About Trademarks
1. What is a trademark?
A trademark can be a word, name, English letters, numbers, or an image, or any combination of these. The purpose of a trademark is to distinguish one brand or service from another. In Hong Kong, trademarks are protected under the Trademarks Ordinance and common law regarding goodwill. To use a trademark in both Hong Kong and mainland China and enjoy legal protection, trademark registrations must be applied for in both places. A trademark registration solely in China will not provide protection under Hong Kong law, and a trademark registration solely in Hong Kong will not provide protection under mainland law.
2. Why should I apply for trademark registration?
If a trademark owner does not apply for trademark registration and only sues another company under common law for passing off, the trademark owner must provide evidence of sufficient goodwill built up through years of sales and advertising to support the lawsuit. Even worse, another company could take advantage of the situation and maliciously preemptively register, preventing the trademark owner from continuing to use the trademark. Therefore, filing a trademark registration application as soon as possible is the best protection.
3. What are the benefits of applying for trademark registration?
Once your trademark is successfully registered, you have the exclusive right to use it in connection with the goods and services covered. If anyone uses your trademark in connection with identical or similar goods or services in Hong Kong without your consent, you can take legal action to cease and desist from the infringing behavior and seek compensation. If your trademark is not registered, it is difficult to prove that you are the "owner" of the trademark, and your protection is limited. In short, applying for trademark registration offers the following benefits:
1. A registered trademark is the best proof of your exclusive right to use your trademark, preventing others from using the same or similar trademark and providing greater protection for your trademark.
2. A registered trademark allows you to use your trademark with confidence, without worrying about inadvertently infringing on another company's trademark.
3. A registered trademark allows you to legally add the ® or "Registered Trademark" logo next to your trademark.
4. A registered trademark prevents others from registering an identical or potentially confusing trademark for the same goods or services as yours.
5. A registered trademark is a company's most important, intangible asset, a legacy that can be passed down to future generations. It helps facilitate asset valuation when the company is listed or acquired.
6. A registered trademark is essential for expanding a business through franchising.
7. A registered trademark makes it easier for a company to gain consumer trust and assure consumers of product quality. A valid trademark registration ensures long-term market dominance, increases sales, and maintains a positive reputation. It is the best preparation for gaining market share.
4. Can all types of trademarks be successfully registered?
No. A trademark must be original and distinctive enough to distinguish the products or services it represents from other brands. If your trademark lacks distinctiveness or is a mark that directly describes the product, you will face difficulties in registering it. If someone else has already registered the same or similar trademark for similar goods or services, your trademark application will be unlikely to be successful.
When submitting a trademark registration application, consider the following:
1. The trademark must be distinctive:
A trademark must be unique. Whether it is a logo, word, or image, a successful trademark distinguishes a company from other products. If the Trademark Registry finds that a trademark lacks these characteristics after receiving a trademark application, it will file an objection. Distinctive trademarks include any newly created words or everyday words that have nothing to do with the business, such as "ROSEMARY" for medical services or "KRISZAC" for eyewear services.
2. A trademark cannot be merely descriptive of the goods or services:
If a trademark is merely descriptive of the goods or services, such as a place name or words describing the quality of the goods, such as "Quality Handbags" or "Tokyo Fashion," the Trademark Registry will oppose the trademark application.
3. A trademark cannot be common language in the industry:
Common industry terms, such as "V8" for car engines or idioms for clothing such as "ZIPPER" or "VELCRO," will be opposed by the Trademark Registry.
4. A trademark cannot be similar to other goods or services:
The trademark being applied for cannot be similar to an already registered trademark, including in appearance and sound. To check whether a similar trademark has been registered by other businesses, you should check the Trademark Register or conduct an online search at http://ipsearch.ipd.gov.hk.
5. How long does the entire trademark registration process take?
Within two months of submitting a trademark application, the Trademark Registry will complete a trademark examination report outlining the trademark's eligibility criteria and any restrictions. Once all requirements listed in the report are met, the applicant can publish the trademark in the Government Gazette. The public has three months from publication to file a grounds-based objection to the trademark. If no objection is filed, the trademark officially becomes registered. Under normal circumstances, the entire trademark registration process takes approximately six to nine months.
6. Is there a time limit for trademark registration? Can it be extended?
A trademark is valid for ten years after its first registration, and each subsequent renewal is valid for ten years.
7. What do the “TM” and “®” symbols mean? What are the requirements for their use?
The "TM" symbol represents a trademark, signifying to the public that the brand or trademark is a sign that can be used to identify products or services. This symbol can be used for both unregistered and registered trademarks. "®" represents a registered trademark. Under current Hong Kong law, the "®" symbol cannot be used in connection with unregistered trademarks.