Member Article

Significant changes are expected to be introduced to the trademark law of Hong Kong to cater for the examination, acceptance and administration of the International Registration of marks under the Madrid System which is tentatively scheduled for launch in 2022/23. The Hong Kong Intellectual Property Department (IPD) is revamping the trademark law to align with international practices, after holding several industry consultations to gather opinions and recommendations.

Meanwhile, the Trademarks Registry (TMR) has initiated some modest, practical changes to help practitioners complete tasks for trademark owners more conveniently and efficiently. These changes include the following:

1. Notices of Opposition and Extensions of Time for Opposition can now be filed by the opponent or its agent through the IPD online portal. Prior to this, all opposition forms and documents had to be physically filed at the TMR. In February 2019, the IPD migrated to an entirely new integrated system to administer and manage all registrable intellectual property rights in Hong Kong. The function supporting online filing of opposition pleadings and extensions was rolled out in December 2019. Online filing saves the need for the opponent or its agent to send staff to physically file opposition documents at the TMR before the close of business. The opponent or its agent still needs to serve a copy of the Notice of Opposition or Notice or Extension on the applicant’s address for service.

2. A scanned copy of the Letter of Consent is now considered satisfactory to resolve a citation objection (subject to the discretion of the TMR, which can still demand the original). Previously, the TMR strictly required the original letter of consent.

3. An applicant is not required to record an address change for its own earlier trademarks (bearing a former address) which have been cited as conflicting trademarks due to the address discrepancy. The applicant or its agent can now inform the TMR in writing that the applicant is the same entity as the owner of the cited trademarks (subject to documentary proof). This saves the applicant the cost of recording an address change against the older trademark records, which is particularly beneficial if the trademark portfolio is large and the address change would be costly.

4. Due to the outbreak of COVID-19 “and to avoid the gathering of persons in confined areas such as hearing rooms,” the IPD has decided to, “as far as practicable, handle hearing cases by way of hearings on paper or oral hearings via telephone conferencing or other electronic means” from March 2020 until further notice.

This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).