Trademark - FAQ

Once a trademark is registered, you have the exclusive rights to your designated goods and/or services in that particular jurisdiction. The use of your trademark on identical or similar goods or services, without your consent may lead to trademark infringement, and you may take legal action against it.

Some shops, organizations, entities and/or e-commerce platforms also require you to provide trademark registration certificates to protect you and your clients.

A sign cannot be registered as trademark if any of these grounds is present: (a) devoid of any distinctive character, or (b) contrary to accepted principles of morality, or (c) likely to deceive the general public, or (d) filed in bad faith.

The use of the national flag, emblem or anthem, unauthorized use of words such as Red Cross (紅十字會), Heung Yee Kuk (鄉議局), Sheng Kung Hui (聖公會) and/or others as a trademark or an element of a trademark is not allowed.

Affirmative.

Trademark protection is territorial. Your HK registration will only grant protection in Hong Kong. If your business covers multiple jurisdictions such as China, Taiwan, Macau, the United States, Canada, the United Kingdom, and Australia, you need to register in each of these countries and/or regions separately.

We suggest to file the in the same manner as it is in practical use. That is to say, if you only use the trademark as a whole, you shall register it as a whole. If you use every component independently, then you need to register the individual elements one by one.

A wordmark is one where the trademark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or colour. Generally, you have greater flexibility in the use of fonts. However, please note that if you use an original font, or your mark has been changed significantly, you must re-file it.

Please provide us with your mark image(s) for further assessment. Generally speaking, “black and white covers all” works in the most of the IP offices. It will regard that the applicant does not claim/limit to specific colours and therefore renders more flexibility in practical use.

In jurisdictions such as China, Japan, South Korea, the United States, the European Union, etc., only one (1) mark image is allowed in one trademark application. Therefore, you must choose one among your variants.

Hong Kong, Singapore, and the United Kingdom accept serial trademark applications. Assuming that your colour combinations do not affect the distinctive elements of your mark, you may submit multiple versions of your mark in one application at no additional cost.

Please provide us with your mark image(s) for further assessment. Generally speaking, there is no need to file a new application if the identity of your mark remains unchanged. Nevertheless, if there are additions and/or deletions of content(s) and/or obvious change in your mark, you will need to file a new application.

You should inform the Trademark Registry for a change of company name and/or change of company address to ensure that the official records are up-to-date.

It is not surprising to hear this idea: a one-stop registration, with a low set of fees, can grant protection across the globe. Unfortunately, using whatever route of filing, if a mark is applied in one jurisdiction; under normal circumstances, when protection is granted, it will only be limited over there. If “global” protection is sought after, probably the applicant will have to settle application fees for each jurisdiction.

“Transparency” from our firm’s motto is the best term to describe our pricing. Price quoted in our online fee schedule are all-in fees inclusive of governmental fees, our service and disbursement charges and registration fees. If the case is smooth, you do not have to pay an extra penny apart from our quoted fees. The schedule can be viewed here (insert hyperlink: use HK for HK site; SG for SG site). As some jurisdictions offer slightly lower official fees, we also list out the costs for the additional Class after the first. Please do not hesitate to contact our consultants for a formal quotation without any service charges.

When the official receive your application, their examiner will check it and decide whether they need to object to your trade mark based on the criteria laid down in the Trade Marks Ordinance. Therefore there are a number of factors which you must consider before applying to register a trade mark. Listed below are some important points:

Does your trade mark stand out from the crowd? Does your trade mark, be it a logo, word, picture, etc. clearly set your goods and services apart from those of other traders? Examiner will object to the mark if they do not think it does.

If your trade mark describes the goods and services or shows the quality, purpose, quantity or value of them, then examiner is likely to object to the mark. Similarly we are likely to object to the use of geographical name in a mark. 

If your trade mark is a well known term or representation in your line of business examiner would object to it. For example “V8” for vehicle engines.

Has someone else already registered or applied to register the same or similar trade mark for the same or similar goods and services? If your trade mark looks or sounds the same or similar to another registered mark, or one that is being applied for, examiner will object to your mark.

It is important to conduct a search of the trade mark register to see if your trade mark is already registered or has been applied for by another trader.

The main steps in trademark registration include conducting a comprehensive trademark search, determining the relevant goods and services classes, filing the formal application, undergoing examination, passing the publication period, receiving the registration certificate, and carrying out ongoing monitoring and maintenance.

Insufficient pre-filing searches are one of the most common and avoidable mistakes, and may lead to opposition proceedings or costly rebranding.

The Nice Classification system divides goods and services into 45 classes, and applicants must choose the appropriate classes for registration based on their current and future product lines.

Businesses should continuously monitor trademark use and take measures such as takedown notices, customs recordation, and litigation when necessary to protect brand rights.

A trademark is a distinctive word, logo, slogan, or design used to identify and distinguish the source of a company’s goods or services, enhance brand recognition, and avoid market confusion.

Trademark rights generally require registration to obtain nationwide exclusive protection, and they can be renewed indefinitely with periodic renewals. Copyright arises automatically upon creation and typically lasts for the life of the author plus seventy years, without renewal.

A trademark application generally requires the trademark representation (such as a word mark, sound, logo, color, or a combination), applicant and agent information (name, address, identity card or certificate number), and a clear list of goods and services based on the Nice Classification.

Proof of use refers to evidence of actual trademark use that may need to be submitted, such as invoices, receipts, product packaging, advertising samples, website screenshots, and award records, to demonstrate the trademark’s real market presence and scale of use.