Drastic changes to official fees to be introduced

As a result of a costing exercise, whereby the Hong Kong Intellectual Property Department concluded that the Trademarks Registry is not recovering the full costs of its services, changes have been proposed to the official fees for:

• filing an application;
• renewing a registration; and
• requesting an official search.

The official fee for filing an application to register an ordinary trademark or a series of trademarks is proposed to be increased by around 54%. The fee for the first class of goods or services is proposed to be increased from HK$1,300 to HK$2,000 and from HK$650 to HK$1,000 for each additional class. For defensive trademarks, the official filing fee is proposed to be increased from HK$1,500 to HK$2,300 for the first class of goods or services, while that for each additional class is proposed to be increased from HK$750 to HK$1,150.

On the other hand, somewhat incomprehensibly, the official fee in relation to renewal matters is proposed to be reduced by around 11%. The official fee for renewing a trademark registration before the renewal deadline is proposed to be reduced from HK$3,000 to HK$2,670, and from HK$1,500 to HK$1,340 for each additional class. While the official fee for restoring and renewing a trademark registration for the first class of goods and services would remain HK$4,000, the fee for each additional class is proposed to be reduced from HK$1,500 to HK$1,340.

The most drastic proposed change is the fee for requesting an 'official' search. Currently, there is a flat fee irrespective of the number of classes which allows each request to cover a wide, sometimes unreasonably broad, range of goods and services. Therefore, it is proposed to increase the official fee and to abandon the flat fee system. The official fee for requesting a search would be increased by 100% from HK$200 to HK$400 for the first class of goods and services, while an additional fee of HK$200 would be introduced for each additional class.

 Professional organisations have expressed strong objection to the proposed changes in relation to application fees and renewal fees, pointing out that the changes are disproportionate to the actual value. However, it is expected that the new scale of fees will come into operation on March 30 2015 upon completion of the legislative procedure. 

Nicollette Liu and Sandra Gibbons, Marks & Clerk, Hong Kong