Hong Kong – Updates on Trade Marks Law and Practice in June 2020

The Trade Marks (Amendment) Ordinance 2020 (“2020 Amendment Ordinance”) has come into effect on 19 June 2020, which provides for the implementation of the international trade mark registration system under Madrid Protocol, the enhancement of mechanism for trade mark registration, enforcement powers as well as technical amendments of the existing Trade Marks Ordinance.

In respect of International trade mark registration system, there is an entire new Part XA detailing the international registration under Madrid Protocol in Hong Kong. However, the international registration system in Hong Kong will only be implemented in 2022-2023 the latest.    

Regarding updates of the technical amendments under different stage of trade mark matter, please see below for your reference.

1.    Pre-filing

The revised Form T1 has included nature and scope of preliminary advice as to whether a trade mark is likely to be refused registration on absolute ground in section 11 (preliminary advice on registrability) and/or relative ground in section 12(1) to (3) (search of records) of the Trade Marks Ordinance.

2.    Filing

i.    The Applicant must indicate its “Applicant Type”, “Country/territory/area of incorporation” and/or “State of Incorporation” (for US corporation only)
ii.    However, the Registrar will not verify the information provided by an applicant regarding applicant type or place of incorporation
iii.    The Registrar will not allot the filing date for a trade mark application until the application fee is paid in full. Failure to pay the application fee within two months after the date of the Registry’s notice, the application shall be deemed never to have been made
iv.    If an applicant wishes to made an amendment to a trade mark application by adding thereto the representation of the applicant’s own registered trade mark, the applicant has to set out that the specification of goods and/or services of the registered trade mark which representation is to be added so that the Registrar could examine if the registered goods and/or services are  identical to or wide enough to cover the specification of goods and/or services of the trade mark being applied for.  
v.    In addition, certain registered particulars of the registered trade mark have also required to be added to the amended application.
vi.    In case of an assignment of the applicant to new owner, the new applicant is required to specify its “Owner Type”, “Country/territory/area of incorporation” and/or “State of Incorporation” (for US corporation only)

3.    Post registration

i.    For assignment of a trade mark registration, the above 2(i) and 2(vi) is also applicable
ii.    Amendments concerning correction of an error or omission in the register of trade marks that is attributable to an error or omission on the part of the Registrar of Trade Marks only seek to codify the existing practice, so no substantial change

4.    Trade Marks Registry Work Manual (“Work Manual”)

i.    The chapter on “Absolute grounds for refusal” of Work Manual has been updated, namely the addition of a new absolute ground for refusal of registration into the Trade Marks Ordinance concerning use of the national anthem in applied-for trade marks is prohibited pursuant to the National Anthem Ordinance (Instrument A405) with effect from 12 June 2020.   
ii.    In addition, there are certain technical amendments in many of the chapters in the Work Manual.

5.    Revised Trade Mark forms

With the 2020 Amendment Ordinance, the Trade Marks Registry has also revised various Trade Mark forms.  The revised forms have taken effect on 19 June 2020.   The current version is still acceptable in a 6-month transitional period from 19 June 2020 to 19 December 2020.  Thereafter, the revised forms must be used.

Please see the following link for details: https://www.ipd.gov.hk/en/trade-marks/current-topics/trade-marks-amendment-ordinance-2020/index.html

Should you have any questions related to this article, please contact evelyne.yeung@oln-law.com and we will be pleased to answer and assist.

Disclaimer: This article is for reference only. Nothing herein shall be construed as Hong Kong legal advice or any legal advice for that matter to any person. Oldham, Li & Nie shall not be held liable for any loss and/or damage incurred by any person acting as a result of the materials contained in this article.