Consultation paper on joining the Madrid Protocol issued

Hong Kong

On November 11 2014 the Commerce and Economic Development Bureau and the Intellectual Property Department of the Hong Kong government jointly issued a consultation paper on the proposed application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) to Hong Kong. The three-month consultation will end on February 11 2015. The purpose of this consultation is to gather views on the benefits, implications and implementation of the application of the Madrid Protocol to Hong Kong.

The Madrid System for the international registration of trademarks is administered by the World Intellectual Property Organisation and governed by the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Madrid Protocol.

With the introduction of the Madrid Protocol to Hong Kong, applicants domiciled or registered in Hong Kong (whether individuals or businesses) will be able to file applications to register their trademarks in multiple Madrid Protocol member countries by way of a single filing and registration process without the need to file separate applications with different local trademark offices. Foreign companies holding existing international registrations of trademarks will also have the option to expand the territorial protection of their marks by designating Hong Kong without the need to file a separate domestic application in Hong Kong.

At the moment, foreign companies have to file separate applications in Hong Kong in order to protect their trademarks here. Similarly, Hong Kong companies will need to file separate applications in those other jurisdictions to which they wish to extend their trademark protection.

Statistics show a steady increase in the number of trademark applications filed with the Hong Kong Trademarks Registry in recent years, with a noticeable jump of 50% within four years (2009 to 2013) in both the total number of applications and the number of applications filed by overseas applicants.

More than 30% of the overseas filings came from applicants in the People’s Republic of China (PRC). These figures show that Hong Kong has become an increasingly popular jurisdiction for trademark protection for overseas trademark owners.

At the same time, there has also been a 50% increase from 2008 to 2013 in the number of trademark applications filed by Hong Kong applicants in other jurisdictions such as Australia, Japan, the European Union, Singapore, the United Kingdom and the United States.

The above statistics suggest that overseas companies are keen to extend the protection of their trademarks to Hong Kong. Similarly, more and more companies in Hong Kong wish to obtain protection of their trademarks in foreign jurisdictions.

The Madrid Protocol currently has 92 contracting parties including the PRC, the United States, the European Union, Australia, Japan, South Korea, Singapore, the Philippines, Vietnam and India. Several ASEAN member states, including Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Myanmar and Thailand, have also pledged to join the Madrid Protocol by 2015.

One of the perceived benefits of joining the Madrid System for Hong Kong is that it offers a more efficient and cost-effective one-stop service for trademark owners. It makes it easier and indeed encourages local businesses to promote and market their brands overseas and at the same time serves as an incentive for overseas companies to do the same for their brands in Hong Kong. A government spokesperson said that:

to enhance the competitiveness of Hong Kong as an international business and intellectual property trading hub, the government believes that it would be in Hong Kong’s overall interest to apply the Madrid Protocol to Hong Kong so that we can take advantage of the Madrid System.”

The introduction of the Madrid System to Hong Kong will need approval from the Central People’s government of the PRC.

Under the Basic Law of Hong Kong, the application to Hong Kong of any international agreements to which the PRC is a party shall be decided by the Central People’s government, in accordance with the circumstances and needs of Hong Kong and after seeking the views of the Hong Kong government. Therefore, the Hong Kong government will need to convey the views and suggestions gathered in this consultation exercise to the Central People’s government and discuss with the relevant PRC authorities about the proposed application of the Madrid Protocol to Hong Kong.

Another step critical for the application of the Madrid Protocol to Hong Kong will be the amendment of the existing Trademarks Ordinance and Trademarks Rules of Hong Kong in order to cater for the international registrations regime under the Madrid System.

The current estimate is that it may take some three to four years to complete all these steps. That said, even though it is likely to take at least three to four years before the Madrid System is implemented in Hong Kong, the consultation paper is an important first step, as views from all stakeholders are now sought on this potential landmark change of the trademark regime in Hong Kong.

Rosita Li and Benjamin Choi, Mayer Brown JSM, Hong Kong

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