[Patent Attorney Commentary] Complete coverage of Hong Kong's trademark system | Are Chinese trademarks not protected? Can I use Madpro? Registration procedures and smart filing strategies

Introduction: "Fatal misunderstanding" in Hong Kong business

Hong Kong is Asia's financial and logistics hub and also serves as a gateway to mainland China. It remains an extremely important market for Japanese companies, either as a foothold for overseas expansion or as a headquarters for the ASEAN region.

However, many Japanese companies that are considering expanding into Hong Kong or have already started doing business with them often have a certain ``fatal misunderstanding'' regarding their IP strategy.

• "Since it is trademarked in mainland China, it will be protected in Hong Kong as well."

• "It's okay because we specified China in the Madrid Protocol"

If your company's management and legal staff think this way, your brand is "unrighted (defenseless)" in the Hong Kong market.

Hong Kong is a special administrative region of China, but under the "one country, two systems" principle, it has a completely independent jurisdiction regarding intellectual property rights. Businesses are developed without knowing this fact, and there is no end to problems such as counterfeit products being sold locally or malicious third parties having their trademarks pre-empted (misappropriated applications).

In this article, a patent attorney who is well-versed in overseas trademark practice will provide a detailed explanation of the structure of Hong Kong's unique trademark system, its decisive differences from mainland China, the practical flow of applications, and the cost-effective application strategies that Japanese companies should take.

1. Basic principles of Hong Kong trademark system: "China" is completely different

First, I will explain the most important principles in understanding Hong Kong's trademark system. The point is that ``Hong Kong and mainland China have the same relationship as 'foreign countries' with respect to intellectual property.''

1-1. Territorialism and independent legal system

Intellectual property rights such as trademark rights have the principle of "territoriality," which means that rights are established independently in each country.

Hong Kong maintains a system based on "common law", the legal system from the British colonial era, and its legal system itself is different from mainland China, which has a civil law system (written law).

Therefore, you must keep the following diagram in mind.

• Registration with the China Trademark Office (CNIPA) → Not valid in Hong Kong

• Registration with the Hong Kong Intellectual Property Department (IPD) → Not valid in mainland China

This means that if you do business in both mainland China and Hong Kong, it is mandatory to file separate trademark applications for each.

1-2. Adoption of first-to-file system

Like Japan and mainland China, Hong Kong also adopts the "first-to-file" system.

Hong Kong is a common law region, so even if an unregistered trademark has goodwill built up through years of use, there is scope for it to be protected by the tort doctrine of "passing off."

However, proving this passing off requires a huge amount of evidence, litigation costs, and a long period of time. In practice, "Filing an application as soon as possible and obtaining rights as a registered trademark" is the lowest cost and surest means of hedging risk.

2. The biggest caveat: "Madpro" cannot be used in Hong Kong

When Japanese companies acquire trademark rights overseas, they generally use the "International Registration Application Based on the Madrid Protocol (commonly known as MadPro)" through WIPO (World Intellectual Property Organization). This is an extremely convenient system that can reduce administrative costs because multiple countries can be specified in one procedure.

However, this is the biggest pitfall of Hong Kong trademarks.

Currently, Hong Kong cannot be designated as a party to the Madrid Protocol.

"Since China is a member country of MadPro, wouldn't Hong Kong also be included if China is designated?"

I often get asked this question, and the answer is no. Even if you designate "China (CN)" in your MadPro application, its effect is limited to mainland China and does not extend to Hong Kong (and Macau).

The Hong Kong government is preparing to revise the law in preparation for the future introduction of MadPro, but the timing for the start of practical implementation has not yet been determined.

Therefore, at present, the only and surest way to obtain rights in Hong Kong is to apply directly to the Hong Kong Intellectual Property Department (IPD) (Paris route).

3. Details of the Hong Kong trademark system: Features that practitioners should know

We will summarize the specific features of the system that you should be aware of when proceeding with direct application to Hong Kong.

3-1. Adoption of international classification (Nice classification)

Hong Kong has adopted the international "Nice Classification" for the classification of goods and services (Class 1 to Class 45). Since the classification standards are the same as in Japan, it is possible to consider the scope of the application based on the Japanese trademark registration certificate.

However, regarding the specific notation of designated products, it is preferable to use the standard notation recommended by Hong Kong IPD, and care must be taken as ambiguous expressions are likely to be subject to reasons for refusal.

3-2. Language handling (traditional Chinese vs. simplified Chinese)

The application language is "English"or"Chinese". What is important here is the type of kanji.

• Mainstream in Hong Kong: Traditional Chinese/Example: "廣"

• Mainstream in Mainland China: Simplified Chinese/Example: "广"

In trademark examination, traditional and simplified characters tend to be treated as similar, but from the perspective of branding to local consumers, recording in "traditional characters" is extremely important.

If a Japanese company operates in Hong Kong with simplified characters (for mainland China), there is a risk that it will give local consumers the wrong impression that it is a mainland Chinese brand, and that the brand image will not take hold.

Basically, the best strategy is to apply for two patterns: "Alphabet (English)" and "Traditional Chinese."

3-3. Hong Kong's unique "Series of Trade Marks"

Hong Kong has a very advantageous system that Japan and China do not have. That is the "series trademark".

This is a system where "Multiple trademarks that are substantially similar and differ only in minor elements (color, font, etc.) that do not affect distinctiveness" can be filed together in one application (up to 4 trademarks).

[Usage example]

• Trademark A: Black and white logo mark

• Trademark B: Color logo mark

• Trademark C: Traditional Chinese logo (*only if the designs are very similar)

If these can be recognized as a "series", multiple variations can be registered for one application fee (plus a small additional fee). This is a technique you should definitely take advantage of, as it allows you to expand the scope of your rights while keeping costs down.