A trade mark is any mark (such as a logo) which is capable of distinguishing the goods or services of one trader from those of another.
A trade mark may or may not be registered. If it is registered under the Trade Marks Ordinance, it is referred to as a "registered trademark". Registration entitles the owner to enjoy the protection conferred by the Ordinance. If a trade mark is not registered in Hong Kong, it will not be protected under the Ordinance in Hong Kong, even if it has been registered in other countries. An unregistered trade mark is only protected under common law against the action of passing off.
What things may constitute a trade mark?
With reference to the Trade Marks Ordinance, a trade mark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, the shape of goods or their packing, and even sounds and smells. This provision allows a broader range of marks to be trade marks than that permitted under the previous law, which forbade sounds and smells to be trade marks. However, you must note that under the Ordinance, a trade mark must be capable of being represented graphically, i.e., by way of writing, drawing, musical notation, written description or any combination thereof. Thus unless a sound or smell can be clearly described by drawing or any written description, it cannot be registered as a trade mark.
What is the registration procedure of registering a trade mark?
Registration of a trade mark under the Trade Marks Ordinance is obtained by applying to the Registrar of Trade Marks, who is the Director of Intellectual Property. The trade mark must satisfy the basic requirements of being capable of distinguishing the goods or services of the applicant from those of other traders, and capable of being represented graphically. Furthermore, the trade mark must not be objectionable on the following grounds:
- the trade mark is descriptive of the goods or services in question, such as its quality, intended purpose, value, geographical origin or other characteristics of the goods or services;
- the trade mark has become customary in the current language or in the established practices of the trade;
- the trade mark is likely to deceive the public;
- the trade mark is identical to, or similar to, another trade mark which has already been registered, or for which an application for registration has already been made, in respect of identical or similar goods or services; or
- the trade mark is identical or similar to a well-known trade mark.
If the relevant trade mark under application falls within any of the above categories, the application may be refused by the Registrar.
An application for a trade mark registration must specify the list of good or services in respect of which registration is sought, and the class(es) in which the goods or services fall. If the application is successful, the trade mark will be registered in the name of the applicant.
Registration of trade mark is a complicated process. You are recommended to hire a lawyer or an expert in this field to handle the registration process and related matters.
A patent is a type of property right which gives the patentee (i.e. the patent owner) a monopoly to make, sell, use, import, or otherwise exploit his patented invention for a fixed period of time. Unlike a copyright, a patent does not arise automatically but has to be applied for. In addition, patent rights are territorial. To enjoy patent protection for an invention in Hong Kong , one must apply for and obtain a patent for the invention in Hong Kong . This is so even if a patent has been obtained for an invention in other countries.
The statute governing patent protection in Hong Kong is the Patents Ordinance (Cap. 514 of the Laws of Hong Kong). There are two types of patent that can be granted under the Ordinance:
- a "standard patent", which provides protection for a maximum term of 20 years; and
- a "short-term patent", which provides protection for a maximum term of 8 years.
What is the registration procedure of making an application for a patent?
Apart from the difference in the duration of protection provided by the standard patent and the short-term patent, there is a difference in the application procedure for the two types of patent. A standard patent is obtained by registering with the Registrar of Patents in Hong Kong (who is the Director of Intellectual Property) a patent granted by a "designated patent office" overseas. Currently, there are three designated patent offices under the Ordinance: the State Intellectual Property Office of China, the United Kingdom Patent Office, and the European Patent Office (with the patent application designating the United Kingdom).
If, for example, an invention is made in Australia and the inventor applies for and receives a patent in Mainland China (in addition to Australia ), the inventor still has to apply for a separate patent in Hong Kong in order for the patent to be enforceable in Hong Kong.
In short, to apply for a standard patent in Hong Kong (with a maximum term of protection of 20 years), one must first apply for a Chinese patent or a United Kingdom patent. If a Chinese patent or a United Kingdom patent is granted, the patent owner can register it as a standard patent in Hong Kong and thereby enjoy the protection conferred by the Patents Ordinance in Hong Kong.
In contrast, a short-term patent (with a maximum term of protection for 8 years) can be obtained by direct application to the Registrar of Patents in Hong Kong without having to rely on any prior patent granted elsewhere.Thus, a short-term patent can be obtained much more quickly than a standard patent. A short-term patent is most suitable for short-term products which, by their nature, can only be adequately protected if a patent can be obtained quickly.
A patent is granted in return for full disclosure of the details of the invention in question. Thus when applying for a patent, whether it is a standard or a short-term patent, you must provide a sufficiently clear and complete disclosure of the invention in the application. If this requirement is not met, the application will be rejected. Furthermore, for a patent to be granted, the invention must satisfy three main requirements:
- The invention is susceptible to industrial application. That is, it can be made or used in any kind of industry.
- The invention is new. This generally means that the invention was not known to anyone anywhere in the world before the patent application was filed.
- The invention involves an inventive step (novelty). This generally means that at the time the patent application was filed, the invention was not obvious.
Applying for a patent requires careful drafting of the patent application. Poor drafting may result in a business loss or litigation with other patent owners. Although it is not a legal requirement, you are strongly advised to employ a patent agent or a lawyer to help you write the patent specification, and to communicate with the relevant patent office on your behalf. This is particularly so if you wish to apply for a patent overseas (which is a necessary prior step for obtaining a standard patent in Hong Kong). For more details on patent applications in Hong Kong , please go to the website of the Intellectual Property Department.