Before applying to register a trademark, it is advisable to find out if someone else has already registered or has applied to register the same or similar trademark with the applicant’s. It can minimize risks of rejection and increase the chance of successful registration. Please refer to Kaizen’s article: https://www.kaizencpa.com/Knowledge/info/id/572.html. With respect to the results of the trademark pre-filling search, the applicant may assess whether to apply for such trademark or to make modifications or adjustments. In addition, the Trade Mark Registry offers official trademark search service which is more accurate than free search by yourself, please consult Kaizen for further details.

Completed the trademark pre-filling search, the applicant may independently or authorize a legally established trademark agency to submit an application. The application documents include:

(1) A duly completed registration form.

(2) A clear graphical representation of the trademark.

(3) Priority documents. Documents can be filed within 3 months after the date of the application (when priority is claimed).

After submitting the application, the Registry will conduct formality examination and substantive examination. Formality examination is to examine the format of the application documents, mainly confirm whether the application is filled in according to the rules, whether the trademark presentation conforms to the specifications, whether the certification documents are completed. In the substantive examination, Registry will see whether the trademark application satisfies the registration requirements laid down in the Trademark Act. They will also conduct a search on their database and see if the same or similar trademark has already been registered or been applied for by another trader in the same class or similar goods/services.

If the trademark meets all the requirements, it will be published in the Hong Kong Intellectual Property Journal. Anyone can view the trademark and lodge an opposition to it within 3-month period beginning on the publication date. If there is no opposition filed during the publication period or if the opposition is rejected by the Registry, the trademark becomes effective. Afterwards, the Registry will announce the registration of the trademark and issue a registration certificate to the applicant. Currently it takes around 6-9 months from filing the application until registration in a smooth case.
The flow chart of the whole process is demonstrated below:

Trademark Pre-filling Search (depends on HKIPD schedule)

→

Filling Application

→

Examination (3-6 months)

→

Publication (3 months)

→

Registration

(1)

The registration of a trademark is valid for 10 years from the filing date of the application.

(2)

If the registrant intends to continue to use the trademark beyond the expiration, a request for renewal shall be made within 6 months before the said expiration. Where no request has been filed within the said period, a grace period of 6 months may be allowed. Where no application for renewal has been filed after the expiration of the grace period, the Registry shall cancel the trademark. In such case, the request for restoration shall be made within 6 months from the date of cancelation to restore the trademark.