Highlights of the New Hong Kong Trade Marks Ordinance

 

On January 29, 2003, the Secretary of Commerce, Industry and Technology of Hong Kong SAR announced commencement of the new Trade Marks Ordinance from April 4, 2003. The following is a brief summary of the main changes in the new Ordinance:

1.

A trademark may consist of any sign capable of being represented graphically provided such signs are capable of distinguishing the goods/services of one undertaking from those of others under the new Ordinance. This would allow not only those "visual perceptible", but also sound and smell marks so long as they can be represented graphically.


2.

The 8th Edition of NICE Classification is going to be applicable from the commencement of the new Ordinance.


3.

Under the new Ordinance, a mark will not be prevented from registration where the owner of the earlier trademark or other earlier right consents to the registration.


4.

Marks will not be separated into Part A and Part B of the Register under the new Ordinance. Registrations shall be transferred to a single register so that there will be no longer Part A or Part B marks.


5.

Marks being associated under the existing Ordinance shall be considered separate marks. Association condition entered on Register under the existing Ordinance will cease to have effect from commencement of the new Ordinance.


6.

Multiclass application becomes available under the new Ordinance. The basic fees for an application in one class will be reduced, with extra fees payable for additional classes.


7.

Term of registration validity shall be prolonged from the existing 7 years to 10 years.


8.

Assignment document is not required under the new Ordinance so long as the application to record the assignment signed by both parties.


9.

The new Ordinance provides special clause for well-known trademarks and collective marks' protection.


10.

As opposed to the existing Ordinance, revocation on the grounds of non-use for 5 years by any person aggrieved can then be lodged by any person for no genuine use for 3 years.


11.

Registering trademarks and renewal of registrations under the new Ordinance are going to be substantially reduced and becomes relatively inexpensive. The total government fees for a straight forward application in one class under the new Ordinance would be HK$1300 which compared with the application filed under the existing Ordinance which costs HK$5400, with the addition of multiclass application, looks very good value.


12.

Applications filed and pending under the current Trade Marks Ordinance shall onwards be dealt under the current Trade Marks Ordinance or subject to an application within 6 months from the date of commencement of the new Trade Marks Ordinance for conversion of the newly filed applications to be dealt under the new Ordinance.