Do you want to apply for a trademark registration in Hong Kong, but find all the information too overwhelming? Do you want to know things that you ought to know ahead of filing an application? Through this article, we will provide you with an easy and straightforward guide, letting you understand the process and points to note on trademark application and registration in Hong Kong, without difficult technical jargons.
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Documents required for trademark application and registration in Hong Kong
Hong Kong Trademark application and registration: The Process
Smooth trademark application vs Unsuccessful trademark application
Documents required for trademark application and registration in Hong Kong
As long as you have the following information and materials with you, you will be able to file a trademark application in Hong Kong:
1) Applicant's name and address
Regarding the applicant's entity, you will have to decide whether you would like to apply for and own the trademark in your own personal capacity or in the name of a company. Both are acceptable, and the rights are the same. Please note trademark right is a kind of asset which carries nominal value, so you should think carefully about who should be the owner.
Regarding the applicant's address, both local and overseas addresses are acceptable. But if you file the application with an overseas address, you must at the same time provide a local Hong Kong address for the purpose of receiving official letters and notices from the Hong Kong Trade Marks Registry. Mailbox address is not acceptable. Through entrusting a trademark agent for the case, you can use their address instead.
2) Trademark Image
Our client often ask: "Can I apply for trademark registration with words only?" "Can pure graphic logo without words be registered?" .
The truth is, when submitting a trademark application, no matter whether your trademark consists only of words, only of logo, or a combination of both, they would all be acceptable as a trademark image is to be submitted to the Hong Kong Trade Marks Registry. For example, if we file a trademark application with the trademark being "Actualis" (which consists only of words), we actually submit for filing is a JPG/PNG file consists only of the words "Actualis". So there is no need to worry about that.
3) Trademark Class(es) and products/services to be registered
The scope of protection of a trademark registration is not unlimited. You must designate specific trademark classes and the products and services items (which define the protection scope of the trademark registration) according to the products and services to be provided by the trademark when submitting the application.
There are in total 1 - 45 trademark classes, based on the nature of the products and services. For example, if your trademark is a clothing brand, you will have to designate Class 25 (a class for clothing products) in your trademark application, and specify the products (such as shirts, trousers etc.). Another point to note is that the cost of the trademark is determined by the number of classes in the application. The more the classes, the higher the fees. To know more about trademark classes, you can check out this article written by us: What are trademark classes? (In Chinese only)
Hong Kong Trademark application and registration: The Process
So you have all the abovementioned information and materials with you? You are now all set to file an application!
Step 0: Trademark search
Trademark search is not a compulsory step for applying for trademark registration, but we cannot stress its importance enough!
Conducting a trademark search means checking the Hong Kong Trade Marks Registry's database to search for any prior/ existing trademarks that might be considered as similar to your trademark. If such trademarks exist, your application would have a higher risk of refusal.
In order to greatly increase your chance of success for your trademark application, we strongly recommend carrying out a search before filing your application. Please note that in addition to locating identical or similar trademarks, you will also need to search in identical or similar trademark classes that you intend to apply for. If no identical or similar trademark is found in the search, the chance of approval for your application should be higher, even though no one could guarantee 100%. Of course, it also depends on whether the search is thoroughly done.
As conducting a trademark search require professionalism and prior experience, it is recommended to entrust a trademark agent to carry out one for you. Actualis, for example, is well-capable to provide a complimentary search service within 2 working days.
Step 1: Submission of Application
If the search result shows the approval chance is positive, you can then consider submitting the application. Such application will be filed to the Hong Kong Trademark Registry.
Step 2: Examination by the Trade Mark Registry (two to four months)
After receiving the application, the Hong Kong Trade Mark Registry will require around two to four months to process and examine the application:
Formal examination: check whether the application form is filled in correctly
Substantive examination: check whether the trademark itself contains any problem making it unfit for registration; or whether it is similar to any prior trademark, and determine whether to approval the application or not
If the application fails to pass the two-step examination, depending on the situation, official letters will be sent to the applicant (or its trademark agent), requesting the applicant to correct, change or delete information in the application. If similar trademark(s) is located, a refusal letter would be issued. If the applicant does not reply to the official letters, the application will be finally rejected.
(For the examples of what trademarks cannot be registered, please refer to: descriptive trademarks / deceptive or dishonest trademarks / identical or similar to prior trademarks) (in Chinese only)
Step 3: Publication (three months fixed period)
Assuming the application is approved and goes smoothly, after examinations, it will enter a three-month publication period, and officially published in the Hong Kong Intellectual Property Gazette.
The purpose of the publication period is to allow anyone who wants to oppose the application to submit an opposition application within the three-month publication period. If someone thinks that the trademark should not be registered, they will have a chance to submit an opposition. The gazette is generally published on Fridays.
During the publication period, we always say no news is good news, as it simply means your application is not attracting any opposition!
Step 4: Issuance of Trademark Registration Certificate (about one month after publication period ends)
If the trademark application goes through the publication period smoothly and no opposition is filed against the application, the trademark will then be officially registered with the Hong Kong Trade Marks Registry. The trademark registration certificate will be issued about one month after the end of the publication period, with the certificate to be mailed to the local correspondence address provided by the applicant when submitting the application (or if the case is handled by an agent, the certificate will be mailed to the agent).
The registration will be valid for 10 years, counted from the date of application. It can be renewed every 10 years.
Step 5: Continuous Protection after Registration: Trademark Watch
Obtaining the registration does not mean all the work to guarantee protection of your trademark is done. There is still chance that somebody will apply for a similar trademark of yours and have it successfully registered, through approval of the Hong Kong Trade Marks Registry.
Trademark Watch is the solution to this issue. Through continuous monitoring and update of your trademark registration status and upcoming applications (which might be considered to be similar to your trademark), you will be able to prevent somebody to register a similar trademark and stop them during the opposition period, strengthening your market share and repelling competitors.
Actualis provides Trademark Watch service by making use of cutting-edge AI technology combined with our experience, all come together with a incredibly affordable price.For more information on trademark watch, you can know more in our designated page: What is trademark watch? (In Chinese only)
Smooth trademark application vs unsuccessful trademark application
The above steps list out a smooth procedure and timeline of a trademark application in Hong Kong; but if unfortunately, you encounter any of the following situations during the application process, more time might be needed to complete the registration process. Or worse, if the application is filed poorly due to a lack of experience, your application may be rejected based on the following grounds:
The Hong Kong Trade Mark Registry considers the form to be filled in incorrectly (for example, mistakes in product or service classification, mistakes in description of the product or service, applying for more than one (yet substantially different) trademark images at a time, etc.)
The Hong Kong Trade Mark Registry considers the trademark not qualified for approval (for example, it does not meet the requirements for registration or is found to be similar to some prior trademarks)
The application is opposed during publication period
To prevent the above situations from happening, we strongly recommend entrusting a professional trademark agent to handle your case for you, as trademark applications involve complex and professional knowledge and expertise. Most of the risks can indeed be avoided if preparation work is done thoroughly before the filing of an application.
Actualis' Professional Trademark Service and Fees
Actualis is a professional IP agent with extensive knowledge, capable of assisting you to complete trademark applications without hassle. We have abundant experience in handling cases for a wide spectrum of companies with different natures, and excels in providing tailor-made filing strategies for your company.
With our latest rate for Hong Kong trademark application, you can protect your brand and logo with an affordable fee:
- Filing with one trademark class: HK$2,800 (inclusive of the official fee)
- Filing with each additional class: HK$1,500 (inclusive of the official fee)
If you wish to know more about trademark application, please feel free to contact us for free consultation: (email: ip@actualisip.com) (Telephone/ Whatsapp: +852 9545 3177).
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