- IPD new forms
The Intellectual Property Department (IPD) of Hong Kong has announced that new Trade Marks, Patents, and Designs Forms will be used from 16 May 2025 onwards.
Key Changes:
- Agent Declaration Requirement:
Agents must now confirm they have a real physical presence in Hong Kong—either by living there or actively conducting business at the given address. - Warning Against False Information/declaration:
The forms include a warning that submitting false information is a legal offence. This rule helps ensure that agents are genuinely present in Hong Kong, reducing the risk of missed deadlines or communication issues. - IP Owners Should Choose Reliable Agents:
If you own intellectual property, make sure your agent actually operates in Hong Kong and is not just using a mailing address without real business activities. - More Detailed Information Required in Some Forms:
Certain forms (T8, T10, T11, P9, P10, P19, D5, and D11) will now ask for details about the type and place of incorporation of IP owners, licensees, mortgagees, and other related parties. This helps with due diligence in IP transactions.
The IPD has shared the draft versions of the new forms, please see https://www.ipd.gov.hk/en/home/whats-new/index_id_628.html for reference.
- Grounds may lead to refusal of trade mark application
The IPD has updated the chapter on “Absolute Grounds for Refusal of Trade Marks” to clarify how the Trade Marks Registry examines applications. The key focus is on Sections 11(4)(a), 11(4)(b), and 11(5)(a) of the Trade Marks Ordinance. Below is a summary:
(i) Section 11(4)(a) – Marks That Violate Morality Principles
A trade mark may be rejected if it is considered offensive, inappropriate, or against public interest. This includes marks that:
- Are offensive or vulgar
- Threaten national security
- Contain hateful or offensive content
- Imitate official symbols (such as government emblems)
- Refer to tragic or disturbing events
(ii) Section 11(4)(b) – Marks That May Mislead or Deceive
A trade mark may be refused if it misleads consumers, such as:
- Including words like “Made in,” “Imported from,” or “Exported from” a specific place when the actual origin is different.
- Suggesting official approval (e.g., by a government or authority) when no such endorsement exists.
(iii) Section 11(5)(a) – Marks Prohibited by Law
A trade mark will not be accepted if its use is illegal in Hong Kong. This applies if:
- The mark violates the PRC Law on Safeguarding National Security in Hong Kong SAR or the Safeguarding National Security Ordinance.
- Faster Hearing Scheduling by IPD
In the past, IPD took over a year to schedule a hearing after pleadings closed.
Recently, IPD has sped up the process, often scheduling hearings in less than a year—sometimes even within one or two months.
This change is great news, as it helps parties resolve cases faster and makes the legal process more efficient.
How We Can Help
Incorporated and carried on business in Hong Kong, we can act as the client’s agent to handle the registration of their IP rights. We can also assist clients in assessing the risk of trade mark refusal based on these and other legal grounds. By doing so before filing, we help minimize the chances of rejection and ensure compliance with all relevant laws.
