NEW HONG KONG TRADE MARKS ORDINANCE

Commencement Date 4th April 2003

After much waiting, it has finally been announced that the New Trade Marks Ordinance which was passed in June 2000, will take effect from 4th April 2003.  The New Law will bring many significant changes to the existing practice.

The New Law widens the scope of a trade mark in allowing sound and smell marks to be registrable.  The New Law will also provide protection to well-known marks.

With regard to infringement provisions, comparative advertising and parallel importation are not considered as acts of infringement under the New Ordinance while relief against groundless threats of infringement proceedings is provided.

The New Ordinance is also aimed at simplifying the application process and other trade mark transactions.  Multi-class applications can be filed under the New Ordinance.  Part A and Part B of the Register will be abolished leaving a single Register.  The association conditions of any existing trade marks will cease to have effect.  Existing registrations of a trade mark belonging to the same proprietor may be merged and the latest registration date amongst those registrations will be deemed the registration date of the merged registration.  As a result, the official fees payable upon filing of an application and upon renewal will be considerably reduced.

For easy reference, the more important changes introduced by the New Ordinance are highlighted below.

Applications

• Sound and smell marks are now registrable provided that they can be represented graphically.

• The 8th edition of the Nice Classification will be adopted.

• Application for collective marks can be made.

• Multi-class application can be applied for with reduced fees for subsequent classes.

• There will be only one single Register i.e. abolition of Part A and Part B of the Register.

• Examination will be based on two grounds for refusal:

1. Absolute grounds - objections to distinctiveness of the mark

2. Relative grounds - objections due to similar or identical prior registered or applied for trade mark (NB - where the owner or applicant of prior mark gives consent to the registration of the application, the citation will be waived by the Registrar)

• Applicants themselves may offer disclaimers to expedite applications.

• There will be no association conditions.

• Division of applications is available where there are objections to allow particular classes of goods/services or particular goods/services within a class to proceed.

• Opposition period is 3 months from the date of advertisement.

• The Registrar shall have power to tax any costs awarded by him in any proceedings before him.

• There will be no advertising or registrations fees.

Registrations

• Initial period of registration is 10 years and subsequent renewal is also for ten years.

• Registrations of the same trade mark in different classes may be merged into one registration to save on renewal fees. 

1. There is no merger fee and no Certificates will be issued for merged registrations.

2. The merged registration will be subject to the same conditions applicable to each original registration.

3. The registration date of the merged registration will be the latest of the registration dates of the original registrations.

(i.e. X company has two registrations for the mark AZ in Classes 18 and 25
AZ in Class 18 - Registration Date 20th April 1982, Renewal due 20th April 2003
AZ in Class 25 - Registration Date 2nd June 1988, Renewal due 2nd June 2009
The next renewal date of the merged registrations will be 2nd June 2009.)

• Existing association conditions on the Register will cease to have effect on 4th April 2003.

• Application for revocation of trade mark can be made where there has been no genuine use of the trade mark by the owner or with his consent for a continuous period of 3 years.

• Reclassification of specifications of registered trade marks that do not conform with the 8th edition of the International Classification will automatically be done by the Registrar with notice given to the proprietor, who may file a written objection within 3 months.  If no objection is filed, the proposal will be published and proprietor will not be entitled to object.

Searches

Free online trade mark search facilities are now available.

Assignments

• No assignment document is required if the application to record is signed by the assignor and assignee.

• Failure to apply for registration of assignment within 6 months from the transaction date will disentitle Assignee from claiming damages for infringement, which occurred before the registration of the assignment.

• Only one standard fee for the registration of an assignment no matter how many marks are assigned.

Licences

• No licence document is required if the application to record is signed by the licensor or his representative

• May be general or limited but is not effective unless in writing and signed by grantor or his representive.

• Exclusive licence may provide same rights and entitle licensee to same remedies for matter occurring after grant of licence as if it was an assignment.

• Failure to apply for registration of licence within 6 months from the transaction date will disentitle Licensee from claiming damages for infringement, which occurred before the registration of the licence.

• Only one standard fee for the registration of a licence no matter how many marks are included in the licence.

Infringement

• Infringement, which occurred before 4th April 2003 will be dealt with in accordance with the old Trade Mark Ordinance and that which occurs after such date will be dealt with in accordance with the new Trade Mark Ordinance.

• Rights have been given to licensees in respect of infringement of their licensed trade marks.

• Comparative advertising is allowed as long as it is in accordance with honest business practices.

• No infringement action can be taken against parallel importers if owners have sold the goods (not applicable to services) anywhere in the world, UNLESS
   

  1. The condition of the goods have changed or been impaired after arrival in the market, AND

  2. Use of the registered trade mark would be detrimental to the distinctive character or  repute of the trade mark.
      

• A person may bring action for groundless threats of infringement proceedings to obtain a declaration that the threat is unjustifiable, an injunction against the continuance of the threat and damages against the registered trade mark proprietor unless the proprietor can show that there was infringement of his registered trade mark by the plaintiff.

Protection of Well-Known Marks

• Schedule 2 of the new Trade Marks Ordinance provides a non-exhaustive list of the factors that determine whether a mark is well-known in Hong Kong.

• Owners of well-known marks may restrain use in Hong Kong of identical or similar marks where use is likely to cause confusion by obtaining an injunction.

• It is not necessary for the owner of the well-known mark to show that the well-known mark has been used or registered in Hong Kong.

Transitional Provisions

Transitional provisions have been set out in detail to ensure the smooth transition from the old Ordinance to the new Ordinance.

Pending Applications

• Applications, which have been advertised in the government gazette prior to 4th April 2003 must proceed under the old Trade Marks Ordinance with the payment of registration fees and the registration period will be 7 years.

• Applications, which have not been advertised prior to 4th April 2003 can:
   

  1. continue to be examined and proceeded with under the old Trade Marks Ordinance; OR

  2. be examined under the new Trade Marks Ordinance by filing an irrevocable conversion application together with the necessary fee on or before 4th October 2003.  The filing date of the converted applications will be 4th April 2003.

Existing Registrations

• Existing trade mark registrations will automatically be transferred to the new Register.

• Renewal due dates of existing trade mark registrations will not change.

• Renewal applications made after 4th April 2003 will be for further periods of 10 years.

• Association conditions for existing registrations shall cease to have effect as of 4th April 2003.

Other proceedings

• Opposition, revocation, rectification and alteration proceedings pending after 4th April 2003 will continue to be dealt with under the old Trade Marks Ordinance.

• Pending applications for registration of assignment, licence, assent or Court Order will be proceeded with under the new Trade Marks Ordinance.