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26 February 2019

Trademarks (Amendment) Bill 2019 gazetted - what you need to know

The Trademarks (Amendment) Bill 2019, which empowers the registrar to make essential procedural rules to implement the Madrid Protocol in Hong Kong, was gazetted on 8 February 2019.

03 April 2017

SWISS certification mark opposition: court finds actual use likely to confuse

The Federation of the Swiss Watch Industry FH - the holder of the SWISS certification mark - has been successful in an appeal against a decision of the registrar of trademarks in opposition proceedings against the registration of the figurative mark SWISSBERNARD for "horological and chronometric instruments". The appeal decision is significant in that it is one of the rare cases in which the registrar’s decision has been set aside.

06 March 2017

Government proceeding with plans to adopt Madrid Protocol

The Hong Kong government has announced that it is proceeding with plans to adopt the Madrid Protocol, following its consultation with interested parties in 2014. It is anticipated that the protocol will be available in Hong Kong in 2019 at the earliest. One interesting point is that international registrations based on applications filed in Hong Kong will not be permitted to designate Mainland China, and vice versa.

05 October 2016

Key trademark service providers are Asia-bound with completion of $3.5 billion Thomson Reuters deal

Thomson Reuters’ $3.55 billion sale of its IP business to Baring Private Equity Asia and Onex Corporation completed this week in a deal that highlights the growing demand for trademark strategy services in the region.

16 May 2016

Opposition to registration of SWISSBERNARD mark

The Federation of the Swiss Watch Industry FH has failed in its opposition to the registration of the SWISSBERNARD mark applied for on January 31 2012 by Ayoub in Class 14 for “horological and chronometric instruments” and published for opposition on July 20 2012.

10 May 2016

First movement marks accepted for registration in Hong Kong

The Trademarks Registry has accepted two movement marks for registration in Hong Kong. Subject to any opposition being filed, the first registration of a movement mark should be granted in May.

14 December 2015

Hong Kong

In Hong Kong, exclusive rights to the design of an industrial article may be pursued under the Registered Designs Ordinance 2010 and the Registered Designs Rules 2004, both of which are based on the UK Registered Designs Act 1949.

24 November 2015

The Contracts (Rights of Third Parties) Ordinance - impact on the licensing of trademarks

The Contracts (Rights of Third Parties) Ordinance (Cap 623), which will come into operation on January 1 2016, will have implications for IP contracts, such as trademark licensing. Among other things, any warranties concerning trademarks given by the trademark owner may be enforceable by the sub-licensee(s) directly in the event that any of the warranties are breached.

18 September 2015


The holder of an unregistered mark has the right to use a trademark, no matter whether it is registered. However, if a mark is to be used on tobacco products, it must be registered.

15 April 2015

Registry updates Work Manual on Absolute Grounds for Refusal

The Trademarks Registry has updated the Work Manual on Absolute Grounds in relation to objections based on bad faith. It is now appropriate for "the registry to raise an objection if the circumstances of the application give rise to a reasonable suspicion as to the applicant’s entitlement to the mark or the honesty of his intentions".

02 April 2015

Check pattern case clarifies standard of use required to resist non-use revocation action

In a revocation action filed by Burberry, the owner of the famous Burberry check pattern, the Court of First Instance has found that Polo Santa had failed to prove that it had made genuine use of its Polo check mark following its registration. This case sheds light on the kind of evidence of use that the courts will be expecting in non-use revocation cases, and clarifies the standard of use required to resist a revocation action for non-use.

09 March 2015

Drastic changes to official fees to be introduced

As a result of a costing exercise, changes have been proposed to the official fees for filing an application, renewing a registration and requesting an official search. The most radical proposed change concerns the fee for requesting an official search, which would be increased by 100% from HK$200 to HK$400 for the first class of goods and services.

03 March 2015

Court of First Instance addresses key aspects of trademark law

In Vita Green Health Products Company Limited v Vitasoy International Holdings Limited, the Court of First Instance has highlighted some important principles of trademark law which should be considered when applying for or opposing a trademark. In particular, the decision shows that, while a mark may have an established reputation in respect of particular goods, this does not mean that such reputation will extend to other goods.

13 January 2015

Consultation paper on joining the Madrid Protocol issued

The Commerce and Economic Development Bureau and the Intellectual Property Department of the Hong Kong government have jointly issued a consultation paper on the proposed application of the Madrid Protocol to Hong Kong. The 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.

06 May 2014

Unilever's application for COOL FRESH in Class 3 refused on absolute grounds

The registrar of trademarks has refused to register Unilever’s trademark COOL FRESH for goods in Class 3 under Sections 11(1)(b) and (c) of the Trademarks Ordinance. Among other things, the registrar held that the mark as a whole conveyed a “direct and immediate message” that the goods brought about a cooling and brightening effect; therefore, it was capable of designating the essential characteristics of the goods.