Introduction

The Trade Marks (Amendment) Ordinance 2020 (the “Amendment Ordinance”) was gazetted and became effective on 19 June 2020 (except for Section 5 and Part 4 of the Amendment Ordinance which shall come into operation on a day to be further appointed by the Secretary for Commerce and Economic Development).  The Amendment Ordinance is long-awaited as it allows the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”) in Hong Kong.  In this article, we will walk you through the major amendments and the implication to the local intellectual property regime brought by the Amendment Ordinance.

Major amendments to the existing Trade Marks Ordinance

Application of Madrid Protocol in Hong Kong

The Amendment Ordinance added a new Part XA concerning the international registration of trade marks under the Madrid Protocol to the existing Trade Marks Ordinance (the “Existing Ordinance”) which allows the Registrar of Trade Marks to make rules to:-

1.        give effect in Hong Kong to the provisions of the Madrid Protocol;

2.        provide for matters relating to international application including procedure for making or dealing with the application; and

3.        provide for matters relating to:

a.        international designation (HK) (request made under the Madrid Protocol for extension to Hong Kong of the protection resulting from the international registration of a trade mark) (“International Designation (HK)”); and

b.        protected international trade mark (HK) (trade mark on which protection resulting from international registration of the mark is conferred in Hong Kong),

including the procedure for dealing with the International Designation (HK) such as the examination of the designation and the communication of information to the International Bureau of the World Intellectual Property Organization (“International Bureau”), etc. 

The HKSAR Government is currently pressing ahead with the relevant preparatory work for the implementation of the Madrid Protocol in Hong Kong, namely preparing the relevant subsidiary legislations to provide for the procedural details of the application of the Madrid Protocol in Hong Kong, setting up a dedicated information technology system for facilitating the application of the Madrid Protocol and obtaining the agreement by the Central People's Government concerning the application of the Madrid Protocol in Hong Kong. The Government targets to implement the Madrid Protocol in Hong Kong as soon as possible.

Enforcement

The Amendment Ordinance also added a new Part XIIA to the Existing Ordinance which confers powers on the Customs and Excise Department to enforce certain criminal provisions of the Amendment Ordinance.  Enforcement officers comprising members of the Customs and Excise Service or other officers appointed pursuant to the Amendment Ordinance who have power to (i) investigate offences under the Existing Ordinance, (ii) have the power to enter and search a place with warrant, and (iii) stop, search, arrest and detain whoever an enforcement officer reasonably suspects to have committed an offence under the Existing Ordinance. Because of the application of the Madrid Protocol, the Amendment Ordinance also incorporated the concept of co-operation among international enforcement authorities into the Existing Ordinance.

Other practical matters

There are also various technical amendments to the provisions of the Existing Ordinance for enhancing Hong Kong's trade mark application and registration system. Brief details of the technical and miscellaneous amendments could be found at the FAQs published by the Intellectual Property Department.

Implication of the Amendment Ordinance

The Amendment Ordinance provides a legal basis in Hong Kong to implement the Madrid Protocol which is a key measure to enhance our local intellectual property regime by largely simplifying the registration process for trade mark owners.  The Madrid Protocol currently has 106 contracting parties including major trading partners of Hong Kong and allows trade mark owners to apply for trade mark registration in the register of the International Bureau, and to seek extension of protection of trade marks in multiple jurisdictions by a one-stop application process. By introducing the application of the Madrid Protocol to Hong Kong, owners of international trade marks will no longer have to file applications in each jurisdiction separately. It is expected that the international registration system under the Madrid Protocol will be implemented in Hong Kong in the next few years.

Conclusion

The enactment of the Amendment Ordinance is a major breakthrough to the local trade mark regime and allows a more efficient and cost-effective registration of international trade marks once the implementation of the Madrid Protocol is ready. Trade mark owners will undoubtedly benefit from the one-stop application process when the Madrid Protocol is applied in Hong Kong.  We will come back and write further on this issue once the subsidiary legislations and rules concerning the implementation of the Madrid Protocol in Hong Kong are enacted.