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"It is an offence to use ® a trade mark without registering it in the HKSAR or elsewhere. A fine is punishable upon conviction. ”
Source: IPRdaily Chinese Network (iprdaily.cn)
Author: Dai Lirong, China Council for the Promotion of International Trade Patent and Trademark Office
According to the Trade Marks Ordinance of Hong Kong, once a trade mark is registered, the trademark owner has the exclusive right to use the trade mark in respect of the goods and services. If other traders use the trade mark in the Hong Kong Special Administrative Region (HKSAR) for the same or similar goods or services without the consent of the trade mark owner, it will be an infringement and the trade mark owner may take legal action against the trade mark owner.
1. Use of Registration Marks ®
When using a registered trademark, a Hong Kong trademark owner may mark the "registered trademark" or registered mark ® on the goods, product packaging, instructions or other attachments, but only in the following two circumstances: (1) if the trademark has been registered in the Hong Kong SAR for the relevant goods or services; or (2) if the certification mark is in fact registered outside the HKSAR in respect of the goods or services.
As to how to mark the registered mark, the Hong Kong Intellectual Property Department does not stipulate the specific location around the trademark, and according to commercial practice, the trademark owner usually marks it in the upper right or lower right corner of the trademark. Marking the registered mark is a right, not an obligation, of the trademark owner, and the trademark owner can choose to mark or not mark according to his own wishes. Although the registered mark of a Hong Kong trademark itself has no legal effect, many trademark owners still choose to add the registered mark because the mark helps third parties understand the protection status of the trademark and can also reflect the importance of the protection of trademark rights.
Different from the above Hong Kong trademark registration mark practice, the U.S. law has strict regulations on ® the use, and U.S. trademark owners are also accustomed to marking the correct mark when using the trademark. As a result, we will notice that goods or services that are marked with ® a U.S. trademark on the market generally meet the requirements of the Intellectual Property Office for the use of the registered mark.
It is worth noting that if a registered trademark has been voluntarily abandoned by the owner of a Hong Kong trademark, or if the right has expired, or if it has been revoked due to non-use for 3 years, and continues to use the trademark, the trademark cannot be marked as a "registered trademark" or the registered mark ® cannot be used.
2. Falsely stating that the trademark has been registered
According to the relevant provisions of the Trade Marks Ordinance of Hong Kong, if a person falsely represents that a sign is a registered trademark; or a trade mark is registered in respect of certain goods or services and a person makes a false statement in respect of such goods or services which he knows or has reason to believe is false, commits an offence and is liable on conviction to a fine at level 3. The penalty level for an offence under the existing Schedule 8 to the Criminal Procedure Ordinance (Cap. 221) is $10,000 at level 3.
For the purposes of the above, if the words "registered" or "registered" are used in respect of any trade mark in the Hong Kong SAR; or any other word or symbol which expressly or implicitly refers to registration, unless it is proved that the reference is registered outside the HKSAR and that the trade mark is in fact registered in respect of the goods or services concerned.
In short, it is an offence to use ® a trade mark without having registered it in the HKSAR or elsewhere. A fine is punishable upon conviction.
3. Changes to registered trademarks
According to the relevant provisions of the Trade Marks Rules in Hong Kong, where a registered trade mark bears or is constituted by the name or address of its owner or any previous owner, the Hong Kong Intellectual Property Department may, at the request of the owner of the registered trade mark, permit any change in the name or address of the registered trade mark to the extent that the change does not materially affect the nature of the registered trade mark.
The Hong Kong Intellectual Property Department will publish the details of any changes in the Official Gazette and will accept objections from any person who claims to be affected by the changes.
4. Use of Evidence
According to the guidelines given by the Intellectual Property Department, if the owner does not mark the registered trademark in use or ®, the trademark owner is not required to alter the trademark on the Register for the purpose of using a slightly altered trademark design. If the owner of a trademark only uses a style that is materially different from his registered trademark but does not alter the distinctive character of the trademark, he can still take action against the infringer and prevent the cancellation of the trademark due to non-use.
5. Recommendations
If a trademark owner wants to use a trademark with a different font or color (a registered trademark claims to protect a certain color, but actually uses another color), he can re-apply for registration of the newly designed font or color trademark with the Hong Kong Intellectual Property Department, which not only protects his trademark rights but also avoids violating the relevant provisions of the Trade Marks Ordinance.
The Hong Kong Intellectual Property Department accepts applications for registration of a series of trademarks, but an application for registration of a series of trademarks cannot contain more than 4 trademarks. The fee for a series trademark registration application is the same as that for a single trademark registration application, and no additional fees are incurred. If the enterprise is unable to determine the font or color actually used when applying for trademark registration, it can choose the four fonts with the highest probability (including traditional and simplified Chinese) to apply for a series of trademarks, and for trademarks whose colors cannot be determined, it can choose to apply for a series of trademarks including protected colors and non-protected color trademark patterns, so as to maximize the scope of protection and reduce the possibility of irregular actual use of trademarks in the future.
(Original title: Don't ignore the need to standardize the use of registered marks for Hong Kong trademarks)
Source: IPRdaily Chinese Network (iprdaily.cn)
Author: Dai Lirong, China Council for the Promotion of International Trade Patent and Trademark Office
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