Trade Marks, Registration and Infringement

When creating your company name, dating app icon, the pattern of your tweed coat or simply the shape of your macadamia nut bar, consider registering a trade mark. A trade mark is a written or drawn sign distinguishing your goods and services from the crowd.

A trade mark can be words, letters, numerals, sounds, smells or even the shape of goods or their packaging and any combination of these signs.[1] Registering your trade mark means that if a trader uses your sign for identical or similar goods and services in Hong Kong without your consent, you may sue them for infringement.[2]

How to Register a Trade Mark in Hong Kong?[3]

Stage 1  –  Before the Application

The Trade Marks Registry (“Registry”) is responsible for approving your trade mark registration. If the Registry objects to your application, you will have to file a new application. To save time and costs, consider the following non-exhaustive list of grounds of objection before applying.[4]

  • Which class or classes does your mark belong to?[5]

It is key to identify the class or classes that your goods and services belong to. Identical/ similar marks cannot co-exist under the same/ similar class of goods and services. This explains why “Apple” can represent both the newspaper and the smartphone manufacturer while “TWG” has been the subject of the long-running dispute between Twit Wing, a Hong Kong tea distributor, and TWG Tea, a Singaporean tea brand.[6]

Therefore, to gain maximum protection, it is advised that owners should register the trade mark in more classes, including those the business/products primarily fall into, as well as the ancillary/potential services and products that the company offers.

Click here for the list of classes of goods and services.

  • Is your mark distinctive?

The Registry will likely object to your application if your mark is indistinctive.

Distinctiveness of a trade mark can be inherent or acquired.

Inherent distinctiveness refers to the use of invented words or everyday words unrelated to your industry. For example, the invented word “Zalora” is distinctive for online fashion while the everyday words “Coffee Meets Bagel” is distinctive for a dating app. Inherent distinctiveness comes in a continuous spectrum as below. Generally, the more the word leans towards arbitrary end of the spectrum, the more distinctive the mark is.

 

Distinctiveness can also be acquired by use. It is possible to acquire distinctiveness of your mark by extensive expenditure on advertisement and promotion, such that customers will immediately associate that word with your mark and your company, e.g. by customer survey and sale figures. 

  • Is your mark a mere description of your goods/ services?

The Registry will likely object to your application if your mark merely describes the quality, quantity of your goods or services, or uses a geographical name. Examples include “Super Delicious Sandwiches” and “Parisian Fashion”.

  • Is your mark a commonly used industrial term?

The Registry will likely object to your application if your mark is a common business term in your industry. An example would be “V8” for car engine.

  • Is your mark identical or similar to an existing trade mark in the same or a similar industry?

The Registry will likely object to your application if your mark is identical or similar to a registered mark, or one that is applied for. You can obtain preliminary advice and a list of identical or similar trade marks from the Registry for HKD $400 by completing Form T1, which can give you a good indication as to whether your trade mark is eligible for registration. Alternatively, you can conduct your own search for free at http://ipsearch.ipd.gov.hk.

Stage 2  –  Your Application

The application fee for the registration of a trade mark is HKD $2,000 and HKD $1,000 for each additional class of goods or services.

Normally you will only need to fill in Form T2 to register a trade mark. But if you are registering a sound or smell mark, a 3-dimensional shape or a color mark, you will also need to fill Form T2A.[7] You must include a graphical representation of your trade mark and select the specific class of goods and services covered by your application in the forms. Applications to cover all goods and services are often rejected as being too vague.[8]

Please refer to the Explanatory Notes for more guidance on filling out the forms. If you still have questions about your application, you can visit http://www.ipd.gov.hk or email your question to enquiry@ipd.gov.hk.

Checklist before sending out your application

  • Consider if your mark is prone to the above objections. If so, make changes accordingly.
  • Get preliminary advice from the Registry or carry out your own trade mark search.
  • Fill in and sign Form T2 and/ or Form T2A.
  • Pay the necessary fees.

Stage 3  –  Examination by the Trade Marks Registry

Normally, the registration will take at least six months to complete.

  • Error Checking

The Registry will check the application form(s) and require you to supply any missing information.

  • Trade Mark Search and Examination

The Registry will check if the same or similar trade mark has been registered or been applied for. It will check if the trade mark is eligible for registration. Please refer to “Before the Application” above for some of the registration requirements. If the requirements are met, you will receive a written confirmation.

  • Objections

If your trade mark fails the registration requirements, you will receive written grounds for objection, and occasionally suggestions to overcome the objection. If you have made efforts to overcome the objections but the Registry still considers that the registration requirements have not been met, you will have 3 months from this further opinion to satisfy the requirements or call for a hearing.

  • Publication of Trade Mark

Once your trade mark is accepted for registration, it will be published in the Hong Kong Intellectual Property Journal (“Journal”).

  • Objections by a Third Party

The public can have access to your trade mark in the Journal and file an objection to it. In response, you can withdraw your application or file a counter-statement and the relevant evidence to support your application. However, if you lose in the objection proceedings, you may have to pay the other party’s costs.

  • Registration

Once your trade mark is accepted for registration, and if no objection is received within 3 months from the publication, the Registrar of Trade Marks will enter the details of your trade mark into the Trade Marks Register, issue a certificate of registration and publish a registration notice in the Journal.

Rights of Registered Trade Mark Owners in Cases of Infringement

A registered trade mark owner has rights to exclusive use and to take legal action against infringement, effective from the filing date of your application.

What would Amount to Infringement?

Under Trade Marks Ordinance, a trader infringes a registered trade mark if:[9][10]

  • He uses a sign that is identical or similar to the registered trade mark;
  • The use is associated with the same or similar goods and services that the trade mark is registered for; and
  • If the sign is similar but not identical, the use is likely to cause confusion among the public

Here is a non-exhaustive list of factors to assess the “similarity” between marks:[11]

  • The degree of visual, aural, conceptual similarity; their importance to the goods or services
  • How likely would the public believe that the goods or services come from the same company.
  • Would an average consumer find the marks similar, given most consumers would only form overall impressions of the marks and not proceed to analyze their details?

Key Legal Remedies Available to Trade Mark Owners

In cases of infringement, trade mark owners can seek the following relief.

  • Order for Delivery Up

Under Trade Marks Ordinance, a trade mark owner can apply to the court for an order for the infringer to deliver up all infringing goods.[12]

  • Interlocutory/ Permanent Injunction

A temporary/ permanent order to stop the infringer from supplying infringing goods and services

  • Anton Piller Order

A temporary order compelling the infringer to disclose all relevant information

  • Order for an Account of Profits

An order for the infringer to account for any profits that it earned from supplying infringing goods and services

Appendix: List of classes of goods and services

The current classes of goods and services (subject to future changes) are as follows.

Classes of Goods

  • Class 1: chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry;
  • Class 2: paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists;
  • Class 3: bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices;
  • Class 4: industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting;
  • Class 5: pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals ; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides;
  • Class 6: common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other Classes; ores;
  • Class 7: machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines;
  • Class 8: hand tools and implements (hand operated); cutlery; side arms; razors;
  • Class 9: scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus;
  • Class 10: surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials;
  • Class 11: apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes;
  • Class 12: vehicles; apparatus for locomotion by land, air or water;
  • Class 13: firearms; ammunition and projectiles; explosives; fireworks;
  • Class 14: precious metals and their alloys and goods in precious metals or coated therewith, not included in other Classes; jewellery, precious stones; horological and chronometric instruments;
  • Class 15: musical instruments;
  • Class 16: paper, cardboard and goods made from these materials, not included in other Classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other Classes); printers’ type; printing blocks;
  • Class 17: rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other Classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal;
  • Class 18: leather and imitations of leather, and goods made of these materials and not included in other Classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery;
  • Class 19: building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal;
  • Class 20: furniture, mirrors, picture frames; goods (not included in other Classes)of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics;
  • Class 21: household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; 
  • Class 22: ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other Classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials;
  • Class 23: yarns and threads, for textile use;
  • Class 24: textiles and textile goods, not included in other Classes; bed covers; table covers;
  • Class 25: clothing, footwear, headgear;
  • Class 26: lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers;
  • Class 27: carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile);
  • Class 28: games and playthings; gymnastic and sporting articles not included in other Classes; decorations for Christmas trees;
  • Class 29: meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats;
  • Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice;
  • Class 31: grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt; 
  • Class 32: beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; 
  • Class 33: alcoholic beverages (except beers);
  • Class 34: tobacco; smokers’ articles; matches;

Classes of Services

  • Class 35: advertising; business management; business administration; office functions;
  • Class 36: insurance; financial affairs; monetary affairs; real estate affairs;
  • Class 37: building construction; repair; installation services;
  • Class 38: telecommunications;
  • Class 39: transport; packaging and storage of goods; travel arrangement;
  • Class 40: treatment of materials;
  • Class 41: education; providing of training; entertainment; sporting and cultural activities;
  • Class 42: scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; 
  • Class 43: services for providing food and drink; temporary accommodation;
  • Class 44: medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; 
  • Class 45: legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals

[1] Halsbury’s Laws of Hong Kong “Intellectual Property: Trade Marks, Copyright and Plant Varieties Rights” [225.526]

[2] Trade Marks Registry, Intellectual Property Department, The Government of the HKSAR “How to apply to register a trade mark in the Hong Kong SAR?” <http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/how2apply.pdf&gt;

[3] Trade Marks Registry, Intellectual Property Department, The Government of the HKSAR “How to apply to register a trade mark in the Hong Kong SAR?” <http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/how2apply.pdf&gt;

[4] Trade Marks Registry, Intellectual Property Department, The Government of the HKSAR “How to apply to register a trade mark in the Hong Kong SAR?” <http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/how2apply.pdf&gt;

[5] Halsbury’s Laws of Hong Kong “Intellectual Property: Trade Marks, Copyright and Plant Varieties Rights” [225.643]

[6] Deacons, “Deacons wins trade mark dispute in the Court of Final Appeal for Tsit Wing Group” http://www.deacons.com.hk/news-and-insights/news/deacons-wins-trade-mark-dispute-in-the-court-of-final-appeal-for-tsit-wing-group.html

[7]Trade Marks Registry, Intellectual Property Department, The Government of the HKSAR “How to apply to register a trade mark in the Hong Kong SAR?” <http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/how2apply.pdf&gt;

[8]Halsbury’s Laws of Hong Kong “Intellectual Property: Trade Marks, Copyright and Plant Varieties Rights” [225.527]

[9] Trade Marks Ordinance (Cap.559), s.18(3)

[10] Halsbury’s Laws of Hong Kong “Intellectual Property: Trade Marks, Copyright and Plant Varieties Rights” [225.552 – 225.553]

[11] Halsbury’s Laws of Hong Kong “Intellectual Property: Trade Marks, Copyright and Plant Varieties Rights” [225.553]

[12] Trade Marks Ordinance (Cap.559), s.23

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