The system for trademark protection in Hong Kong includes the following:

• Registration
• Common law

Hong Kong belongs to the following international treaties:

• Paris Convention
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

The benefits of registering a trademark in Hong Kong include:

• It entitles the proprietor to bring an infringement action
• Other: Evidence of ownership, and prima facie defense to infringement (although not to common law - passing off claims)

Service marks

Yes

Defensive marks

Yes, no intention to use is required but will need to adduce extensive evidence to show that the mark has become extensively well-known in Hong Kong and that its use on other goods/services would likely detract from its distinctive character for those goods used.

Collective marks

Yes, required to submit regulations governing the use of the collective mark. 

Certification marks

Yes, required to submit regulations governing the use of the certification mark and the applicant's competence in certifying the applied-for goods/services. 

Well-known marks

Yes, required to adduce evidence to show that the mark is well-known in Hong Kong.

Series marksYes, a maximum of four, and they must not differ to a material extent. 

Marks in a different language or characters other than Roman characters

Yes, required to submit their pronunciation and any meaning under the relevant language. 

Non-traditional marks: Sound marks

Yes, capable of being represented graphically - a written description of the sound accompanied by a musical score. 

Non-traditional marks: Smell marks

Yes, smell marks are included under the statutory definition of a trademark but the TM Registry has yet to accept any for registration under the existing law which took effect in 2003 mainly because smell marks are not considered to be capable of being represented graphically.

Non-traditional marks: Position marks

Yes, a precise written description of the mark, and graphical specimens of the mark. 

Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)

Yes, a combination of colors have a reasonable chance of being registered on an
inherent basis, whereas a single color, would likely encounter registrability objection for not functioning as a trademark and evidence of use would be severely scrutinized

Non-traditional marks: Shape or three-dimensional marks

Yes, the shape cannot: have resulted from the nature of the goods, be necessary to obtain a technical result, or give substantial value to the goods.

Documents and information required to file a trademark application include:

• Name and address of the applicant
• Representation of the trademark
• Goods and services and the class(es) for which the trademark is to be registered
• Other: The applicant’s legal status (incorporated/unincorporated) and the country/state of incorporation.

Yes, multi-class applications are permitted in Hong Kong. There is no limit, but may be subject to inquiry about genuine intention to use an applied-for mark. 

Yes, there are substantive examinations of trademarks in Hong Kong on the following grounds: 

• Substantive grounds
• Relative grounds

Absolute grounds for refusal of a trademark in Hong Kong include:

• Mark consists of a non-invented word(s)
• Mark has direct reference to the character or quality of the goods or services
• Mark is not distinctive
• Mark consists of a geographical name
• Mark consists of a surname
• Other: If an applied-for mark does not function as a source identifier, is applied for in bad faith (e.g. lack of intention to use, squatting, etc.), contrary to law (e.g. misleading as to quality or origin), consists of a national flag or emblem, etc.

Relative grounds for refusal of a trademark in Hong Kong include:

• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark
• There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark
• Well-known mark: There is a well-known mark that is identical or so nearly resembling the subject mark for the same goods or services as the subject mark
• Well-known mark: There is an earlier registered mark that is well-known for different goods or services and the use of the subject mark would indicate a connection between goods or services covered by the subject mark with the proprietor of the well-known mark.
• Other: If there is an earlier registered defensive, collective, or certification mark, or contravenes a third party’s copyright, registered design, or patent, or constitutes passing off (common law trademark rights).

The time period from application to registration in Hong Kong is between 6-12 months. 

Yes, late renewal of trademark registration is permissible in Hong Kong. This renewal is subject to a late fee. 

No, evidence of use does not need to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Hong Kong.

No, trademark licensees are not required to record themselves with the Registrar in Hong Kong, however, it is recommended. Prompt recordal – subject to any innocent third party’s rights e.g. conflicting licensee rights; recordal must be lodged within six months otherwise the licensee would not be able to claim damages against infringement during period of delay, and recordal entitles a licensee certain statutory rights e.g. commencing infringement actions.

Available enforcement methods in Hong Kong include:

• Civil enforcement
  • Infringement action
  • Passing off
• Criminal enforcement
• Border or other administrative enforcement measures

None identified.