Overview of the trademark system in Hong Kong

After filing the reply, both the opponent and the applicant will be given an opportunity to submit evidence (submit affidavits and materials to support their claims). First, the opponent submits a statement (evidence), in response to which the applicant submits rebuttal evidence, and if necessary, the petitioner submits further rebuttal evidence. Once the evidence period has been completed, the Intellectual Property Office will appoint a date and time for a hearing. During the hearing, both parties make oral arguments and counterarguments (the attorney makes a presentation in a courtroom style), and the hearing officer makes a decision after the hearing. The criteria for determining an objection is mainly whether the trademark falls under the grounds for refusal of registration (absolute grounds or relative grounds) under the Trademark Ordinance. The hearing officer's decision will be notified in writing, and the prevailing party will usually be ordered to pay a portion of the litigation costs (reimbursement of costs).

If the applicant loses the trademark will not be registered. Conversely,if the petitioner loses, the trademark will proceed directly to registration. Parties who are dissatisfied with the objection decision can appeal to the high court. Unlike Japan's opposition system (post-registration opposition), Hong Kong's opposition procedure is a system in which third-party opinions are solicitedbeforeregistration. In practice, there are not many oppositions in Hong Kong, and most trademarks are registered without opposition (there is a tendency for there to be fewer oppositions from a cost-effective perspective).

Registration (issuance of registration certificate)

If no opposition is filed after the publication period, or if an opposition is filed but the applicant ultimately wins, the trademark becomesRegistered. The Registrar will enter the trade mark in theRegisterand issue an officialCertificate of Registration**. The registration certificate will be issued electronically in the application language (English or Chinese) (you can also receive it on paper if you wish), and the fact of registration will be announced again in the official gazette.

Trademark rights in Hong Kong arise from the filing date. In other words, a registered trademark right becomes effective retroactively to the filing date, so even if someone else uses the trademark between application and registration, after registration, the trademark can be subject to an injunction or claim for damages retroactively to the filing date. This point is similar to Japan.

Once trademark registration is completed, the contents recorded in the register (trademark, right holder, designated goods/services, etc.) will be made public, allowing third parties to confirm who owns what trademark rights. The right holder obtains an exclusive right for the designated product or service with respect to the registered trademark, and has the legal authority to request an injunction against unauthorized use or claim compensation for damages (details will be described later). In addition, if the project goes smoothly, it may take about 6 months from application to registration. On average, it takes9 to 12 months, and longer if any review responses or objections arise.

3. Registration costs and period

5. Relationship with international applications (Madrid Protocol) and availability

• Current situation (as of 2025): Hong Kong is not currently a member of the international trademark application system under the Madrid Protocol. Therefore, the only way for Japanese companies to obtain trademark protection in Hong Kong is tofile a domestic application directly in Hong Kong. For example, even if you file an international registration application (Madrid application) in Japan, you cannot currently include Hong Kong as a designated country, and even if you designate Mainland China as Madrid, it will not have effect on Hong Kong (Hong Kong is treated as an independent customs territory/jurisdiction separate from China). This is because Hong Kong is not an independent WIPO member territory (it is part of China), but as a special case, the obligations of the Paris Convention and the TRIPS Agreement are applied through China. As part of this, the Hong Kong government has been considering participation in the Madrid System for a long time regarding the international trademark system.

• Moves to introduce the Madrid System: The Hong Kong Special Administrative Region government is proceeding with legal and practical preparations for the application of the Madrid Protocol to Hong Kong. After public comment was held once in 2014, the Trademarks (Amendment) Ordinance 2020 was gazetted on June 19, 2020, creating a framework for implementing the Madrid Protocol. This revised ordinance grants the authority to formulate rules and establish a system regarding international trademark registration, and to date:

  • Preparation of practical rules: Detailed rules and procedural rules for handling international applications (document format, fees, processing period, etc.) are being prepared.

  • Electronic system support: A dedicated IT system is being developed to receive and process Madrid applications.

  • Coordination with the central government: With the approval of the Chinese central government, a process is underway to notify WIPO of the application of the Madrid Protocol in Hong Kong (as Hong Kong itself cannot become a party, this will take the form of an extension by China).

  According to the government announcement, the goal is to be operational in Hong Kong by 2025. In other words, it is expected that it will be possible to designate Hong Kong via Madrid as early as 2025. If realized, Hong Kong will become a member of the Madrid System, which includes more than 100 countries and regions around the world, and it will be much easier to obtain and manage trademark protection in Hong Kong.

• Usage expectations after the introduction of Madrid: If Hong Kong becomes able to be designated under the Madrid Protocol, there are several advantages and points to keep in mind for Japanese companies and patent attorneys.

  1. Bullet application including Hong Kong: When filing a Madrid international application based on a Japanese basic application/registration, Hong Kong can be included in the designated countries in the future. Previously, separate applications were required for mainland China and Hong Kong, but now a single international application will cover both. However, since mainland China and Hong Kong have separate examination bodies, examinations and rejection decisions are made independently in each country.

  2. International applications originating from Hong Kong: Hong Kong trademark owners (such as companies with a physical presence in Hong Kong) will now be able to file Madrid international applications using Hong Kong as their Office of Origin. For local companies looking to expand their brands overseas from Hong Kong, joining Madrid is expected to have significant benefits in terms of cost reduction and simplified procedures.

  3. Procedures after designation: Even if Hong Kong is designated in an international registration, the Hong Kong Intellectual Property Office will carry out the examination as usual. Protection will be granted if no notification of refusal is filed within the examination period (within 18 months from the date of international registration). Similar to traditional domestic applications, responses to reasons for refusal must be handled through a local agent. Post-registration oppositions and cancellation trials will also be held as usual. Even if it is an international registration, the rights and effects granted in Hong Kong are the same as those obtained by filing a domestic application.

  4. Cost: If you are transiting through Madrid and specifying Hong Kong, you will have to pay an individual fee (set amount for Hong Kong) to WIPO. The Hong Kong government is expected to announce the fee amount at the time of application, but it is expected that the amount will generally reflect the current level of domestic filing fees. In any case, the benefits of central management through international registration will outweigh the separate filing of applications in multiple countries.

• Current response: As mentioned above, the use of Madrid in Hong Kong is approaching, but as of 2025 it is not yet available. Therefore, if a Japanese company has an urgent need to file an application in Hong Kong, it should do so directly without waiting. On the other hand, if you are planning to develop your brand after the second half of 2025 and have plenty of time, you may consider waiting for the start of the Madrid System before filing an international application. It is important to regularly check announcements from the Hong Kong Intellectual Property Office and WIPO for the latest information, and to formulate an appropriate application strategy in time for the start of the system.

6. Enforcement of trademark rights (infringement response, injunction, compensation for damages)

• Civil Remedies (Infringement Lawsuits): If a trademark right is infringed in Hong Kong, the rights holder can seek redress through civil lawsuits. Trademark infringement refers to the act of using a trademark that is identical or confusingly similar to a registered trademark to the extent that it is identical or similar to the goods or services designated by the registered trademark without permission. When infringement is suspected, rights holders often first send an injunction warning letter, but if a voluntary suspension is not obtained, they will file an infringement lawsuit in the High Court.

  If a trademark infringement is found in a lawsuit, a Hong Kong court will issue relief orders as follows:

  • Injunction: A court order ordering the defendant (infringer) to stop infringing activities. If the infringement continues, a provisional disposition (temporary injunction) may be issued promptly. If the lawsuit is ultimately successful, a permanent injunction (permanent injunction) will be issued, prohibiting future infringing activities.

  • Damages: Orders the infringer to pay compensation for economic losses suffered as a result of the infringement. To prove the amount of damages, it is necessary to calculate and show the decrease in sales due to the infringement, the amount equivalent to license fees, etc. Although punitive damages are generally not available in Hong Kong, significant damages may be awarded for egregious infringements.

  • Account of Profits: A remedy that allows the infringer to transfer all or part of the profits earned from the infringing act to the right holder in lieu of damages. The court will choose between damages and an account of profits, whichever is more appropriate depending on the case. Although the rights holder cannot obtain both at the same time, this option may be selected if the amount of profit is greater than the amount of damages.

  • Order for litigation costs: It is common for the winning right holder to receive reimbursement from the losing party for a portion of attorney's fees and court costs (because Hong Kong adopts the costs principle of the Anglo-American law system).

  • Other remedies: If necessary, we may issue an order for the destruction of infringing or counterfeit products, as well as an order to advertise future violations.

  In Hong Kong's court system, parties can choose either English or Chinese as the language of proceedings. Cases involving multinational companies are often conducted in English, and evidence can be submitted if English translations are available. The court has judges who are familiar with IP cases, and it is said that remedies for trademark infringement can be obtained relatively quickly and effectively.

• Criminal control (anti-counterfeit products): Among trademark infringements, the manufacture and sale of products with counterfeit trademarks (counterfeit products) can be a criminal offense in Hong Kong. The Hong Kong government's Customs and Excise Department (C&ED) is the agency responsible for criminal enforcement of trademark rights and copyrights, and carries out crackdowns on counterfeit products and border measures. For example, if there is a store that sells large quantities of counterfeits of famous brands, the customs office will obtain a search warrant based on the information provided by the rights holder, conduct a raid and seizure, and prosecute the violators. Penalties for discovered trademark law violations (such as violations of product description ordinances, etc.) can include large fines or prison sentences, which acts as a deterrent.

  Right holders can request (notify) customs to protect their trademarks. Hong Kong Customs also cooperates with overseas law enforcement agencies and rights holders, and is proactive in detecting international counterfeit products. As a member of the WTO's TRIPS Agreement, Hong Kong also has border enforcement obligations. Specifically, by registering your trademark with customs, there is a system in which suspicious cargo can be detained at the time of import/export. As Hong Kong is also a trading port, this border enforcement system helps to deter the distribution of counterfeit goods.

• Common law remedies (passing off): There is also a **passing off** remedy in Hong Kong. This means that any act that confuses customers by copying someone else's product or business display, regardless of whether it is registered or not, is considered an act of unfair competition and requires an injunction and compensation for damages. Even unregistered trademarks can be protected by Passing Off if they are well known in the Hong Kong market. Typically, this is used to preliminarily allege passing off in addition to trademark infringement for products that imitate the name or packaging of a well-known brand. If you win the case, the remedies are almost the same as those for trademark infringement, but since the burden of proof is heavy, it is usually advantageous to have a registered trademark.

[Supplement] When exercising trademark rights in Hong Kong, there are more compulsory means of collecting evidence (such as disclosure orders and Anton Piller orders) than in Japan. If necessary, it is also possible to apply to the court to seize evidence of infringement from the other party's facilities. In addition, violations of injunctions are subject to contempt of court, and sanctions can be imposed on individual managers, so the compliance rate for injunctions is said to be high. Overall, Hong Kong is a jurisdiction where it is easy to judicially enforce intellectual property rights, and when infringements occur, it is important to deal with them promptly from both civil and criminal perspectives.

7. System for invalidation trials, cancellation trials, etc.

Hong Kong also has asubsequent remedy for contesting the validity of or canceling the registration of a trademark after it has been granted registration. There is a system equivalent to Japan's "invalidation trial" and "cancellation trial," which allows a third party or government authority to take steps to invalidate or cancel a registration for certain reasons. These procedures involve first filing a complaint with the **Registrar of Trade Marks** of the Intellectual Property Office, and if you are dissatisfied with the decision, you can appeal to the High Court.

• Registration Invalidation (Declaration of Invalidity/Invalidation): If a registered trademark should not have been registered in the first place (= reasons for refusal were present at the time of registration but were overlooked, etc.), the registration can be retroactively invalidated by an invalidation trial (petition for declaration of invalidity). The holder of the right to file a claim only needs to be an interested party, typically a ``person who has an earlier application or earlier registered trademark,'' or ``an owner of a well-known indication.'' The grounds that can be asserted as grounds for invalidation are those stipulated in Article 53 of the Trademark Ordinance, which correspond to the grounds for absolute invalidity and grounds for relative invalidity in Japanese invalidation trials. Specifically:

  • Absolute grounds: The registered trademark lacked distinctiveness, was descriptive, or was otherwise contrary to public order and morals, etc. For example, this applies to cases where a trademark is only a geographical name with no distinctive characteristics, or where a general product name itself is registered.

  • Comparative reason: This is when the registered trademark conflicts with the prior rights of another person. A typical example is a case where a registered trademark is actually similar to another company's previously registered trademark and should have originally been rejected. Additionally, a fraudulent application (bad faith application) aimed at diluting another person's well-known trademark may also be a ground for invalidation.

  Annulment petitions must be filed on Form T6 and a filing fee of HK$800 will be charged for each petition. The petition shall state the reasons for invalidity and the facts in detail, and attach evidence if necessary. The respondent (registered trademark owner) may file a counter-statement to defend the claim within six months of receiving the notice. If you do not respond, there is a high possibility that your application will be declared invalid. If there is a response, both the petitioner and the respondent will be given an opportunity to submit evidence and make counterarguments, and the matter will ultimately be heard and decided by the hearing officer.

  Time limit for grounds for invalidation: Of the grounds for invalidity, relative grounds (conflict with another's prior rights) must be filed within a certain period. Hong Kong law, like the EU, has a provision for ``acquiescence'' based on non-enforcement, which means that under certain conditions, a prior right holder may not be able to claim invalidity for a registered trademark that has been used peacefully for five years or more. Specifically, this applies to cases where the prior right holder was aware of the existence of a similar trademark that was registered later and allowed its use for more than five years. However, trademarks registered in bad faith or trademarks that violate public order and morals can be invalidated regardless of the passage of time. In addition, claims for invalidity based on absolute grounds (e.g. excessive descriptiveness) can be filed at any time without any time limit.

  If a petition for invalidation is granted, the trademark registration will be treated as invalidated retroactively to the first day (date of filing). In other words, the situation is the same as if the right never existed in the first place, and the right holder loses the exclusive rights and the right to seek an injunction.

• Revocation of registration: This is a system equivalent to Revocation trial, and is applied when a registered trademark is subject to cancellation due to circumstances that occurred after registration. The main reasons for cancellation are as follows.

  1. Cancellation for non-use: As mentioned above, if a registered trademark has not been used in Hong Kong for three consecutive years, a third party can request the cancellation of the trademark registration. This non-use cancellation is the most typical case, where the requester files a petition for cancellation (Form T6) with the Trademark Registry Office, stating the fact of non-use. The filing fee is HK$800. The requested party (trademark right holder) must submit a written response within six months of the notification, and indicate the actual use history or justifiable reasons for non-use. The fact of use is proven through sales materials, advertising materials, shipping records, etc. If there is no response or there is insufficient evidence, the trademark will be canceled in whole or in part (cancellation of some designated products is also possible). If cancellation is approved, the trademark right will expire from the date of the decision (there will be no retroactive effect).

  2. Changing a trademark to a common name: If a trademark becomes a common name (common name) for the product, it is also grounds for cancellation. For example, a registered trademark may become established among consumers as a word that refers to a specific product itself, and it no longer functions as an identifying mark. This is caused by the trademark owner's inaction (failure to properly manage the brand, etc.), but a third party can also apply for cancellation in this case.

  3. Misidentification or deterioration of quality due to use: A registered trademark can also be canceled if the way the trademark is used poses a risk of deceiving the public about the quality or origin of the product or service, or if it violates the conditions at the time of registration. For example, this may be the case where a certification mark is intended to guarantee quality, but is not managed properly and is used on inferior products.

  4. Cancellation of defensive marks: Defensive marks may be canceled if the mark is no longer well-known. A defensive mark can be maintained even if it is not used, but it is understood that it can be revoked if a third party points out that it has lost its reputation.

  The procedure for filing a petition for cancellation, including cancellation for non-use, is almost the same as for filing a petition for invalidation.It is done using Form T6, the fee is HK$800, and the right holder has six months to respond and contest. Trials and decisions are also carried out within the Trademark Registration Office. If cancellation is approved, the subject trademark registration will no longer be effective in the future (it was valid before the decision date, but will cease to exist afterward). The decision can be appealed (appealed to the High Court).

• Other procedures: In addition to the above, there are also various post-registration management procedures such as Rectification and division/transfer of registration. Rectification (correction of registration) can be applied for when there are errors in the registration record or when changes need to be made to the registered contents. For example, typographical errors in the registrant's address can usually be easily corrected by filing a notification, but corrections related to the scope of rights may lead to disputes with interested parties. In addition, systems are in place for right division (dividing a single registration into categories), partial cancellation (waiving rights for part of designated goods and services), and right transfer/license registration (transfer to a third party or registration of a license agreement). These are procedures to be notified and applied for by the right holder, and if necessary, the prescribed forms (T5/T10/T11, etc.) are submitted to the Intellectual Property Office. For example, when assigning (transferring rights) a trademark, it is necessary to notify the change of registered owner and have it reflected in the registry.

As mentioned above, in Hong Kong, there is a system in place to clear trademarks after they have been registered, which prevents the possession of rights without justifiable reasons and the rights from becoming mere tokens. The concept is similar to Japan's trial system, but the difference is that the trial is first completed within the scope of the administrative agency (intellectual property office), and the court is involved as an appellate court. In practice, actions are taken such as using cancellation of non-use when a competitor's dormant trademark becomes an obstacle, or considering filing an invalidation petition when a trademark registration that closely resembles the company's brand exists. As with oppositions, information on invalidation and cancellation decisions is also published in the Intellectual Property Office's official bulletin and official website. Since there is an accumulation of case law and precedents, experts are required to develop appropriate strategies depending on the case.

8. Practical points to keep in mind (examination trends, prior use, language, etc.)

When applying for a trademark and exercising rights in Hong Kong, it is a good idea to keep the following points in mind.

• Examination standards/trends: In the examination of Hong Kong trademark registration,strict checks are carried out in terms of both absolute requirements (distinctiveness, etc.) and relative requirements (conflict with prior trademarks). In particular, it has been pointed out that examiners are more strict about descriptive trademarks than in Japan when it comes to absolute requirements. For example, it is difficult to register words or phrases that simply express the quality, efficacy, use, place of origin, etc. of goods or services, idioms used on a daily basis in the industry, simple shapes, or common marks. On the other hand, coined words or combinations of arbitrary words are relatively suitable for registration. In addition, in Hong Kong, similarity is determined at the examination stage, so it is necessary to thoroughly investigate and obtain clearance from competitors' trademarks before filing. The Intellectual Property Office provides an online trademark database that anyone can search for free. You may also want to consider using an expert investigation or an official preliminary investigation service (obtaining a registrability opinion using Form T1).

• Protection of unregistered trademarks (prior user rights): As mentioned above, legal protection may be granted in Hong Kong even if the trademark is unregistered if goodwill through use has been built. This is particularly the law ofpassing off, which allows a business that has previously used a trademark to establish well-known presence among its customer base to request that others who have registered the same or similar trademarks exercise their rights or cancel their registrations. Therefore, Japanese companies considering expansion into Hong Kong must always be careful that their brands are not being used locally by third parties without permission. Additionally, if your company has an unregistered brand that has been used in the Hong Kong market for many years, it is important to file early to secure official rights. Hong Kong has a first-to-file system, but as mentioned above, there may be some protection based on prior use, so a strategy to prevent disputes by filing early is recommended. In the unlikely event that someone else has registered your product first, you may be able to get it back by filing a petition for invalidation without giving up, but in that case, you will need a lot of evidence to prove that it has been used in the Hong Kong market and is widely known.

• Local representation of language and trademarks: Hong Kong is a society where English and Chinese (traditional) are the official languages. Although trademark applications can be filed in either English or Chinese, it is essential to consider Chinese names from the perspective of promoting local brand penetration. Hong Kong consumers often refer to Western and Japanese brands using their own kanji names, such as ``Canon'' being ``Kainong'' and MUJI being ``Muji Ryohin'' (Mupin Youhin). If a Japanese company does not prepare an official kanji trademark, agencies and media may name it on their own. If this happens, there is a risk that the kanji name will be applied for and registered by a third party. Therefore, it is safe to register not only the English name but also the corresponding Chinese name as a trademark. When applying for a Chinese character trademark in Hong Kong, please note that it must be registered in traditional characters (registration in simplified characters, as in mainland China, is rather unnatural). The examiner will consider a wide range of aspects, including pronunciation and conceptual aspects, regarding the similarity between English trademarks and Kanji trademarks. especially famous merchantsTranslations and adaptations of marks may be considered similar. For example, if you apply for a trademark for "LION," it may be cited as having a similar concept to an existing trademark that corresponds to "lion" in Chinese. Because of these points to keep in mind that are unique to a bilingual environment, it is advisable to consider translations and synonyms into the local language when planning your application strategy.

• Other practical points:

  • Use of multi-class applications: In Hong Kong, multiple classes can be specified in one application. It is highly cost-effective as related products and services can be acquired together. However, specifying too wide a range of classes increases the risk of non-use and cancellation, so it is best to narrow it down to the range you plan to use in the future.

  • Series trademark: There is a series trademark system that allows trademarks with similar variations to be filed together. For example, logos in different colors or slogans that simply change the word order can be registered as a series. Series-registered trademarks are permitted when the differences in their constituent elements are minimal. This is a system that does not exist in Japan, so please consider making effective use of it.

  • Defensive Marks: The aforementioneddefensive mark system is worth keeping in mind as a brand extension strategy. If you have a trademark that is well-known in the Hong Kong market, you can prevent other companies from registering the trademark in a different field by registering it as a defensive mark even for classes that are not currently in use. However, the requirements for obtaining a defensive mark are strict, and it is necessary to prove the famousness of the trademark in question. Additionally, there is a risk that the certificate will be revoked if its reputation deteriorates, so professional judgment is required when acquiring and maintaining the certificate.

  • Electronic filing and electronic certification: The Hong Kong Intellectual Property Office is highly digitized and supports online filing and electronic notification. From 2024, electronic registration certificates will also be issued. If you register as a user, you can track the progress of your application online, making it efficient to actively utilize the latest technology.

  • Differences with other regions: Hong Kong, mainland China, and Macau each have different trademark systems. For example, in mainland China, although it is common that relative requirements are considered during examination, the procedures are different, such as the criteria for determining similarity of designated products (using similar group codes) and the timing of filing an opposition (in China, there are two stages: before and after registration). Macau has a single-class application system, and Portuguese and Chinese are the official languages. When formulating a strategy for filing in Hong Kong, please align it with your trademark strategy in other regions, and consider acquiring rights in each region as necessary.

  • Countermeasures against trademark blockers: Compared to mainland China, Hong Kong has less problems with trademark blockers (trademark preemptors), but it is not completely non-existent. For Japanese brands that are particularly well-known in mainland China, there are cases where third parties have speculatively filed applications in Hong Kong and Macau. Regarding the rights status of your company's trademark in Hong Kong, just as in mainland China, it is important to apply early and regularly monitor the rights status of your company's trademark in Hong Kong to avoid creating any blind spots in your rights. Even if the application is filed and registered by a third party, there is a possibility that it can be removed by proving bad faith or non-use, but it is best to prevent it because litigation costs and time will be required.

In the above, we have explained the main points about Hong Kong's trademark system based on official information from the Hong Kong Intellectual Property Office. Under One Country, Two Systems, Hong Kong maintains an intellectual property environment that is different from that of mainland China, and its legal system also follows a framework derived from the United Kingdom. Therefore, there are parts that are common to Japan and mainland China, and parts that are unique. When Japanese companies develop trademark strategies in Hong Kong, we recommend that they keep the above points in mind and collaborate with local intellectual property experts as necessary.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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