HONG KONG

The new Hong Kong Trade Marks Ordinance ("New Ordinance") has been enacted and published in June of 2000, and is anticipated to come into operation in Hong Kong in 2001. Important areas include:

Definition

Under the New Ordinance, a trademark is defined as any sign which is capable of distinguishing the goods and/or services of one undertaking from those of other undertakings, and which is capable of being represented graphically. Notwithstanding what appears to be a limitation to "graphics," the New Ordinance is intended to allow registration of colors, sounds, and smells.

Unified Trademark Register

There will no longer be Part A and Part B registers under the New Ordinance. Trademarks registered prior to the operative date of the New Ordinance, whether Part A or Part B, will be deemed to be transferred to a unified register, and will be treated the same and enjoy the same protection under the New Ordinance.

Registrability

There are two grounds for refusal of registration under the New Ordinance:

  1. absolute grounds - lack of distinctiveness, descriptiveness, etc., and
  2. relative grounds - the existence of a prior conflicting mark. As to distinctiveness, the "capable of distinguishing" test for registration, presently the standard for registration on Part B, should make non-distinctive marks easier to register in Hong Kong. Note, this is a substantial departure from prior practice which made Hong Kong one of the most difficult of jurisdictions to gain registration.

Multiple-Classification

Multiple-class applications are possible under the New Ordinance.

Well-Known Trademarks

The New Ordinance provides protection for "well-known" trademarks in accordance with Paris Convention provisions, regardless of registration, or use of such marks in Hong Kong.

Duration and Renewal

A trademark shall be registered for a period of 10 years commencing on its date of registration, and may be renewed for a further period of 10 years successively.

Assignments and Licenses

The new Ordinance requires all Assignments (with or without goodwill) and Licenses to be in writing.