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Amendment to Hongkong trademark law

In Hong Kong, the 2000 Trade Marks Ordinance (Cap. 559), introduced on 4 April 2003 and replacing the Trade Mark Ordinance (Cap. 43), governs the Hong Kong Special Administrative Region's trade mark system (which is separate from that of the rest of the People's Republic of China pursuant to the "one country, two systems" policy). Hong Kong's current (and recently superseded) trade mark law is very similar to that of the United Kingdom.

The procedure to register a mark is relatively straightforward.

An application is filed with the Hong Kong Intellectual Property Department's Trade Mark Registry, and it is assessed by an examiner for deficiencies. The examiner may issue a report on the application - most deficiencies are based on an assessment that the mark is "devoid of distinctiveness", or is identical or very similar to a third party's trade mark. The two grounds of objection are, first, absolute grounds (the mark is inherently not registerable) and, second, relative grounds (the mark resembles or is identical to another pre-existing registration). Once the applicant has an opportunity to be heard on the report, the application will either be rejected, or accepted for advertisement. Any party who wishes to oppose the registration of the mark can file a notice of opposition, which culminates in administrative proceedings. Otherwise, the Trade Mark Registry will issue a certificate to the applicant, certifying registration. A straightforward application (excluding pre-filing search) will cost HK$4,300 (the fee recommended by the Hong Kong Law Society).

Under the new law, a mark which has not been in use for 3 years can be removed by an application from a third party.

The old trade mark law provided for a division in the Register, between "Part A" marks and "Part B" marks. Part B marks were marks considered by the Registrar to be less distinctive by their nature but still qualifying for registration: Part A marks were entitled to a greater level of protection than Part B marks. Under the new law, this distinction has been abolished.

Other developments include the introduction of certification marks, collective marks, well-known marks, sound trade marks, and smell trade marks. In addition, removal of a trade mark for non-use has been reduced from a period of 5 years to 3 years.

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