By Benjamin Choi, Managing Director
Hong Kong is expecting the launch of the International Registration (IR) of Trade Marks under the WIPO Madrid System by tentatively end of 2022 or early 2023. This will be in addition to the long established and territorial based trade mark registration system, whereby trade mark owners domiciled or incorporated in Hong Kong can designate their marks registered in Hong Kong for extended registration in selected multiple countries or jurisdictions worldwide within the Madrid network. This eliminates the necessity for individual national filings to obtain registration in each of the countries intended for protection. Overseas trade mark owners can also extend their home registrations through the IR system for designation in Hong Kong to save them the need for separate registration in Hong Kong.
On 19 June 2020, the Trade Marks (Amendment) Ordinance 2020 came into force to pave the way for the administration and examination of IR trade marks under the Madrid System. The Hong Kong Intellectual Property Department (IPD) has revamped the trademark law and practice, and taken the opportunity to simplify or modify certain processes, work flows and formality requirements enabling trade mark owners and their trade mark service providers to handle and administer their portfolios with better ease and convenience.
The chart below illustrates the changes that have already been implemented or that we may expect going forward.
| Past | Present or Near Future | Benefits |
| Only the Applicant’s name and address need to be provided in the Application form. | The Applicant’s country and state (for the US) of incorporation need to be specified in the Application form, apart from its name and address. | This helps to better identify the origin and incorporation status of the Applicant or Owner of the trade mark based on the official records. |
| Original letter of consent signed by the owner of an earlier mark cited was strictly required. | Now a scanned or photocopy of a letter of consent is considered satisfactory to resolve a relative ground of refusal based on an earlier mark. | This saves the Applicant the time to wait for the postage of the original letter of consent from abroad and the effort of the grantor posting the original letter especially during the Covid restriction. |
| Certified priority document (extract of filing issued in the first filing country) required in support of a Paris Convention priority claim. | Certified priority document is dispensed with unless specifically requested by the Registry. | This saves the Applicant the time and cost to arrange for issuance of the certified priority document. |
| The Trade Marks Registrar will maintain the Applicant’s own earlier registered marks bearing a different and former address as conflicting marks due to the address difference unless the Applicant properly enters change of address for all the marks concerned in the Register. | Now an applicant is not required to record address change for its own earlier registered marks (bearing a different address) as and when cited as conflicting prior marks due to the address discrepancy. The applicant or its agent can simply inform the TMR in writing that the applicant is the same entity as the owner of the cited trademarks (subject to documentary proof). | This saves the Applicant the costs of recording address change for its older trademark records. |
| All opposition forms and documents must be printed, signed and filed at the Trade Marks Registry office. | Now a Notice of Opposition and Extension of Time for Opposition can be filed through the IPD online portal. | This saves the need for the Opponent or its agent to attend the Registry’s office to file opposition documents within the office hours. |
| All hearings before the Trade Marks Registry conducted in person unless a party opted for paper submission. | Hearings may be conducted on paper, orally or via video conferencing or other electronic means. | This copes with the Covid social distancing requirements in the past year. |
| An Applicant seeking to revoke a third party’s registered mark on the ground of non-use has to produce prima facie evidence of non-use usually by engaging a private investigator to conduct market intelligence. | In the near future, an Applicant seeking to revoke a third party’s registered mark will not be obliged to produce prima facie evidence of non-use when filing the non-use revocation. It is solely the owner’s responsibility to prove actual use of the mark to defend a non-use claim. | This saves the costs and time of the Applicant to conduct the pre-revocation filing investigation which can be quite co |
The IPD is still working on the Trade Marks (Amendment) Rules 2021. We will monitor the changes in the trade mark regime and keep you up-to-date on our practice.
26 February 2021
