Hong Kong introduces new Trademarks Ordinance
A new Trademarks Ordinance modernizing Hong Kong's trademark law is expected to come into force in January 2003.
Some of the major changes introduced by the ordinance are the following:
- The definition of 'trademark' is broadened to encompass any sign that is capable of distinguishing goods or services of one undertaking from another, including colours, sounds, smells and shapes.
- Objections to registrations can be made on two grounds - absolute or relative. Absolute grounds include non-distinctive, descriptive and generic trademarks. Relative grounds include trademarks that are identical or similar to an earlier trademark and that refer to goods or services identical or similar to those of the earlier mark.
- Applications to register trademarks that are identical or similar to an earlier trademark, but refer to different goods or services, are prohibited when the use of the later trademark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier mark.
- Infringement occurs if an identical or similar trademark is used in relation to goods or services that are identical or similar to those covered by a registered trademark and if the public is likely to confuse or associate the two marks. Infringement may also occur when a trademark that is identical or similar to a well-known registered trademark, but refers to different goods and services, is used in a manner that takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered mark.
- Infringing goods, material or articles can include labels, packaging materials, business papers and advertisements.
- Exceptions to infringement include use by a person of his or her name and use of signs to indicate the type, quality, quantity, intended purpose, value or geographical origin of goods or services.
- Remedies for infringement include orders of erasure, delivery up and disposal of infringing material.
- Owners of well-known trademarks, which qualify for protection under the Paris Convention, are entitled to restrain the use in Hong Kong of trademarks that are identical or similar to their marks in relation to identical or similar goods or services where the use is likely to cause confusion. This right applies irrespective of whether or not the owner of the trademark carries on any business or has any goodwill in Hong Kong.
- Parallel imports into Hong Kong are allowed unless there are legitimate reasons for the owner of a registered trademark to oppose such dealings.
- Assignment of registered trademarks (partial or otherwise) can be made with or without goodwill. Trademark applications may also be assigned in the same way as registered marks.
- Only written assignments and licences are effective, but they need not be recorded. However, unrecorded transactions may not be entitled to protection, and the right to recover damages for infringement will be limited unless an application to record the transaction is made within six months of the transaction date.
- The protection period for registered trademarks is extended from seven years to 10 years. The renewal registration period is reduced from 14 years to 10 years.
- During the period of transition, applicants can opt for their applications to be considered under the terms of the new ordinance, provided that the application has not been advertised as accepted on, or prior to, the commencement date of the new ordinance and the request is made within six months of this date.
Maria Smith, Kenny Wong and Rosita Li, Johnson Stokes & Master, Hong Kong
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