FAQs

A trade mark is a sign that distinguishes the goods and services of one business from those of another. Typically a trade mark can be words (including personal names), designs, letters, characters, numerals, colours, sounds, smells, product shapes or their packaging, or any combination of these. Trade mark registrations give companies the exclusive right to use that sign to represent their goods and services, for up to 10 years (after which they can be renewed).

No, they are very different – owning a company name does not mean that you have trade mark rights. Company names and trade marks require separate clearance and registration.

There is a plethora of restrictions when it comes to trade mark protection. At a high level, you cannot register the following: (i) generic trade marks; (ii) trade marks that describe the characteristics of the goods/services to which they relate; (iii) trade marks which are identical or confusingly similar to other trade marks; (iv) trade marks which incorporate laudatory terms; and (v) trade marks that include national flags or emblems.

Trade marks build credibility, help to protect brand identity and reputation and function as a deterrent to would-be infringers. They also open routes to commercialise your brand and your products through licence, franchise and joint venture arrangements.

Without trade marks, a business risks losing its unique identity (and, potentially, revenue) to competitors and copycat brands. It also risks being blocked from certain markets or being sued for trade mark infringement because of existing third-party trade marks.

Online marketplaces and social media platforms also have processes in place for brand owners to report infringing products, posts and profiles but they require proof of trade mark ownership. In most cases, a trade mark registration is the only acceptable form of proof.

Those looking to partner with or invest in a business will also expect to see a robust trade mark portfolio. Ultimately, trademarks help to boost confidence in the viability and longevity of a brand and the security of any investment.

Not necessarily - the official filing costs for national trade mark applications usually start in the region of 200-300 USD and there are cost effective options if you’re considering international protection. Legal support will obviously add to this cost but it generally saves you money in the long run as it helps you to avoid common mistakes and pitfalls. It’s all about getting your strategy right given your company’s budget, activity, and plans for growth.

Undertaking trade mark searches (aka prior art searches) involves searching the relevant registered trade mark databases for registered trade marks which are similar or identical to your own. These databases are generally operated by government agencies (i.e. the Intellectual Property Department). Trade mark searches are NOT google searches – doing them correctly requires legal knowledge and skill!

Undertaking trade mark searches is strongly advisable as they can help to identify trademarks in your markets of interest. By identifying identical or similar trade marks early on, you can adapt your approach accordingly and save both time and money. For instance, you can add graphics to a word mark to make it more distinctive or change the branding altogether to avoid being sued for trade mark infringement.

Make sure that you allow enough time for trade mark searches to be undertaken – most basic trade mark searches can be undertaken within a week or so but more complex/international trade mark searches can take much longer.

They don’t have to be. A basic trade mark search for a single country would cost as little as $2,500 HKD.

The online application for a trade mark is relatively straight forward. It is the due diligence and strategic planning before the application that adds complexity. At a high level, this includes: 

• Ensuring your trade mark is capable of registration - some phrases, words and images are a non-starter.

• Searching for existing third-party trade marks so that you are fully aware of potential problems and/or limitations with your trade mark before fully committing.

• Identifying which of the 45 classes of goods and services are relevant to your application - getting this wrong may compromise your level of protection.

• Deciding on how your trade mark is represented, assessing the pros and cons of options such as colour, black and white, and consolidation.

• Ensuring your filing strategy is both cost effective and compatible with your company’s growth strategy, and that you understand any regional nuances when it comes to trade mark rules and systems.

It should be noted that some national applications (for example, China) will be more challenging than others, especially if you’re applying for a foreign language mark. Applications for International (Madrid) and EU trademarks are also much more complicated than their national counterparts.

In general, trade marks are granted for a period of 10 years with the right to renew. If you fail to renew or “use” your trade mark your protection may be lost altogether.

If a registered trade mark is not used in the first five years, or for any uninterrupted period of five years, it can be challenged for non-use. In the event of a successful non-use challenge, your trade mark would be struck from the relevant register, leaving you without registered trade mark protection in that jurisdiction and, subsequently, unable to rely on that trade mark to oppose similar or identical third-party trade mark applications or to prove trade mark infringement by a third party.

An unregistered trademark is a mark that has not been registered with an Intellectual Property Office. It is created by a business or individual to signify or distinguish a product or service. Unregistered trademarks do not possess the same legal protections as their registered counterparts and are only enforceable when you have built up a sufficient connection between your mark and business.

Unregistered trade marks should be the last line of defence rather than the “smoking gun”. With a registered trade mark, all you need to prove is infringement. With an unregistered trade mark, you will need to prove goodwill in your trade mark, misrepresentation (in the mind of the public), and loss as a result. None of which is straightforward. Further, not every jurisdiction recognises unregistered trademarks. Hong Kong, China and Singapore all have laws which protect against the infringement of unregistered trademarks, but China’s laws are extremely new and relatively untested.

Ultimately, trademark registration is the only route which will guarantee brand protection and provide cost certainty.

There are 3 main routes to trade mark registration; national trade mark applications; European Union trade mark (EUTM) applications; and International (Madrid) trade mark applications. Below, is a high-level introduction to each one: 

National trade mark applications

These are filed with the national trade mark office of any given jurisdiction and, once registered, provide jurisdiction specific protection. Generally, this is the recommended approach if you are looking to protect your trade mark in a small number of jurisdictions. If you are looking for more extensive protection, then you may want to consider an EU trade mark application and/or an International (Madrid) trade mark application (see below) - filing multiple national trade mark applications can become expensive and difficult to manage.

EU trade mark applications.

These are filed with European Intellectual Property Office (EUIPO) and, once registered, provide protection in all Member States. They are a good option if you are looking to obtain protection in the EU at a reasonable price; they are much cheaper than obtaining multiple national trade mark registrations and, ultimately, EU trade marks are easier to administer as they are centrally managed by the EUIPO.  This route isn’t without risk though. For one, if an application fails in one Member State, it fails in all of them, and recent data suggests that around 20% of EU trade mark applications are challenged. If an EU trade mark application fails, there is the possibility of converting to national trade mark applications, but this is likely to significantly increase the cost of your trade mark strategy and the complexity of your portfolio.   

International trade mark applications, using the Madrid system.

These are managed by the World Intellectual Property Office (WIPO) and allow applicants to designate up to 130 countries. They are a cost-effective way of securing international protection and they are flexible, allowing applicants to pick and choose countries of interest and even add countries later. They also provide applicants with the option of covering off the EU with a single designation, meaning that they are another option to consider for EU protection on a budget. That said, one of the biggest risks with this option is cost escalation given that, if your application is opposed in any designated jurisdiction, you will need to instruct a local trade mark attorney.  

There are arguments for and against each option and the best route for your business will depend on your budget, key markets, and growth strategy as well as any third-party trade marks in your jurisdictions of interest.

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks across the globe. You file a single international trade mark application and pay one set of fees to apply for protection in up to 131 countries. It enables you to modify, renew and/or expand your trademark portfolio through one centralized system.

Unfortunately, it’s not available to everyone. In order to utilise the system, you need to: (i) have a national trademark in a country which is a Madrid signatory from which to launch your international application; and (ii) be able to demonstrate that you have “real and effective commercial/industrial establishment” in that country – it’s not enough to have a client base or a shell entity, you have to prove an operational presence. 

Hong Kong cannot currently access the Madrid system, creating a headache for Hong Kong based companies with no international footprint.

Before doing anything, seek legal support. In some countries threatening third parties with trade mark infringement action can land you in hot water if, ultimately it turns out that your claim was without grounds. Trade mark ownership and infringement isn’t always clear cut, and you need to be sure that you have your ducks in a row before taking action.

In jurisdictions like Hong Kong and Singapore, whoever first uses a trade mark has the right to use it, but that isn’t always the case. In China, for instance, the person or organisation who registers the trade mark first has the right to use it. First to file jurisdictions, like China, are high risk and should be prioritised when it comes to trademark filings.

No, it’s only the start! Once you’ve obtained trade mark registration, be sure to do the following:

• Review your business strategy regularly to make sure that your trade marks are sufficient – do they cover all of your goods and services? Do you have protection in all of your key and target markets? Is your trade mark for your current logo/name?

• Monitor third party use of identical or similar trade marks (trade mark watch services are highly recommended and readily available)

• Ensure that you can demonstrate use of your trade mark in the various jurisdictions.

• Comply with all renewal deadlines etc.

• Educate staff so that they can identify as well as avoid trade mark infringement.

This will depend on several factors such as the size of the portfolio, changes to the company’s structure and scale of growth. For companies with larger portfolios and aggressive growth plans, every 6-12 months is recommended.

Registered trade marks should be sought in current and target markets (i.e. where are you operating now and where do you intend to operate in the next 3-5 years).

"™"denotes an unregistered trade mark, whereas the ® sign denotes a registered trade mark. In most countries, it is a criminal offence to use the ® sign if you do not have a trade mark registration.