Applying for Trade Mark Protection in Multiple Jurisdictions (Part II): The Madrid System to be Implemented in Hong Kong in 2019

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Introduction

In “Applying for Trade Mark Protection in Multiple Jurisdictions (Part I): the Madrid System”, we introduced international registration of trade marks and discussed the advantages and weaknesses of such registration under the Madrid System.

The Intellectual Property Department of Hong Kong (the “IPD”) conducted a three-month consultation exercise on the proposed application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) to Hong Kong in November 2014.

The IPD has recently apprised stakeholders on the outcome of the consultation exercise and announced to implement the Madrid Protocol to Hong Kong in 2019 the earliest.

Significance of the Madrid Protocol

The Madrid Protocol is an international agreement administered by the World Intellectual Property Organisation (the “WIPO”) that allows an applicant to file for international registration of trade marks to the WIPO via the trade mark office where the basic registration is held (i.e. the domestic office, or office of origin).  The applicant can designate multiple contracting parties (currently, there are 98 contracting parties to the Madrid Protocol, including China, the European Union, the United States, Japan, South Korea, Singapore etc.) in which protection is sought for his/her international application.  This means that an applicant can register a trade mark in multiple countries by filing a single international application, and by paying one set of fees.  After registration, the owner enjoys the convenience of managing his/her trade mark portfolio in different designated territories through a single procedure with the WIPO.   This contrasts with the traditional system, which requires an applicant to register separately in every jurisdiction where he/she wishes to obtain protection for a trade mark.

It is hope that after the implementation of the Madrid Protocol to Hong Kong, a more efficient and cost-effective one-stop services in obtaining and managing registration of trade marks can be provided to local and international businesses.

Role of the Hong Kong Trade Marks Registry (“the Registry”)

The IPD has set out some pertinent features of the proposed implementation arrangements of the Madrid Protocol. Under the IPD’s proposal, the Registry, as an office of origin will directly submit an international application which must be based on a domestic application or registration filed with the Registry to the WIPO, and liaise with WIPO for follow-up.

Similarity, the Registry, as a designated office, will directly receive incoming requests from the WIPO for territorial extension of protection of an international registration which designate the “Hong Kong, China”, examine such requests and notify the WIPO of its decision on whether protection will be granted or not.

Eligibility to File International Applications in Hong Kong

An international application based on a domestic application or registration with the Registry can be filed via the Registry if the applicant is (1) a Chinese national (wherever his/her place of residence), (2) a natural person or a legal entity that has real and effective industrial or commercial establishment in Hong Kong; or (3) domicile in Hong Kong.

It is worth noting that a Chinese national will have the option of filing his/her international applications via the Registry of Hong Kong or the Trade Mark Office (the “CTMO”) of the State Administration for Industry & Commerce of the Mainland China acting as the office of origin.  He/she is therefore entitled to make an international application through either office.

Implication for Implementation of the Madrid Protocol to Hong Kong

  1. For Hong Kong and Mainland China applicants

While Hong Kong enjoys a high degree of autonomy, retains its separate legal system from the Mainland China and thus operates its own trade mark office, Hong Kong is a part of China. The Madrid Protocol is an international agreement restricted to states, of which the Mainland China is a contracting party. The intended application of the Madrid Protocol by Hong Kong as a special administrative region of the Mainland China is made possible through some special arrangements with the WIPO.

By reasons of the above, mutual designations between the Registry of Hong Kong and the CTMO of the Mainland China for international applications filed by a Chinese national or a legal entity domiciled in Hong Kong or Mainland China are not possible. An international application based on a domestic application/registration in Hong Kong therefore cannot be relied on under the Madrid Protocol for extending territorial protection to the Mainland China, and vice versa.

In other words, trade mark applicants who are Chinese nationals or legal entity domiciled in Hong Kong or the mainland China have to make separate applications in these two places in order to obtain protection.  This can limit the convenience afforded by the Madrid Protocol to local or PRC applicants.

  1. For international applicants seeking territorial extension
    of protection of their international applications

Since there will be two designating offices in China, one is the CTMO and the other one the Registry, international applicants will have the option of seeking territorial extension of protection of international applications designating both Hong Kong and the Mainland China, or one of the two jurisdictions according to their business needs. International applicants should pay attention that designation made only to the Mainland China will not automatically apply to Hong Kong, and vice versa.

Tentative Timetable

To implement the Madrid Protocol, the IPD will proceed to prepare legislative proposals to amend the Trade Marks Ordinance (Cap. 559) and the Trade Marks Rules (Cap. 559A), build a dedicated information technology system, devise manual for processing international application and registration etc. from 2017 to 2018. If the preparatory work runs smoothly, the Madrid Protocol will be adopted in Hong Kong in 2019.

Conclusion

Implementing the Madrid Protocol will further enhance the competitiveness of Hong Kong as an international business and intellectual property trading hub. However, since local corporations or businesses cannot rely on the Madrid Protocol to gain trade mark protection in the Mainland China, its efficacy may be curtailed. A special arrangement between Hong Kong and the Mainland China to facilitate reciprocal filing should be explored.  Stay tuned on further updates of the implementation details of the Madrid Protocol to Hong Kong.

 

For enquiries, please contact our Intellectual Property & Technology Department:
E: ip@onc.hk                                                                        T: (852) 2810 1212
W: www.onc.hk                                                                    F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
Published by ONC Lawyers © 2017