First off, it must be emphasized that getting trademark registration approval in Hong Kong doesn’t automatically mean protection in other jurisdictions, not even in the People’s Republic of China despite Hong Kong’s administrative status. Trademark holders should then adopt the necessary strategies to protect their trademark rights both in and outside of Hong Kong, and here are a few suggestions.
Hong Kong is a member of the World Trade Organization (WTO) and its trademark laws are in accordance with the Paris Convention treaty. These facts are the trademark holder’s first line of defense, so to speak, in protecting his rights against infringement in other countries and territories outside of Hong Kong.
What does this mean? Basically, the trademark holder has the right to claim priority in other WTO member countries, said claim of which can be filed within six months after the filing of an application for Hong Kong trademark registration. The claim priority should be made within the same or similar category of products or services.
The WTO member countries include the United States, the United Kingdom, China, Canada, Australia, India, Ireland, Oman, Japan, Philippines, and the member countries of the European Union. In effect, you have protection in many, if not most, countries of the world where your trademark may be used for commercial (i.e., profitable) purposes.
Since the claim priority policies and process can be overwhelming considering the number of factors that should be considered, trademark holders and applicants are well-advised to hire an experienced trademark agent. The agent will handle the legal and technical matters, which are aplenty, that involves claim priority, among other trademark-related matters.
Check that the trademark is, indeed, clearly different from other trademarks used in the same or similar class of products and/or services. The clearly distinguishable trademark provides protection in two ways: first, it cannot be infringed on by others; and second, it will not infringe on trademarks already owned by others.
Keep in mind that individuals and groups can be made liable for trademark infringement even in cases of different products or services. For as long as the two trademarks seem the same, then there’s likely to be reasonable cause for trademark infringement.
Register in China, Too
If registering the Hong Kong trademark doesn’t provide protection in China, then the same rule applies to trademarks registered in China – these trademarks aren’t protected in Hong Kong, too. The bottom line: Even if it means added expense and effort, register the trademark in both Hong Kong and China, as well as in other countries where it will be used.
Be sure to register the trademark in English in its Chinese characters so that it can be used locally. The trademark in Chinese can either be a full translation or a transliteration. This is necessary to complement the original trademark and to provide it with a wide protection and appeal, especially in Hong Kong and China where both the English and Chinese languages are used.
CtR Intellectual Property Co.
Hong Kong Patent Application Grant Authorised Patent Agent
Offering Professional Patent and Trademark Application & Related Services