An entrepôt during its colonial era, Hong Kong has retained its strategic position as a trading hub in Asia and a gateway to China. With constant reinforcement of the “one-country, two-systems” principle, which is set to continue until 2047, the uncertainties that surrounded the 1997 handover have largely been removed, and while its long-term future may be uncertain, Hong Kong continues to have one of the most stable, effective, and certain legal systems in the world. With over 250 million tons of goods passing through it each year, and its proximity to China’s Pearl River Delta, one of the world’s worst intellectual property (IP) piracy and counterfeiting hotspots, Hong Kong is strategically important for all IP owners.
Under the “one-country, two-systems” principle, Hong Kong’s constitution, the “Basic Law,” specifically provides that Hong Kong should, on its own, develop appropriate policies and afford legal protection for IP rights. Therefore, despite being part of China, Hong Kong and China have separate legal systems. IP rights registered in Hong Kong will not be automatically protected in mainland China, and vice versa.
What Is Intellectual Property?
IP rights are proprietary rights granted to protect original products of creation. They are intended to encourage and reward creativity and fair competition in the marketplace. IP rights can be relied upon to prevent others from using one’s trademark, patented invention, copyright work, or design without consent. IP is territorial in nature and exists for set periods of time.
Hong Kong has had an English legal system for over 150 years, which was retained on the 1997 handover to China. The courts still rely on a great deal of English case law, and proceedings (whether administrative or judicial) can be conducted in either English or Chinese. Although its English legal system makes Hong Kong an ideal stepping stone for doing business in China, IP owners will need to pay extra attention to a number of issues that are unique to this city that stands between the East and the West.
Trademarks
What Is a Trademark?
A trademark can be a word, phrase, symbol, shape, color, sound, smell, or a combination of these used to identify a product or service. It functions as a badge of origin, helping consumers distinguish the products and services of one trader from those of another. In other words, a trademark helps consumers answer the questions “Who makes this product?” and “Who provides this service?” Word marks in Hong Kong can be in any language or dialect, and can be in Latin or Chinese characters. They can be transliterated between English and Chinese based on how they sound, or based on their meaning or some description of their characteristics or aspiration, or a combination of the two.
How Are Trademarks Protected in Hong Kong?
Trademarks that are used, or intended to be used, in Hong Kong can be registered with the Hong Kong Intellectual Property Department (IPD). The IPD does not differentiate between local and foreign proprietors.
Trademarks are registered in relation to particular goods or services. The Nice Classification, which is used internationally, sets out 45 classes of goods and services. In the majority of cases, an application will only be considered if the applicant is using or intending to use the mark on, or in relation to, the goods or services for which registration is sought. The system is a “first to use” system. Rights to a mark are determined on the basis of first use rather than registration. While an unregistered mark will be capable of protection, enforcement and commercialization will be easier and more satisfactory if the mark is registered.
Is My Trademark Registrable?
A trademark is not registrable if it is:
Merely descriptive (e.g., “Lavender Soap” for lavender-scented soap) or not sufficiently distinctive – unless you can show that the mark has acquired distinctiveness through extensive use;
Contrary to public policy or likely to deceive or confuse the public; or
Applied for in bad faith.
The trademarks examiner will also search the IPD’s register for any conflicting prior applications or registrations. The examiner will object to an application if the subject mark is too similar to a mark that is already on the register.
How Long Does Registration Take?
If the application is straightforward, the IPD is usually able to register the mark within six months of the date of filing. If the examiner raises objections, or third parties formally oppose the application, then the registration process will generally take longer.
An Examination Report is usually issued two months after the application is filed. The report informs the applicant whether the trademark applied for satisfies the requirements for registration. If no objections are raised by the examiner, the mark will be published in the Hong Kong Intellectual Property Journal. Third parties are then given three months from the date of the publication to lodge objections. If none is raised, the application will be entered onto the register, and the registration will take effect from the date the application was filed.
If a third party files an opposition, and the applicant either subsequently withdraws its application or is not successful at an inter-party hearing, the applicant may
