Hong Kong trade mark law update


Implementation of the international registration system under Madrid Protocol

The Trade Marks (Amendment) Ordinance 2020 (the Amendment Ordinance) was gazetted on 19 June 2020, providing a basis in Hong Kong Law for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong.

Following the enactment of the Amendment Ordinance, the Government will continue with the relevant preparatory work for the implementation of the Madrid Protocol, including preparing subsidiary legislation to provide for the relevant procedural details, setting up a dedicated information technology system and obtaining agreement from the Central People’s Government to application of the Madrid Protocol to Hong Kong. It is anticipated that the Madrid Protocol will be implemented in Hong Kong around 2022, or by 2023 at the latest.

The Amendment Ordinance also confers powers on the Customs and Excise Department to enforce the criminal provisions under the Trade Marks Ordinance (Cap. 559), and makes technical amendments to some existing provisions of the Trade Marks Ordinance for enhancing Hong Kong’s trade mark application and registration system.

Filing trade mark applications

It is mandatory for an applicant to indicate their country/state of incorporation when filing a trade mark application. Failure to do so is a deficiency under rule 11(1)(b) of the Trade Marks Rules. If the applicant fails to provide this information within two months of the Registry’s notice of deficiency requesting the applicant to do so, the application shall be treated as abandoned. The same requirement is also applicable to the recordal of registrable transactions, such as trade mark assignments, licences. etc.

Absolute grounds for refusal

The addition of a new absolute ground for refusal of registration, namely use of the national anthem as a trade mark is prohibited pursuant to the National Anthem Ordinance (Instrument A405) with effect from 12 June 2020.   

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