The following overview includes information on
Trademark applications for several other jurisdictions.
Once a trademark application is filed in
Set out below are costs and time filing estimates
with regard to the above. You
should note that the following estimates are based on straightforward cases, extra costs will be incurred for cases which
encounter objections from the filing offices. The amount of the extra costs will
depend on the complexity of the file as it progresses.
The filing fees per mark are approximately
HK$12,000.00 to HK$18,000.00 including
about HK$2,000.00 government
fees. The time required to complete
the registration is approximately 12 to 18 months.
For the purposes of Mark registration,
services and goods are categorized under their own registrations (goods and/or
services) and then are divided into different classes depending on the nature
of the services/goods involved.
This means that in any particular case, separate applications are
required in each class selected.
The applications should be filed in the
name of the owner of the Mark; if the owner will not actually be using the
mark, these applications must be accompanied by applications to record the
agreement with each of the companies that will be using the mark, as
"registered users"; i.e. it will be necessary to set in place a
simple licensing structure for use of the mark by the group, if this is
contemplated.
To apply for registration of a trademark
in
(i)
Name,
address and description of the Applicant;
(ii)
The
mark to be applied for, and if the same is in colour,
please supply coloured specimens for filing;
(iii)
The
goods to be applied for, (our classification is in accordance with the
International Classification) the precise goods of interest must be identified
should the Registrar queries the same;
(iv)
Promotional
and advertising materials, labels if available;
(v)
If
prior registration has occurred, a certified copy of the convention
application, (together with a certified English translations thereof if in a
foreign language) if convention priority is to be claimed;
(vi)
If
previously registered overseas, a copy of the relevant page of the applicable
journal, (the United Kingdom Trade Mark Journal as an example) featuring the
mark as advertised for opposition purposes (where appropriate).
Although prior to filing we do not at law
require to know the dates of first use in the country of origin and in Hong
Kong, or the names of the countries where the mark is registered, we would
however, appreciate having this information so that we are apprised of this and
so that we know whether or not we can overcome any objections by use and prior
rights in the event the Registrar cites a "former" application.
When all these documents and materials
have been submitted to the Registrar, the application will be examined, usually
within twelve (12) months after filing.
If it is prima facie acceptable for registration and is not in conflict
with any prior registered mark or a co-pending application, a notice for its
advertisement in the Hong Kong Government Gazette for opposition will be
issued. We will then arrange with
the Government Printer for the necessary advertisement. (No advertisement in Government
Gazette is required for application submitted after
Provided no opposition is filed, (or no
extension within which to do so is applied for), within the two (2) months
opposition period by any interested party, the application will proceed to
registration with the issuance of the Certificate of Registration within two to
three (2-3) months thereafter.
Usually the time involved for obtaining
registration of a straightforward application is approximately twelve to
eighteen (12 to 18) months. Where
however the mark is not prima facie registrable, the
application will easily exceed two (2) years.
Registration when obtained is for a period
of ten (10) years from the date of filing of the application.
Renewal of any trademark
registrations are
available for periods of ten (10) years.
Registrations which have been removed from the Trade Mark Register for
non-payment of fees may be restored within one (1) year from the expiration
date of the registration upon payment of an additional restoration fee.
Trademark rights are territorial and
therefore registration of your mark in
You may also wish to note that in the PRC,
it is possible to register your rights in a name under the provisions for
"Enterprise Name Registration".
Registration obtained under these provisions provide
an owner with monopoly rights in the name and consequently the right to
sue for infringement in the event of unauthorised use
by a third party. Costs in applying
for enterprise name registration in the PRC are approximately HK$15,000.00,
inclusive of official fees.
Perhaps not as significant to you as the
Chinese market, but certainly worth considering, is registration in
We can co-ordinate registration throughout
the world.
We would require a payment of US$500.00 and provision of the “trade
mark” details to commence the necessary local searches; any instructions which
you may have regarding assessment of the mark in the PRC,
The patent
system in
The ‘old’ patent
law was repealed and replaced by the new Patents Ordinance (No, 52 of 1997) on
Although there
is no original application for the grant of a standard patent in Hong Kong,
under the new legislation the patent (both standard and short-term) when
granted will be capable of being tested for validity, enforced, amended and
rectified in Hong Kong independent of action taken in any other
jurisdiction in respect of the patent on which the grant in Hong Kong was
based.
For the term of
patent being granted, the standard patent term is 20 years from the date of
filing in the designated patent office, subject to renewal after the third year
from grant and therefore annually.
In contrast, the short-term patent term is 8 years subject to renewal at
the end of the fourth year.
We must also highlight the following:-
a)
The
time for filing an application for a patent is substantially reduced.
Under the old law a patent owner had five years after the grant of the
patent in the United Kingdom Patent Office in which to file in
b)
The
status of the patent when granted in
For your
information, costs in obtaining standard patent in
We trust the information set out above is
of assistance and look forward to your further instructions on registration of
trademarks and service marks in due course. Kindly note that the
above quotes are estimates to serve as guidelines only.
We look forward to your instructions on this matter
at an early date.