New Hong Kong Trademark Law
With a view to modernizing the current trademark law, to ensuring its compliance with the international norms, especially to the provisions of the TRIPS Agreement, to simplifying the registration procedures for trademark applications and to providing wider protection for the trademark owners, the new Hong Kong trademark law - the Hong Kong Trade Mark Ordinance - adopted by the Hong Kong Legislative Council, was promulgated on 15 June, 2000.
The major revisions and additions of the Trade Mark Ordinance are as follows:
I. The registration systems A and B under the current Trade Mark Ordinance are replaced with a single uniform trademark registration system.
II. The scope of trademark protection is widened. In the new Ordinance trademark is defined as any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically. A trademark may be made up of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, smells, or shape of goods or their packaging and any combination of such signs. Trademarks as referred to in the Ordinance include certification marks, collective marks and defensive trademarks.
III. The duration of protection for a registered trademark is 10 years, starting from the date of registration (the filing date). When it expires, the registrant may apply for renewal for another 10 years each time. The application for renewal should be filed before the expiration of the registration, and a 6- month grace period is provided for the renewal application.
IV. With regard to priority right, it is provided in the Ordinance that, within six months after filing an application for registration of a trademark in a member state of the Paris Convention or in a member state of the World Trade Organization, any applicant who applies for registration of the same trademark in Hong Kong may enjoy priority right.
V. Anyone may file a request to cancel or to invalidate a trademark once it is registered. Such request can be filed either with the registrar of the Trademark Registry, or with the court. Moreover, if the registrar of the Registry believes that a trademark is improperly registered or registered in bad faith, he may apply to the court for invalidation of the registration. The grounds for the cancellation of a trademark registration mainly include:
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non-use in three consecutive years (instead of five years under the existing or old Trade Mark Ordinance);
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that the trademark consists of a sign that, by consequence of the acts or the inactivity of the owner, has become the generic name in the trade for goods or services for which the trademark is registered; and
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The trademark in use has misled the public as to the nature, quality, geographical origin, etc. of the goods or service.
VI. Special provisions have been set forth for the protection of well - known trademarks, defensive marks, collective marks and certification marks, and provisions on associated trademarks have been annulled. Well-known trademarks will be decided by the trademark registrar or the court.
VII. Once a trademark application is accepted, the Trademark Registry will publish the application. During the prescribed publication period, anyone may file with the Registry a written opposition against the trademark. In filing such opposition, the applicant for opposition should present his the grounds for opposition to the Registry for examination.
VIII. With regard to acts infringing the exclusive rights of trademarks registered by another person, it is provided in the Ordinance that the infringee may obtain civil remedy. Once his right is infringed, the proprietor of a registered trademark may institute a court proceeding, requesting the court to order the infringer to compensate for damages or to hand over his accounts, to issue injunctions, an order for delivery up (to order the infringer to deliver the infringing goods, materials or articles to the proprietor of the registered trademark or other persons the court may designate), or an order for disposal (to order the destruction of the infringing goods, materials and articles or the disposal of them by any other method the court deems appropriate).
The new Ordinance is expected to enter into force in 2001. The exact effective date is to be decided upon by the Hong Kong SAR Government. The Government will also promulgate the implementing rules under the new Trade Mark Ordinance.
