The Hong Kong trademark registration procedure looks simple, but is indeed full of hidden traps. Some trademark application terms that look apparently easy to understand (such as a series of trademarks, trademark searches etc.) might not necessarily mean in the ways what everyone think. In this article, we will go through 3 common Hong Kong trademark application mistakes, so that your application could go as smooth as possible.
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Why trademark registration is necessary for my business?
Getting your trademark registration could bring numerous edges for your business, for example:
Obtain the exclusive right to use your brand and logo, and to stop other people from using it without your consent
Establish the ownership of the trademark, and avoid infringing other people’s trademark right
Avoid being used because of trademark infringement
Use the registered trademark to explore the business of licensing, develop your brand and gain extra income
Feel free to refer to another article by us, with an in-depth look on the benefits of getting your trademark registered：一文看商標註冊的好處和必要。
Procedure of Hong Kong Trademark Application
To file a Hong Kong trademark application, you will have to get the following information/ materials ready:
The trademark image (the logo) you wish to get registered
Applicant's name and address
Trademark Class and Description of Items (in short, the products/ service the trademark will provide)
Regarding the details on the procedures of a Hong Kong trademark registration, you can refer to this article：【香港商標註冊攻略】一文了解香港商標申請流程及須知。
3 Common Mistakes of Filing a Hong Kong Application
The required information for filing a Hong Kong trademark application are relatively simple, yet it does not mean that it requires no professional knowledge and experience. When applying, alongside with filling out the application form right, a more important concern would be how to obtain the most comprehensive protection through the registration.
If you make any mistake when filing the application, it might be refused by the Trade Marks Registry, or even get your business into legal trouble. That would cost you extra time and money, not to mention the trademark might not be registered successfully at the end.
To avoid any obstacle during your application, we have gathered 3 common mistakes as follows as tips for you:
Mistake 1: Applying for Registration with an Unregistrable Trademark
One of the most common mistakes of trademark applicants, is trying to register a trademark that is in nature unregistrable.
Indeed, some trademark names/ logo could not qualify as a registrable trademark. And the most common kind of unregistrable trademark, is descriptive trademarks.
A trademark must be distinctive enough, to allow consumers to distinguish it from the others and to recognize it as an origin of a provider of certain goods/ services. Descriptive trademarks are usually those using "ordinary" names and phrases:
The trademark is merely describing the name or nature of the goods/services provided （for example: "coffee bean cafe", "speedy courier", "tailored made boutique" etc.）
The trademark is a jargon of the profession (for example: "cardio clinic" etc.)
These kind of descriptive trademarks are difficult to be protected, as they are merely describing the nature of the goods/ services provided, so that anyone providing such businesses should be allowed to use those terms. Filing this kind of trademark for registration would be highly likely to be refused by the Registry.
To avoid this mistake, you should pick a distinctive name/ logo for registration, and avoid using any term that is common in your business. A distinctive trademark is something unrelated to the business terms. For example, "Apple" as a trademark for a tech company, "Uniqlo" for a clothing company etc. These names are not directly related to their businesses, and are indeed good trademark names to get registered.
To understand more, you can refer to this article：什麼商標不能註冊：描述性商標。
Mistake 2: Understanding the Meaning of “A Series of Marks” Wrong
It is a well-known thing that when filing for a Hong Kong trademark registration, we can include up to 4 versions of trademark in a single application. We call this kind of application a "series of marks" application.
But not every one knows, that does not mean you could put any trademark into the same application.
In a series of marks application, only the following different versions of a trademark could be included in the same application:
Trademarks with identical words and design, but with different colours in different parts
Trademarks with identical words and design, but different parts are in different locations
Trademarks of traditional and simplified Chinese
Trademarks of capitalized / lowercase letters
In general, the differences of the 4 trademarks are not substantial
In fact, professional knowledge and experience is required to decide what trademarks could be put in the same application, on a case-by-case basis. You may want to seek advice from trademark professionals if you are unsure about it.
To know more about a series of marks applications, you can take a look of this article：一個香港商標申請可以包幾款圖樣？一系列商標跟你想的不一樣。
Mistake 3: Not Carrying Out Trademark Searches before Filing
Another common mistake of a trademark applicant, is not doing trademark search before filing an application.
The purpose of a trademark search, is to try to locate the existence of any prior trademark, which might be considered to be similar to your trademark.
If you just go ahead and file your application without doing a trademark search, you might encounter the following situations:
Your application could be refused by the Registry, as your trademark might be regarded to be similar to some of the prior existing trademarks
Your application might be opposed by a third party during the publication period. Even though your trademark application is approved by the Registry, an owner of a similar trademark might raise an opposition against your trademark application
If the above happens, your application would be refused or delayed. You might be forced to negotiate and file responses to the Registry/ a third party to convince that your trademark application should be approved. This would require extra cost and money, and certainly no one hopes for these.
What is the Right Way to conduct a Trademark Search?
Most of the applicants might think a trademark search means searching for similar trademark names/ logo through using online search engine (e.g. Google, Yahoo, Bing etc.). They might think if they are unable to locate anything similar, their applications would be safe.
That is a wrong assumption. Merely by searching online does not give them a full picture of the chances of approval of their applications.
To know the tips on how to conduct a thorough and effective trademark search, you can refer to this article to know more: 【商標檢索很有用！】不是普通網路搜尋?商標申請前必做的一件事！
Actualis’ Professional Trademark Service
Filing for registration for your trademark, is the most important step of protecting your brand. Yet there are numerous things to pay attention to during the application, and they make the application process tricky and unpredictable.
From free consultation, conducting trademark searches to helping you to registering your trademark, Actualis' one-stop professional trademark service assists you to protect your trademark without hassle. Through our professional knowledge and experience, we help you to navigate through all the procedures smoothly.
We are now offering a limited time offer for Hong Kong Trademark Application, with the fees as follows:
Trademark Search: Complimentary
Applying for trademark application for one class: HK$2,500 (Inclusive of Government Fees)
Applying for each extra class：HK$1,500 (Inclusive of Government Fees)
Feel free to contact us should you have any question on trademark issues: +852 9545 3177（Telephone／Whatsapp）；ip@actualisip.com（Email）.