TRADEMARK (HONG KONG, CHINA & OTHER COUNTRIES/DISTRICTS)
u    Trademark search
u    Legal opinion on registrability of Trademark
u    Trademark Application
u    Legal opinion on Office Action or Third Party’s objection
u    Drafting, preparing & filing a written submission in response to Office Action
u    Third Party’s objection to Applicant’s trademark application
u    Declaration of invalidity of a registered trademark
u    Analysis of infringement of trademark
u    Legal Opinion on infringement of trademark
u    Warning letter (Cease & Desist Letter) to infringers & related persons
u    Infringement of IP Litigation and Application for Injunction Orders
u    Trademark renewal
u    Transfer of Trademark and Trademark Licensing

Information and Requirements for HK Trademark application

What is trademark
Trademark is a distinctive sign or mark which is used to distinguish the goods/services of one undertaking from those of the other undertakings. Trademark can be word/words, letters, numbers, patterns, sounds, smells, colors, packaging, three-dimensional trademarks, or combination of these elements. A sign must be capable of being represented graphically in order for it to be registered as a trademark.

Documents & information required for registration
1.     Copy of ID card or passport for an individual applicant or Registration Certificate / Business Registration Certificate for a corporate applicant.
2.     Address of applicant.
3.     Representation of the mark.
4.     Classifications of goods/services (applied-for goods/services).

Validity of the registration of trademark
The valid period of the registration of trademark in Hong Kong is 10 years from the filing date of the application and renewable for every 10 years before the expiration.

Classifications of goods/services
Latest version of NICE Classification is applicable to Hong Kong and most of the countries.

Amendments of applied-for goods/services after the filing of the application
Generally speaking, the applied for goods/services cannot be increased or changed after the filing of the application. However, amendments limited to specific description, reduction or removal of the original designated goods/services so as to narrow down the range of protection may be allowed subject to the condition that such amendment is without detriment to the right of others.

“®”SIGN
“®” is a symbol of Registration. It means that the trademark is registered. It is normally indicated on the top right of the mark. The registered trademark with a symbol of “®” is generally labelled to the designated goods or services so as to let the public know that the relevant brand has already been registered as a trade mark. Any person who falsely represents that a sign is a registered trade mark or makes a false representation as to the goods or services for which a trade mark is registered by using a symbol of “®”commits an offence.

“TM”   SIGN
“TM” is an abbreviation of Trade Mark as well as a symbol of trademark. It’s normally indicated on the top right of the brand in order to let the public know that the brand is a trademark. Either a registered or non-registered trademark can have the symbol “TM” indicated on its right top but it is normally used on a non-registered trademark.

Priority
The applicant may, within 6 months after the filing of the trade mark application in a designated country and in reliance thereon, file a trade mark application in Hong Kong claiming priority over an earlier trademark application in that designated country. Likewise, the applicant may, within 6 months after the filing of the trade mark application in a Hong Kong and in reliance thereon, file a trade mark application in other countries (say, China) claiming priority over an earlier trademark application in Hong Kong.

Application Examination Procedure
Once the Trade Mark Registry has received the application of the applicant, the examiner will process the application in accordance with the stages set out in the following diagram. If there are no deficiencies or no opposition by the third parties, the whole process (from the date of receipt of the application to the date of approval) will take about 6-8 months.

Objection
If the requirements of the application are not met, the Trade Mark Registry will object the application and in which event, the applicant has to meet the requirements within 6 months. A further extension of time for 3 months to comply with the requirements may be granted.

Publication
If the trademark application is accepted for registration by the Trade Mark Registry, the Registrar will publish the application on the Intellectual Property Journal so as to enable the third parties to oppose the application.

Opposition by the Third Party
Anyone can oppose the trademark application of the applicant. The opponent must within 3 months from the date of the publication file a Notice of Opposition with the Trade Mark Registry. The applicant of the trademark application may either withdraw his application or file a Counter-statement in response to the Notice of Opposition.
Both the applicant and the opponent shall within the prescribed time be given an opportunity to file evidence in support of the application and opposition respectively. After the Trade Mark Registry shall have received all the evidence from the parties, a hearing will be arranged before a Hearing Officer who will then make a decision. If the applicant at this stage withdraws his application or the decision is made against him, he may be ordered to pay costs to the successful party.

Registration and Issuance of Certificate
Once the trademark application is accepted for registration, the Registrar of the Trade Mark Registry will enter the details of the application into the Trade Marks Register and a Trade Mark Certificate will be issued to the applicant.
Notice of the registration will be published in the HK Intellectual Property Journal and the date of registration will retrospectively be dated back to the filing date of the application. The rights of the owner of the registered trade mark will count and take effect from filing date of the applicant.

Courteous Reminder
The applicant may consider the following strategies or means whereby protection of his registered trade mark may be strengthened.
1. The applicant should consider to apply his registered trade mark for registration in countries or districts of the applicant’s production base, sales markets and business
    promotion.
2.The applicant should consider to sever the major and distinctive component (say, sever the Chinese/English wordings from the Chinese & English words mark; sever the
    words/device mark from the words & device mark) of his registered trademark and to apply the severed component for registration separately. This can enhance the
    enforceability of the applicant’s trademark and enlarge the protection thereof.
3.The applicant may consider to retain us to conduct a watching service so as to monitor if there is any infringement of his registered trade mark by any person who may apply in 
    Hong Kong or overseas for registration of a mark identical with or confusingly similar to the applicant’s registered trade mark.