Frequently Asked Questions  (For Hong Kong practices only)

• What is trade mark?
  

  In accordance with Section 3 of Trade Marks Ordinance,
  
  (1)a “trade mark” means any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically.
  
  (2)"Without affecting the generality of subsection (1), a trade mark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging and any combination of such signs.
  

• Could the trade mark, patent and design registrations in Mainland China be extended in Hong Kong？

  Because of the one country two systems political institution between Mainland China and Hong Kong, the trade mark, patent and designed registered in Mainland China could not be protected in Hong Kong.  The owner should file new applications in Hong Kong separately.  It is the same as to Macau.
  

• Why should trade mark be registered？

  If the trademark is registered, other parties could not be registered identical or similar marks on the relevant goods or services unless some special conditions are fullfilled.  In addition, the rights of the registered mark would be protected by the relevant ordinance.  The cost for registration of a trade mark could be calculated and estimated, however, the risk for not to register the mark is unlimited.
  

• Could the trade mark application be filed in too many Class？

  In accordance with Rule 7 (4) of Trade Marks Rules,
  
  If the trade mark is proposed to be registered in respect of all the goods or services in a particular class, or in respect of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use the applicant has made of the trade mark or by the use he intends to make of the trade mark if it is registered.
  
  In this situation, evidence to prove that the applicant has used or intended to use the mark on the applied for goods or services is required. 
  

• Is it necessary to use the trade mark after it is registered?

  In Hong Kong, an application is filed on the condition that the trade mark is being used by the applicant or with his consent in relation to the applied for goods or services, or the applicant honestly intends to use the trade mark, or allows it to be used, in relation to those goods or services.  However, there is no requirement stated in the Trade Marks Ordinance that the mark must be immediately used after it is registered.  
  
  However, Section 52(2) of Trade Marks Ordinance provides that “The registration of a trade mark may be revoked on any of the following grounds, namely— (a) that the trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark);” That is, if the mark is not genuinely used in Hong Kong after it is registered for three years, there is a risk that other party might file revocation application against to the mark on the ground of non-use.
  

• Could a trade mark registration be put in the records of Customs in Hong Kong?

  Unlike  Mainland China, there is no such recordal procedure in the Customs Department of Hong Kong. The customs proceed the trade mark infrigement cases through the complaint from the public and their internal investigation.
  

• Could the same invention be registered twice with the Patents Registry?

  In accordance with Section 92 of Patents Ordinace,
  
  The court may on the application of any person by order revoke a patent for an invention on (but only on) any of the following grounds, that is to say—
  (f)that the patent is one of 2 standard patents for the same invention, the applications for which were filed by the same person and have the same deemed date of filing;
  (g)that the patent is one of 2 short-term patents for the same invention, the applications for which were filed by the same person and have the same date of filing
  
  In this regard, it is possible for the same invention be registered as two patents with the Patent Registry, however, there is a risk that the relevant patent might be revoked by other party.
  

• Could the term of an expired standard patent be extended?

  No. The 20 years term could not be extended.
  
  For European Patents, the term of a granted patent may be extended if national law provies term extension to compensate for pre-marketing regulatory approval. However, the extension is not applicable in Hong Kong. 
  

• What would be the consequence of a not timely patent assignment recording in the Patents Registry?

  In accordance with Section 87 of Patents Ordinance,
  
  Where a person becomes the proprietor or one of the proprietors or an
  exclusive licensee of a patent by virtue of a transaction, instrument or
  event to which section 52 applies, then unless-
  (a)    an application for registration of the prescribed particulars
  of the transaction, instrument or event is made before the end of the
  period of 6 months beginning with its date; or
  (b)    the court is satisfied that it was not practicable for such an
  application to be made before the end of that period and that an
  application was made as soon as practicable thereafter,
  he is not entitled to damages or an account of profits in respect of any
  infringement of the patent occurring after the date of the transaction,
  instrument or event and before the prescribed particulars of the
  transaction, instrument or event are registered.
  
  Accordingly, there is a risk the damages before the assignment is recorded in the Patents Registry that might not be claimed, provided that the assignment application is not filed within six months from the assignment effective date in case the infrighment is raised. 
  

• Is software patentable？ 

  In accordance with Section 93 of Patents Ordinance,
  
  The following in particular shall not be regarded as inventions within the meaning of subsection (1)—
  (c ) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;”.
  In this regard, software could not be regarded as inventions and therefor not patentable.
  
  However, patent protection may be available for software related inventions that are not merely comuputer programes and the recordal of a standard patent is based on the designated patent, i.e. EP (designated GB), GB or CN patent. Accordingly, even if the designated patent is related to software in some extent, it is still possible for the patent to be registered in Hong Kong. In the European Patent Office and United Kingdom Patent Office, software is patentable if it is a computer-related invention that produces a 'further technical effect'. Essentially, software that merely automates a process that was previously done mentally or manually is not patentable. But if the software solves a technical problem it is patentable. 
  

• Could the publication of a design application be deferred in Hong Kong? 

  There is no deferment policy for the publication of design applications in Hong Kong.  That is, the design application could not be deferred by filing request with the Designs Registry.  
  
  If the applicant would like to defer the publication, it is possible to delay the procedure in some extent by filing strategies. . 
  

• What is the language of trade mark, patent and design applications in Hong Kong?
  

  In Hong Kong, both Chinese and English are official languages.  The applications could be filed either in Chinese or English.  Please be noted that the language of proceeding of the case would be the same as the filing language.
  

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