If you are planning to go abroad, one of the first things you should consider is the protection of the trademark right. Hong Kong, in particular, is a hub for Asian finance and trade and a key hub for connecting mainland China to global markets, a region of great strategic importance in international business. Therefore, if you are considering moving to Hong Kong or planning to expand your global business with Hong Kong as a base, securing Hong Kong trademarks is practically a must.
Due to the nature of the Free Trade Port, Hong Kong is a market where companies from all over the world are active and the same or similar trademarks are most likely to be registered first. Hong Kong also adopts the first-to-file principle, so if a third party first registers a trademark, real brand users may face legal disputes or business restrictions. To avoid these risks, it is important to apply for a trademark in advance to secure your rights in the pre-market stage.
On the other hand, the Hong Kong trademark system is based on the internationally popular Nice Classification, making it relatively easy for companies with overseas trademark applications. However, there are practical considerations such as the selection of designated goods, the use of the series trademark, and the translation of the non-Roman trademark.
In this article, we will summarize the Hong Kong trademark application process and key working points in Q&A format, with a focus on frequently asked questions in practice.
What do I need to apply for a trademark in Hong Kong?
The following information is required for Hong Kong trademark applications:
First, the designated goods and services. Since Hong Kong has adopted the Nice International Classification, it is necessary to specify goods and services according to its classification system. It is important to use standard terms recognized by the Hong Kong trademark. When you use a standard item, the process is smoother as it is often reviewed without any explanation or modification.
Conversely, using non-standard or ambiguous expressions may result in a request for amendment, which may result in delays or additional costs. However, it is not necessary for the applicant to prepare this part himself, and it is common to select and apply the appropriate designated goods based on the actual business contents.
Second, the applicant’s basic information. Information such as company name, address, and place of incorporation is required, and an application is prepared based on this.
Third, the trademark. Both black-and-white or color files can be submitted, and the practice often utilizes the Series of Marks method of filing black-and-color together.
Fourth, the translation. If you include non-Roman characters such as Hangul or Chinese characters, you must submit an English translation or an explanation of the meaning.
Why use clear, standard descriptions of goods and services?
The Hong Kong trademark agency tends to conduct a relatively quick and reliable review when using standard items in the Nice classification. Because standard entries are already an internationally accepted expression, it is unlikely that the examiner will require a separate interpretation or explanation.
On the other hand, expressions that are unclear in scope, such as “eco-customized household goods,” may be subject to requests for amendment due to lack of clarity. In this case, procedural delays can of course result in additional costs.
Therefore, it is important to organize the designated goods in accordance with the standard entry criteria from the application stage.
If trademark is color, do I have to apply black and white?
It is not mandatory, but it is recommended to apply with black and white colors in practice.
Even when used in a variety of colors, black and white trademarks have a relatively wide range of protections. A color trademark, on the other hand, has the advantage of being protected against certain color combinations themselves.
Therefore, in order to maintain the brand identity and gain a wider range of rights, a strategy for applying black and white and color is used.
If I apply for a black and white color, will the cost double?
Not necessarily.
Hong Kong has a “series of marks” system, so you can apply for the same or very similar trademark in a single bundle. This means that even if you apply for a black-and-white and color version together, you can still increase your cost efficiency by not overpaying for the basic fee.
This means that the cost of a separate application can be reduced while the scope of protection can be expanded. Especially if the color element is an important brand, it is a very useful scheme.
What happens if I enter a Korean or other language text in a trademark?
Since the Hong Kong trademark checks the meaning of the characters included in the trademark, you must submit an English translation or a description of the meaning if you include non-Roman characters such as Korean, Arabic, and Cyrillic characters.
For example, the Korean mark '하늘' can be transliterated as 'haneul' and translated as 'sky.'
These translations are used by the examiner as an important criterion for determining whether a trademark is distinct, so accurate translations and representations are important.
How long does it take to register?
The Hong Kong trademark application process is relatively rapid.
If all the documents are normally prepared and reviewed without correction, it usually takes about five months from application to registration. It’s pretty fast compared to other countries.
However, if the designated goods are unclear, or if there are similar trademark issues, or if there is a lack of distinctiveness, the examination period may be longer.
What is the key to applying for the Hong Kong trademark?
To sum up, the Hong Kong trademark application must take particular note of:
- Designated goods should be constructed as standard as possible.
- Prepare accurate applicant information.
- Color trademark will be reviewed as a series trademark with a black-and-white version
- Prepare translation and semantics if non-Roman characters are included.
- Make sure you have enough time for the business.
Hong Kong is an important strategic hub for Asian expansion and global brand protection. The Hong Kong trademark scheme is relatively simple and is also quick to review, but the lack of preparation in the filing phase can lead to unnecessary costs and procedural delays.
In particular, it is important to review the designated goods configuration, the utilization of the series trademark, and whether or not the translation response are factors that directly affect the actual registration possibilities and scope of the rights.
If you’re considering entering the Hong Kong market or protecting your global brand, it’s a good idea to get your trademark right in line with your business plan.
This article reflects the information available when it was published. Contact us to discuss your circumstances.