What should I do if I want to claim the foreign priority for the Hong Kong trademark application?
Updated: Jun 8, 2022
Applicants who have filed certain goods or services in a Paris Convention country may file an application in the Hong Kong Intellectual Property Department within six months for these goods or services to enjoy the right of foreign priority.
- it can claim (partial) priority or claim (full) priority
For the claimed priority, it may only claim some of the goods or services, it does not necessarily claim all of them. For example, the applicant could only claim the priority for one trademark out of a series of trademarks.
When submitting a trademark application in Hong Kong, in the section on priority (Part 8), you need to fill in the priority claim information.
For example, we have requested the priority of the United Kingdom, however, this trademark application in the United Kingdom does not have a 'pattern representation' of the trademark, it was expressed as 'WORD MARK' in 'text'.
Tips: Therefore, applicants of Hong Kong trademarks should pay attention. The application submitted abroad should be similar to the trademark pattern with the Hong Kong trademark application so that the priority can be claimed.
For example, the foreign trademark application has a color claim, or if the application in Hong Kong is filed in a different form, there is a chance that the foreign priority will not be successfully claimed.
In the last British example above, we can finally successfully claim the British priority and grant the certificate.
Tips: Applicants usually do not need to submit a copy or original of the priority document, but only need to fill in the relevant information, such as the country claiming priority, the application number, and the filing date.
IMPORTANT!: The importance of priority is to avoid applications that are identified as conflicting with earlier trademarks by the Hong Kong Intellectual Property Department due to a late filing date.
In other words, if the trademark applied for is considered to be identical or similar to the earlier trademark, and the goods and/or services applied for are identical/similar to the earlier trademark. Related trademarks also do not constitute opposition to your trademark, thus avoiding potential conflicts.
Step 1: When filing a Hong Kong trademark application, you need to prepare the foreign priority information in advance. Generally, no copy or original of priority is required, and there is no additional official fee for claiming priority, which can avoid potential conflicts of prior trademarks.
Step 2: Applicants should note the following:
1. Whether the Hong Kong trademark application is filed within six months of filing in the country claiming priority
2. Country claiming priority
3. Claim the priority application number
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