|Trade Mark Law|
A Brief Outline of the Trade Mark Law in Hong Kong
Any businessman who sells goods or services must have a mark to distinguish his goods or services from those of other traders. When a business becomes established, its most important and valuable assets are often its trade marks.
What is a trade mark?
According to the new Trade Marks Ordinance which came into force on 4 April 2003, a “trade mark” is means any sign which is (a) capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is (b) capable of being represented graphically.
Although ‘sign’ is undefined in the Ordinance, this term will be interpreted widely and will include a name, word (in any language), label, logo, device, signature, letter, numeral, shape or a combination of these. It can even be smell, sound or colour mark which is graphically represented. For example, a sound mark may be graphically represented using conventional musical notation or imitative word, e.g. a dog “woofing”. However, to be registrable under the Ordinance, a trade mark must have the necessary quality of distinctiveness. Accordingly, laudatory and descriptive words (and their variations) are normally not registrable, e.g., “Poisokiu” for insecticide, “Fruitti” for fruit juices or candy. Also indistinctive are common surnames (e.g. Cheung, Lee, William), simple combination of alphabets (e.g. ABC, ETC) and geographical names (e.g. China, York, Paris). These words are not normally accepted for registration unless there is a substantial history of use and strong evidence that they have, through their use, acquired distinctiveness.
Hence, the ideal trade marks would be invented words or phrases with no special meanings (such as KODAK, ROLEX) or distinctive devices (like the hexagonal logo of the Hongkong Bank).
Why register trade marks?
At common law, even an unregistered trade mark may enjoy certain protection under the law of “passing off”. However, to maintain such an action, the owner of the mark has to produce substantial evidence of his ownership of the mark, that goodwill attaches to the mark and that he has suffered actual loss due to the infringement. These are no easy tasks and can be quite costly. On the other hand, when a trade mark is registered, the registration shall be prima facie evidence to establish the owner’s right to sue the infringer.
Further, when a registered trade mark is infringed, the infringer may be subject to criminal punishment under the Trade Descriptions Ordinance. The maximum penalty is a fine of $500,000 and 5-year imprisonment. No such criminal punishment will be imposed if the trade mark is not registered.
Part A and part B registration
Under the old Ordinance a trade mark could be registered in either Part A or Part B of the Register In short, the difference between the two parts is that Part A required a higher level of distinctiveness and provided greater protection to the registered mark; Part B required less distinctiveness but also affords less protection. The new Ordinance abolishes this division of Part A and Part B and now adopts the old Part B standard as the test for the registrability of a trade mark.
Classes of goods and services
For registration purpose, goods and services are divided into 45 classes (34 for goods and 11 for services). An application for registration has to specify the class of goods or services in relation to which the trade mark is used. Very often one trade mark will be used on different classes of goods and services. For example, a fashion group may like to have a trade mark for all the following goods: clothing and shoes (class 25), leather handbags (class 18), optical glasses (class 9) and jewellery (class 14); and the service of retailing (class 35). In such case, a multi-class application can be made. Registration of the mark in one class does not prevent others from using the mark in goods or services of other classes.
Before lodging the application, the applicant could make a search with the Trade Mark Registry (under the Intellectual Property Department) to see if there is any identical or similar marks already registered or applied. The result of such a search is a fair indication of whether potential conflict exists but is not conclusive. If an identical or similar mark is found in the search, the applicant may consider adopting another trade mark. Now the search can be done via the internet.
The registration process starts by the filing of an application form with the Registry of Trade Marks. Application has to provide basic information including the name of the trade mark owner, the goods or services in which registration is sought and the class to which they belong in the application form. Of course specimens of the trade mark must also be submitted.
The application should also specify if the applicant is claiming “Convention Priority”. Under the Trade Marks Ordinance, priority may be claimed in a Hong Kong application based on an application filed, within six months, in any of the member countries of the Paris Convention and territories which have acceded to the World Trade Organization Agreement. In effect, the Hong Kong application will enjoy the same filing date as the Convention application.
The mark applied for in the Hong Kong application must be identical to that in the Convention application. The specification in the Hong Kong application must not be wider than that in the Convention application. The country and the filing date of the Convention application must be included in the Hong Kong application.
After the filing of all the requisite documents, the Registry will start to examine the application. It will then issue a letter informing the applicant if the application is acceptable or if further information or documents are required. If the Registry considers the application not acceptable, it will give its reasons and the applicant may file a reply thereto. Sometimes a formal hearing will be instituted to give an opportunity to the applicant to make submission to a senior official in the Registry. If the applicant is still dissatisfied with the decision of the Registry after the hearing, he may appeal to the High Court.
When an application is accepted by the Registry, it has to be advertised in the Government Gazette. Anyone aggrieved by the registration of the trade mark may file an opposition within a period of two months from the date of advertisement If no successful opposition is filed, the registration certificate will be issued.
Other strategic considerations
To secure the maximum protection, when filing the application, the applicant has to take into consideration matters like;
If the mark is a word mark, it should generally be filed in ordinary upper case type and in
black and white;
If the mark is a coloured mark, the applicant may file a coloured application. But in this case, protection will only be restricted to the colours specified in the application. So strategically this may not be advisable. Alternatively, a “black and white” application could be filed along with the coloured one;
If the mark has a variety of representations (e.g. a traditional Chinese character and a simplified Chinese character or stylized/artistic form of a word mark and a plain word mark) in the sense that the representations of mark resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark, applicant may consider registering the different representations as series marks.
Time and Cost
Because of the great number of applications, it now normally takes one to one and a half years for an application to be processed. The actual time required depends on whether the application is a straightforward one or if complications arise.
The solicitors’ fees for applying trade make registration are prescribed by the Law Society. There are also fees payable to the Trade Mark Registry. At present the solicitors costs are set at HK$3,000 per application and the fees payable to the Trade marks Registry are HK$1,300. If complications arise and extra work is required to collate evidence or correspond with the Registry, fees would be correspondingly higher. However, compared with the benefits of registration and the importance of trade marks to one’s business, such costs would seem relatively minor.
Published by ONC Lawyers © 2005. All rights reserved.
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The law and procedure on this subject are very specialized 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.