priority right;
(2)If the certificates or other documents are not written in official languages of MSAR, translated copies should be submitted in any official languages of MSAR (Chinese or Portuguese);
Processing time
1. If the documents have been presented in order, the registration will be granted in approximately six to eight months;
2. Time required for the issue of registration certificate is five working days.
Remarks
1. Registration of trademark is valid for 7 years counted from the date of granting. It may be renewed indefinitely, and each renewal will extend the validity for another 7 years. Within the six-month’s period right before the date of expiration, the right-holder of trademark can submit the application of renewal. The relevant renewal will be published on the first Wednesday of every month, in the Series II of Official Gazette of the MSAR, and the registration certificate could be obtained ten working days after the publication of the renewal;
2. In the following cases, an annotation is required to record or inscribe in the respective application document and registration certificate:
(1)Issue of exploitation license of trademark;
(2)Assignment of the right of trademark;
(3)Alteration of the name of applicant, right-holder or body corporate;
(4)Alteration of the address of applicant,
Macau Trademark Renewal
Within the final 6 months of the registration validity, the applicant should renew his trademark protection and pay the respective renewal fee. This renewal process will be conducted within 5 working days from the date the request is made, and the notice of the renewal will be published in the Official Bulletin of Macao SAR. Within 10 working days after the renewal notice has been issued, the IPD will file and return the renewed registration certificate to the owner.
Macao Trademark Opposition
Any person may file an opposition to the registration during a two months period after the publication of the application in the Official Bulletin of Macao SAR.
A duplicate of the opposition is sent to the applicant. The applicant may respond to the complaint in writing, and it is to be filed within one month of the respective notification. Both parties are then given the opportunity, within certain time limits, to file evidence in support of the application and opposition. Once the period for the presentation of oppositions has expired, the IPD will proceed to the examination and study the proceedings, and decide upon the granting, or not, of the application.
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