Trademark Filing in Hong Kong
A Trademark registered in India will not protect the trademark in a foreign country. Trademarks are territorial, its protection valid only within the borders of the territory/country where they are obtained registration.
Therefore, Trademarks are valid only in the country where it has been recorded and is not valid worldwide by default.
However, you can file for registration separately in individual countries.
Below is the procedure for filing Trademark in HONG KONG:
The procedure for Trademark Registration in Hong Kong is similar to that of the Trademark registration in India.
The 1st step for Registering Trademark in Hong Kong is SEARCH like in any other country and the search can be made for checking the availability of Trademark in Hong Kong can be done on esearch.ipd.gov.hk. It is legal with updated informative trademark database with full trademarks records available online.
It is also to be noted here that the Hong Kong Trademark Registry also offers the option of Search and Preliminary Advice services to anyone who wishes to obtain information on trade marks from the Registry’s records. In which they search the records and supply a list of trademarks that are the same as or similar to your proposed trade mark and in respect of the same or similar class of goods or services. In addition to the search they also provide preliminary advice as to whether your proposed trade mark is sufficiently distinctive so that it distinguishes your goods and services from those of other traders, but they charge extra for these services i.e. (HK$400 for each service plus HK$200 per each additional class of goods or services, if any) If you wish to use our Search and Preliminary Advice services, simply complete Forms T1 and submit it with the appropriate fee to the Registry.
It involves the filing of Application for Trademark Registration under Form T2 (in India Trademark Application is filed under Form TM-A). This Form includes the same details as that of Indian Application form for Trademark Filing like: Details of the Applicant, Trademark, class, Agent’s Details, goods/ services description (as per the Nice classification Hong Kong has 34 classes for goods and 11 for services Total 45, can be checked on the official portal of Hong Kong i.e. www.ipd.gov.hk.com) and amount to be paid for Filing the application which is HK$2,000 per application plus HK$1,000 per each additional class of goods or services, if any. Upon receipt of your application form (Form T2), Registry will issue a receipt notifying you the allotted application number.
After filing the application for the Trademark registration the next step is the examination of the Application in order to see whether there are any deficiencies or not. And in case there is any missing information which is required the Trademark Registry will inform you to provide the information. And if everything is in order the application will proceed to the next stage (Search and Examination).
In this step the Examiner will check whether the application complies with all legal requirements for registration (for instance, conduct a search of the trademarks records to see if the same or similar trademark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services and also see if the trademark satisfies the registration requirements laid down in the Trade Marks Ordinance.)
The examiner will then issue an opinion in writing which will either lay out the grounds for objection to the mark or confirm the mark is acceptable for registration.
In this step if the requirements for registration are not met Registry will object to the mark. You, the applicant, have 6 months in which to meet the requirements. A further 3 months extension may be granted.
Registry will also provide opinion why the mark does not meet the requirements for registration and may suggest ways of overcoming the objection.
After, reply are been filed by the applicant the Hong Kong registry is not satisfied with the Reply, then the registry again issues the opinion after after the expiry of 6 months, at that time it is on the applicant whether he wants to pursue the mark or he by satisfying the registration requirements (opinion provided by registry) or call for a hearing. If you call for a hearing, all the evidence for and against the trademark will be considered at a hearing, and a decision will be issued by a hearing officer.
Publication of Trademark: Once your trademark has been accepted for registration, it is published in the Hong Kong Intellectual Property Journal.
Once the application is been accepted by the Registry and published in the official Gazette there is 3 months (In India it 4 months) for anyone who wishes to oppose your registration. If there is no opposition within the prescribed period, or if an opposition is overcome, your mark will be entered in the Trade Marks Register and a certificate of registration will be issued to you.
After the application received by examiner, he will process it according to the stages set out in the diagram and described above. If there are no deficiencies in the application and no objections to the trademark then the whole application process can take as little as 6 months from receipt of application to registration.