Government proceeding with plans to adopt Madrid Protocol
The government of the Hong Kong SAR has announced that it is proceeding with plans to adopt the Protocol Relating to the Madrid Agreement, following its consultation with interested parties at the end of 2014. It is anticipated that the Madrid Protocol will be available in Hong Kong in 2019 at the earliest.
However, some modifications to the system will be required. Since Hong Kong is an administrative region of the Peoples’ Republic of China and not a sovereign state or qualified inter-governmental organisation, it cannot become a contracting party.
It is proposed as follows:
- Hong Kong will communicate directly with the International Bureau and will not be required to go via the Beijing office of origin.
- The language of communication and filing will be English. As Hong Kong trademark applications may be filed in either the Chinese or English language, if the base application is filed in Chinese, it must be translated into English.
- International registrations based on applications filed in member countries other than China (both Mainland China and Hong Kong SAR) will be able to designate Hong Kong SAR and/or Mainland China.
- International registrations based on applications filed in Hong Kong SAR will not be permitted to designate Mainland China. Conversely, international registrations based on applications filed in Mainland China will not be able to designate Hong Kong SAR.
- In order to fill this gap, the government of the Hong Kong SAR will seek a reciprocal filing arrangement between the Hong Kong SAR and Mainland China. However, this arrangement is still to be agreed with Mainland China and it was advised that discussions are progressing slowly.
Sandra Gibbons, Marks & Clerk, Hong Kong
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