Trade marks are an important business asset. They are the signs and brand that identifies your business, products and services, and to distinguish them from a competitor’s. The recognition of your trade mark by your customers enables the building of your business reputation by virtue of the distinctive identity of your products and services. Trade marks therefore represent a very large part of the goodwill or assets of your business. For some businesses this goodwill far exceeds any other assets, especially in the services or digital economy industries. Think of the value of the trade marks for some of the multinational brands such as Google, Amazon or Facebook.
You should protect your trade mark by registering it. This helps you stop others from using your trade mark.
Registering a trade mark
Registering a trade mark is not mandatory to do business. However, registered trade marks gives ownership to the registrant, while unregistered trade marks do not. As such, trade marks become an intangible asset to your business which can develop a, sometimes substantial, goodwill and value to your company.
As the owner of a registered trade mark, you will have the exclusive right to use the trade mark in relation to the goods and services for which the mark is registered. If others use your registered trade mark in Hong Kong or a name which is identical or similar to your trade mark in relation to the same or similar goods or services without your consent, you may take infringement proceedings against them.
Unregistered marks are only protected by the common law action of passing off. You must prove goodwill or reputation in the unregistered mark and must prove that the other person misrepresented goods or services to be the goods or services under the unregistered mark and that this caused you damage. Passing off is thus a more difficult action to bring than an action for infringement of a registered trade mark.
Choosing a trade mark
A trade mark is a sign that distinguishes the goods and services of one trader from those of others. Typically a trade mark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of these. A sign must be capable of being represented graphically in order for it to be registered as a trade mark.
A trade mark must be distinctive, and not merely descriptive of the goods and services. A trade mark will not be registered if the
trade mark is confusingly similar to a registered trade mark.
Thus, if you intend to implement a branding strategy where your trade mark will also be used as a business name, company name or domain name, a prior search and evaluation of the trademark should be done before the incorporation.
A trade mark can only be registered if it is already in use or if there is an intention to use the trade mark. If a registered trade mark is not used for a continuous period of at least 3 years in Hong Kong by the owner or with his consent, it may be revoked on the ground of non-use.
Selecting trade mark classes
A trade mark application must indicate the classes of goods and services that the trade mark will be identified with. There are 45 classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks established by the Nice Agreement, known as the Nice Classification.
Trade mark registration steps
An application for registration must be made in the prescribed form with representations of the trade mark to the Trade Marks Registry at the Intellectual Property Department. After filing, the application will be examined if it complies with the Trade Marks Ordinance and the Trade Marks Rules, i.e. whether the trade mark is distinctive, not descriptive and not identical or confusingly similar to an already registered trade mark in relation to identical or similar goods or services for which the application for registration is made.
Once your trade mark has been accepted for registration, it will be published in the Hong Kong Intellectual Property Journal. Third parties may oppose your trade mark being registered. If the registration of your trade mark is opposed, the matter will be determined by a hearing officer.
If there is no opposition, or the opposition is withdrawn or decided in favour of the trade mark applicant, the trade mark is then registered and a certificate of registration for the trade mark will be issued.
Duration of trade marks
In Hong Kong, a registered trade mark is initially valid for 10 years. The trade mark can be renewed for further periods of 10 years each by payment of renewal fees. The registration of a trade mark can therefore last indefinitely if it continues to be renewed.
Rights of trade mark owners
A registered trade mark is a personal property. The owner of a registered trade mark has exclusive rights in the trade mark. Your rights as the owner of a registered trade mark include but are not limited to the following:
- the right to grant a licence to another person to use your trade mark, in return for royalties and other payments
- the right to sell your trade mark
- the right to make a gift of your trade mark in your will.
- the right to obtain a court order/injunction to stop a competitor from infringing your trade mark
- the right to obtain monetary compensation from an infringer that has unlawfully used your trade mark
- the right to obtain a court order for delivery up or disposal of infringing articles or removal of an infringing mark
Generally, a person infringes a registered trade mark if in the course of trade or business the person uses a sign which is identical or confusingly similar to the registered trade mark in relation to identical or similar goods or services. An infringement of a registered trade mark is actionable by the owner of the trade mark.
Trade mark symbols
You can use the ® symbol to indicate that your trade mark is registered. If your trade mark is unregistered, you cannot use the ® symbol, but you may use the ™ symbol. Using the ® symbol with an unregistered trade mark is a criminal offence.