Hong Kong: New Trade Marks Ordinance Takes Effect

The new Trade Mark Ordinance and Rules finally went into effect on April 4, 2003. It was gazetted June 16, 2000, but was put off pending promulgation of the Trade Mark Rules and completion of an online search system. The new Ordinance fits into the Intellectual Property Department’s scheme to improve Hong Kong’s investment environment and enhance the protection of IPRs to assist in long-term economic growth. Some of the highlights of the new Ordinance are discussed below.

The Ordinance streamlines the registration process and increases protection for trade marks. Parts A and B have been deleted and there is now a single registration system. Application fees are lower, and there is no longer a separate fee for advertising or registration. Registration for one mark in one class has been reduced to HK$1,300 (US$167). Multi-class applications are now available, and the fee for each additional class is HK$650 (US$83).

The definition of a trade mark is no longer confined to a sign which is "visually perceptible." A trade mark is defined under the new Ordinance as a sign capable of distinguishing the goods or services of one owner from the goods or services of another, and which is capable of being represented graphically. The new Ordinance specifically includes sounds and smells.

There are two grounds for refusal only, absolute and relative. Absolute grounds include marks which are generic, immoral, deceptive, or applications made in bad faith. Bad faith has never been judicially considered in Hong Kong, but in the UK it has been interpreted as referring to the lack of a bona fide intention to trade in all the goods and services in respect of which the mark is applied for. Relative grounds are broadly described as occurring when two marks are identical or similar, for goods identical or similar, where a likelihood of confusion exists among the relevant public. Also, where a mark is identical or similar to an earlier mark for goods which are dissimilar, if the earlier mark is a well-known trade mark under the Paris Convention and the use would take unfair disadvantage of, or be detrimental to, its reputation. A similar standard is used for cases of trade mark infringement. The Registry will not cite a co-pending mark (a mark filed for on the same day) as a relative ground for refusal, since it does not fall within the definition of an "earlier mark" as defined under the Ordinance.

A surprise is how the Registry will be handling disclaimers, which are now voluntary. The rationale for this new policy apparently is pressure from the legal community as well as the trend in countries like the UK. Because there was usually a great deal of time spent arguing over disclaimers, making them voluntary would facilitate faster prosecution of trade mark applications.

For the first time, the new Trade Marks Ordinance includes a provision for famous marks. Trade marks will be considered well-known in Hong Kong if they qualify as well-known trade marks under the Paris Convention. It is not necessary for the owner of a mark to carry on any business in Hong Kong. The factors for determining what is "well-known" may include the degree of recognition of the mark, duration of use, geographic area of use, the record of successful enforcement efforts and the value of the trade mark.

If a mark is entitled to protection under the Paris Convention as a well-known mark, the owner is entitled to an injunction restraining the use in Hong Kong of a trade mark which is identical or similar to his mark in relation to identical or similar goods or services, where such use is likely to cause confusion.

Under the new Ordinance, online searching is available through simple and advanced searching of pending and registered marks. The fields for a simple search and an identical search are identical; however, an advanced search can be made using a wild card symbol. Searchable fields include date of filing, registration, expiry and publication. Both simple and complex Chinese characters can be input.

There are four deficiencies in an application which will result in the loss of the filing date. The four following items must be submitted to the Registry: a request for registration of the trade mark on the specified form; the name and address of the applicant (as in the US, it must be the correct entity); a statement of the goods or services in relation to which registration is sought; and a representation of the trade mark on the appropriate form. The Registry still utilizes a great deal of specialized forms in the prosecution of marks. It is important to note that the description of goods or services must be clear, it is not acceptable to say "All goods in Class 9" or use terms of indeterminate class ("luxury goods"; "prizes"); it is acceptable to use class headings.

Upon payment of the official fee HK$900 (US$115) an application may be converted and examined under the new Ordinance. The filing date will be April 4, 2003, the commencement date of the new Ordinance.