Trademark & Design Registration
–
The following overview is on Trademark and
Design applications for several jurisdictions.
Like patents and designs, trademark rights
are territorial in nature. A
We have set out below costs and time
filing estimates. You should note that the following estimates are based on
straightforward cases, extra costs will be incurred for cases encountering
objections form the filing offices.
The amount of extra costs will depend on the complexity of the file as
it progresses.
If there is a
need to register a trademark in more than 5 or 6 jurisdictions then you may
consider making an application pursuant to the Madrid Protocol. For a modest fee, the process allows you
to submit one application. Based on
your local registration, you may select up to 100+ countries. Although the registration process is
long (2 to 3 years), it’s considerably cheaper than lodging a series of
independent applications worldwide.
The
In determining what countries are relevant
to your market needs we recommend that you consider issues of piracy and
parallel importing. For instance, in the textile industry,
piracy is still a global problem.
It is certainly a worthwhile decision to look at registrations in
countries such as
Trademark registration allows Customs to
expedite investigations into piracy claims. If piracy is found, the goods will be
immediately seized and destroyed and the perpetrators penalized for their
activities.
In relation to parallel importing, free
trade principles generally exhaust the assertion of trademark rights against
importers/distributors of legitimate trademark goods purchased from another
licensed territory. In other words,
trademark law generally cannot control the legitimate importation of trademark
articles the moment they are sold on the open market. If the licensee of a
territory has a trademark and the imported ‘trademark’ articles enter the
territory, legal rights only extend to whether the imported articles are in
some way defective or old. In such
a case, the licensee can prevent distributors and importers from under cutting
the licensee by making representations to the Customs Department that the
defective or old articles are injurious to the character and repute of the
registered trademark. If successful,
Customs will seize or destroy the articles. Hence, multiple trademark registrations
in the jurisdictions that are important to your enterprise can be beneficial if
your company has significant pricing differentials between those jurisdictions.
Trademarks/Service Marks
Goods and services can be protected by
trademark registration. Modern companies are moving towards defensive
strategies and are pursuing registrations in other classes in their efforts to
tighten their grip on key markets.
Multiple class registrations usually depend on the nature and extent of
the business and the level of protection/exploitation strategy to be adopted.
The minimum
costs for filing and obtaining registration for one trademark in one class on
the assumption of a straightforward and problem-free application are as
follows:-
|
|
|
Official Fees |
Our costs |
|
|
|
(HK$) |
(HK$) |
|
|
|
|
|
|
A. |
trade mark search for one mark in one
class |
--------- |
2,000.00 |
|
|
+ each additional class for the same
mark |
--------- |
1,000.00 |
|
|
|
|
|
|
B. |
preparing and Filing an Application of trademark in one class |
1,300.00 |
8,000.00 |
|
|
+ each additional class for the same
mark |
650.00 |
2,000.00 |
|
|
|
|
|
|
C. |
advertisement and Registration |
-------- |
2,000.00 |
|
|
+ each additional class for the same
mark |
-------- |
1,000.00 |
|
|
|
|
|
|
D. |
anticipated disbursements (photocopying,
traveling expenses etc) |
--------- |
±1,500.00 |
Exceptional attendances rendered outside
the items (including correspondence) will be charged additionally on a time
basis, which we estimate will be between HK$2,000 to
HK$4,000, so long as we encounter no objections or conflicting marks,
thus enabling smooth registration of your trademark(s). If difficulties are encountered fees
would generally increase proportionately to the amount of additional time
consumed preparing and submitting arguments to the Trademark Registry.
Timing:
It generally takes 9-12 months to
prosecute a trademark application based on a straight-forward and smooth
registration process.
Process
The mark applied for will be searched and
examined by the Registry’s officer to see whether the mark complies with the
requirements of the Ordinance and whether the mark applied for is in conflict
with other marks that have already been registered or applied for by other
owners or applicants for the same types of goods or services.
If the application is accepted, the
Registry will issue “Leave to Advertise” regarding the application, containing
the conditions, if any. Upon
receipt of the Leave to Advertise issued by the
Registry, we shall have to arrange to advertise your application in the Hong
Kong Government Gazette for the purpose of opposition to registration. (no
advertisement in Government Gazette is required for applications submitted
after 4th April 2003, the trade mark will instead be posted on the
Intellectual Property Department website) and if upon the expiry of two
months from the date of the advertisement, no opposition has been filed by any
party, the registration certificate will be issued within 3 months.
For the purpose of Product 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 Products; if the owner is not actually 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.
Registration when obtained is for a period
of ten (10) years from the date of filing the application. Renewal of any Trademark registrations
is available for periods of ten (10) years. Registrations, which have been removed
form the Trademarks Register for non – payment of fees may be restored within
one (1) year form the expiration date of the registration upon payment of an
additional restoration fee.
Documents Required & Check list
(i)
Name,
address and description of the Applicant;
(ii)
The mark to be applied for, and if the same is in colour,
please provide coloured specimens for filing
purpose.
(iii)
The
goods to be applied for (our classification is in accordance with the
International Classification) the precise goods of interest must be identified
in the event that 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;
If previously registered overseas a copy
of the relevant page of the applicable journal, (the United Kingdom Trademark
Journal as an example) featuring the mark as advertised for opposition purposes
(where appropriate)
Should you have any further inquiries
regarding this matter or a
In relation to
Design Registrations, to prosecute a design application in the jurisdictions
previously outlined through to registration the costs is between US$2,000 to 3,000. If further attendances are
required in relation to Registrar queries (including correspondence) an
additional charge on a time basis will apply which we estimate will be between
US$250 to $500 per hour.