What should I do before applying for a Hong Kong trademark?
When an applicant wants to apply for a trademark in Hong Kong, is there anything that needs to be prepared in advance?
First of all, when a trademark applicant has designed his own trademark pattern or text, they can do a preliminary search at the Hong Kong Intellectual Property Department (Better still, during the design of the trademark, a search of registered trademarks has been started to avoid wasting time to design) to check whether the trademark they want to apply for whether or not it has been registered.
This reduces the chance of the application being rejected (relative grounds) by the examiner.
Important: Hong Kong trademark applications are subject to cross-searching
The following is an example of a preliminary search that can be used for reference:-
A report has been made by searching the trademark registry database - Hong Kong Intellectual Property Department (HKIPD) and references from HKIPD:
Date: 11 June 2022
Time: 09:00 p.m.
In the first part, we need to check whether the deemed trademark is identical or similar to the pre-existing trademark (relative grounds).
In Hong Kong, since the examiner will search and cross-search for classes, it could be more advantageous to search the word in respective classes.
(Class 25 Cross search classes : 35, 40, 42; Class 27 Cross search class : 37)
When examining a registration application, the examiner needs to search for the same or similar earlier registered trademark and the examining trademark in the database of the Hong Kong Intellectual Property Department. The Trademark Office of the Hong Kong Intellectual Property Department will conduct a cross-search, which in principle lists the classes they usually search for specific goods or services to help them identify prior trademarks for the same or similar goods or services. Therefore, the search also includes classes 25, 35, 40, 42, and 27, 37.
Since the relative grounds mean that the applied-for goods or services are identical or similar to the goods or services for which the earlier trademark is protected, the pre-search strategies for the trademark related to the goods or services must include similar goods or services of these similar classes. (Classes 25, 35, 40, 42, and 27, 37)
In the second part, we need to examine the meaning of the mark, whether it is distinctive, etc. (absolute grounds).
Meaning of ABC: No meaning was found according to Collins English Dictionary (Absolute grounds)
This search was divided into two parts:
Word Part & Figurative part
- Word Part:
Search for Trade Mark text contains abc:-
Search for Class 25, cross-search classes 35, 40, 42: No result was found
Search for Class 27, cross-search class 37: No result was found
- Figurative Part:
Search for Trade Mark text is ‘b’ And Classes 25, 35, 40, 42, 27, 37 And Live records.
100 records were found.
For the figurative part, we have searched the letter ‘ abc’ and cross-searched similar marks in respect of different classes.
According to Section 12(2) and (3):-
If the trademark for which registration is applied is "identical" to the "earlier trademark", but the goods or services are only similar to the goods or services for which the earlier trademark is protected, then only if the use of the earlier trademark is related to the applying trademark. Goods are likely to cause confusion among the public.
The same test of "likely to cause confusion to the public" applies to goods or services where the later mark is only "similar" to the earlier mark and the goods or services are "identical or similar" to the earlier mark.
Generally, it is required to check all 100 records of the above search while the below marks seem to be similar to our figurative part (with the same class description).
However, the marks are to be compared as a whole and based on the overall impression given by the marks, in particular, their distinctive and dominant components. Therefore, our mark contains words and figurative parts as a whole. The examiner will judge whether the whole part is the same or similar to the trademark we applied for, and will approve the examination or reject the application.
The above search is not an official search, you are recommended to Request the search of records or Request preliminary advice on registrability from HKIPD. (Request the official search and advice via T1 application form)