Have you ever thought about registering your trade mark in Hong Kong? It is not mandatory to register your trade mark in Hong Kong and it is actually quite common that businesses use a trade name or mark without obtaining any registered trade mark right at all. Registered and unregistered trade marks are both being considered as personal properties; but with a registered trade mark, a business can enjoy much better protection under the Cap. 559 Trade Marks Ordinance.

Why register your trade mark?

To name one key protection listed within the Section 10of the Cap. 559 Trade Marks Ordinance, "the owner of a registered trade mark has the rights and is entitled to the remedies provided by this Ordinance." On the contrary, if a business has not registered their trade mark, the business will not be protected and will not be entitled  to all the rights and remedies within the Ordinance.

In case of any future trade mark infringement, the owner of an unregistered trade mark is not allowed to initiate any legal action against any unauthorized use under the Ordinance. In contrast, the owner of the registered trade mark can initiate legal proceedings against another party for trade mark infringement without proof of actual damage. In addition, the registered trademark may possibly treat as earlier trade mark rights in any opposition and invalidity proceedings. There is only one circumstance where the unregistered trade mark is entitled to the protection listed within Section 63 (1) under the Cap. 559 Trade Marks Ordinance as a well-known trade mark.

What constitutes a well-known trade mark & Concerns on unregistered trade mark

You may think an unregistered well-known trade mark is protected under the Ordinance, why would you still need to consider registering your trade mark. The crucial consideration is the burden of proof for a well-known trade mark is relatively high under the Ordinance. It has listed out information to be submitted to the Registrar or the court to determine whether the trade mark is well-known in Hong Kong that includes the following:

1. the degree of knowledge or recognition of the trade mark in the relevant sectors of the public;
2. the duration, extent and geographical area of any use of the trade mark;
3. the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the trade mark applies;
4. the duration and geographical area of any registrations, or any applications for registration, of the trade mark, to the extent that they reflect use or recognition of the trade mark;
5. the record of successful enforcement of rights in the trade mark, in particular, the extent to which the trade mark has been recognized as a well-known trade mark by competent authorities in foreign jurisdictions; and
6. the value associated with the trade mark.

If an unregistered trade mark is not being regarded as a well-known trade mark after providing the above mentioned information, the owner will not be protected by the Ordinance. The owner will also have to recourse to the law of passing off at common law to establish his earlier trade mark rights in any trade mark opposition, invalidity and/or court proceedings in Hong Kong.

To save the hassles and to avoid potential trade mark infringement, it is really the time to consider having your trade mark registered.

Download Patent Rights in Hong Kong and Their Enforcementl.pdf