The new trademark Ordinance (559th) (hereinafter referred to as the "new Ordinance") will take effect on April 4, 2003, bringing a series of substantive and procedural changes to Hong Kong's trademark legislation and practices.
Although the early in June 15, 2000 has been approved by the legislature, but new legislation has not been implemented, largely because the government has been studying computer system a set of processing electronic registration at the same time, the government also needs to prepare a new "trademark rules" (hereinafter referred to as the "new rules"), the rules will also be with the new regulations come into effect on April 4, 2003.
Although the government has amended the Trade Marks Ordinance (forty-third chapter) (hereinafter referred to as the old regulations), it complies with the international standards for the protection of intellectual property rights as set out in the agreement on trade related aspects of intellectual property rights. However, there are still many bureaucratic barriers and other restrictions in the law.
The new regulations have put a new veil on the trademark registration system in Hongkong. The new ordinance aims to enhance the protection of registered trademarks and to simplify and improve the existing registration system. The changes include reduced fees, to provide multi class applications, the abolition of trademark register division, of A and B for the valid registration and implementation of electronic commerce matters set standards, expand the scope of protection of well-known trademark, and adopted a broader definition of trademark and trademark infringement.
In addition to the introduction of new legislation, the intellectual property department will continue to be based on the information technology outsourcing plans to provide electronic services to the public, the new plan for the great transformation of the intellectual property department staff, they are now available through electronic processing of application for trademark registration. Intellectual property department at the end of January 2003 launched online access to trademark records service is free to the public service, web search network for the Hongkong trademark. In the past, the new online search system was undoubtedly an important development if we had to go to the intellectual property department before consulting the trade mark record. In 2004, the Department will further introduce other new services, including the selection of electronic submissions, payment of application fees and liaison with the intellectual property department.
Another important development is the intellectual property department will open more chapters in the manual manual draft, will become a registered trademark in the review work and procedures, and other procedures in the new regulations guide. The workbook will be revised at any time to comply with the development of the rules of law. The manual was originally just a reference to the director and other personnel of the intellectual property department, but from now on, this manual will provide very useful data to practitioners and the public.
Several major changes brought about by the new law will be further discussed below.
Registration of trademarks
No record book is divided into two parts
Under the old Ordinance, the records can be divided into departments A and B, so two different standards are applied for the registration of trademarks. Trademarks considered as "significant" or "goods appropriate for identification" with goods and services of other sellers are included in the register A. With any significant mark one or more categories of trademarks will be qualified registered in the A department. If a trademark is not sufficient to have the significance in respect of the A department, but the goods and services of other sellers "can identify", the trademark is still qualified to register in the B department.
The new ordinance gave up the practice of eliminating the division of the A and B by the trademark register and effectively adopting the old standards of the B department as a standard for the validation of a trademark.
Definition of trademark
"Trademark" means any mark that can identify the goods or services of an enterprise with the goods or services of other enterprises, and (two) can be written or drawn. Although the Ordinance does not define what is meant by "signs", the purpose is to extensively interpret the word, which will include everything that can function as a trademark in the marketplace.
The old Ordinance requires that markings must include visual markings, but not invisible markings such as sound and smell. The new ordinance states that trademarks may be made up of any combination of colors, sounds, smells, or any of these markings. A single color can be registered as a trademark, provided that the tag must have the ability to recognize. A shape (i.e., a solid) mark that can be identified; may be registered under the old Ordinance if subject to certain restrictions. Although it is possible to register trademarks of sounds and smells, the applicant must carefully consider the provisions on the presentation of such markings by drawing (see below).
Suppose that a sign can be expressed by drawing, then, as stated above, the remaining question is whether the mark "can identify with other goods or services". According to the work manual, the standard of verification is: does the logo enable anyone to identify all the goods with this mark from the same enterprise? In other words, can the logo indicate the origin of the goods or services? If the answer is yes, the logo will be a trademark, and the intellectual property department will consider further handling the registration request.
Presumption of registration
The new ordinance provides that the Registrar must accept the application if the application for a registered trademark appears to have met the requirements of the registration. Although the consultation document in 1993 had anticipated this development, the corresponding provisions in the British legislation had been considered too vague. No statutory presumption of support or opposition to trademarks has been entered into by the laws of the United Kingdom