Checking For Duplications In Hong Kong Trademark Application

Source: CtR Intellectual Property Co.

While every person and organization has the right to register a trademark in Hong Kong, it’s important to conduct an initial search for possible duplication of trademarks before the Hong Kong trademark application. In some cases, another person or organization may have already applied for a registration or have already been granted a registration for the same or similar trademark. The trademark planned for registration may then be met with an objection from the Trade Marks Registry.

Take Advantage of the Services

Fortunately, the Hong Kong Trade Marks Registry offers applicants its Search and Preliminary Advice services wherein information about trademarks can be obtained from its records.  The Registry can perform a search of its database and provide a concerned application with a list of trademarks that are either similar or the same as the proposed trademark. The proposed trademark itself will be compared to the same or similar class of products and/or services; the thorough search is necessary to ensure there’s no duplication of trademarks.

The Registry also provides initial advice about the distinctiveness of a proposed trademark. Keep in mind that the proposed trademark should be, in the Registry’s words, sufficiently distinctive such that it can be easily distinguished from same or similar products and services offered by other traders.

Emphasis must be made that these Registry services aren’t free. The applicant must complete and submit Form T1 and pay the appropriate fee – HK$400 for every service and HK$200 for every added class of products or services, if any, as of this writing – to the “Trade Marks Registry, Intellectual Property Department, 24/F, Wu Chung House, Wanchai, 213 Queen’s Road East, Hong Kong”.

Factors to be Considered in Distinctiveness

Even before filing the trademark application and availing of the above mentioned Trade Marks Registry services, applicants are well-advised to check their proposed trademarks for initial determination of their “sufficient distinctiveness”. The most important considerations include:

• Is the trademark distinctive?

The trademark should stand out from the rest of the crowd, whether it’s a word, a picture or a logo. If it’s a word, for example, it can be a made-up word that may or may not be associated with the business.

• Is it a description of the products or services of your business?

The trademark shouldn’t be a description of your products and/or services or something that shows the purpose, quality and/or quantity, and/or the value of the products and/or services. The Registry will most likely reject your Hong Kong trademark application if it does any of these things. Examples include “Hong Kong Fashion” or “AAA Quality Watches”.

• Is it a commonly used or well-known term used in industry, niche, or line or business?

The trademark shouldn’t be used by nearly every Tom, Dick and Harry engaged in the same or similar line of business – if it is, then the application will be rejected by the Registry. Examples include “V8” for automobiles, “Cow Leather” for bags, and “Swiss movements” for watches.

Obviously, applying for registration of the same or similar trademarks already owned by other persons and organizations isn’t allowed under the trademarks laws of Hong Kong.

Source: CtR Intellectual Property Co.