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Changes to Hong Kong Trade Marks Ordinance to Note
9 March 2021

On 19 June 2020, the Trade Marks (Amendment) Ordinance 2020 (“Amendment Ordinance”) came into effect in Hong Kong, amending the Trade Marks Ordinance (Chapter 559 of the laws of Hong Kong, “the Ordinance”) and allowing the application of an international trade mark registration system under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”) in Hong Kong. However, Section 5 and Part 4 of the Amendment Ordinance relating to trade mark rights to be acquired in Hong Kong upon implementation of the Madrid Protocol in Hong Kong will only come into operation later on a day to be appointed by the Secretary for Commerce and Economic Development by notice published in the Gazette. In this eNews, we will discuss the changes and implications as a result of the Amendment Ordinance.

Madrid Protocol
The Amendment Ordinance added a new Part XA concerning the international registration of trade marks under the Madrid Protocol to the Ordinance. This is the first preparatory work to implement the international registration system (“IR”) in Hong Kong.

The IR is governed by the Madrid Agreement, concluded in 1891, and the Madrid Protocol, concluded in 1989. The system allows protection of a mark in a large number of countries through an international registration that has effect in each of the designated 124 contracting parties including China, European Union, United States, Australia, Russia, Japan, South Korea, Singapore and Malaysia. IR is only available for applicants located in the contracting parties to the Madrid Agreement and the Madrid Protocol who will be able to register trade marks in the register of the International Bureau of the World Intellectual Property Organization and obtain trade mark protection in multiple jurisdictions by filing a single application through the IR centralized system. Up to date, Hong Kong is not yet a contracting party.

The implementation of IR in Hong Kong would simplify the registration process in the contracting countries for owners of international trade marks in Hong Kong who will no longer have to file applications in each jurisdiction separately. This would save time and costs in seeking trademark protection in multiple jurisdictions and also to manage the registrations.

The Amendment Ordinance also added a new Part XIIA to the Ordinance which confers powers on the Hong Kong Customs and Excise Department to enforce the criminal provisions of the Ordinance and makes technical amendments to some existing provisions of the Ordinance to enhance the trade mark application and registration system in Hong Kong.

The Amendment Ordinance has amended certain provisions of the Ordinance relating to trade mark application. It is now a mandatory filing requirement under the new section 38(2)(a)(iii) of the Ordinance for a trade mark applicant who is a corporation to indicate its place of incorporation. It is important to note that the application shall be treated as abandoned if the applicant fails to provide this information within two months after the date of the Trade Marks Registry’s request to do so. The new requirement will also apply to other registrable transactions such as trade mark assignment if the new trade mark applicant is a corporation.

It is also worth noting that a trade mark application will not be given a filing date until the application fee is paid in full pursuant to the amended Section 39(1) of the Ordinance. An application shall be deemed never to have been made if the applicant fails to pay the application fee within two months after the date of the Registry’s notice requesting the applicant to do so.

Further, the amended Section 46 has introduced changes in amending a trade mark application. It clarifies under what circumstances an amendment to an application for registration of a trade mark by adding a representation of the applicant’s own registered trade mark may be made. In particular, such amendment shall be made in respect of any or all the goods or services in which the registered trade mark is registered. In other words, the specification of goods and / or services of the registered trade mark which representation is to be added must cover the specification of goods and / or services of the trade mark being applied for. This has all along be the position adopted by the Registry whilst the Amendment Ordinance makes it a statutory requirement.

The Ordinance as amended by the Amendment Ordinance will allow a more efficient and cost-effective registration of international trade marks in Hong Kong once the implementation of the Madrid Protocol is ready and we will provide an update again when the subsidiary legislations and procedural details are available.

If you have any questions on the above case or relating to intellectual property matters (whether registration, enforcement or otherwise), experienced lawyers in our firm would be happy to assist you.

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