Before registering a Hong Kong trademark, there is actually a lot of homework that we need to do, such as understanding relevant laws and regulations, knowing the entire application process and required materials, and so on. Only by gaining sufficient knowledge before applying can one be more adept and the process smoother.

Registering a trademark is a property right obtained through borrowing relevant laws and registration regulations. The owner of a registered trademark has the rights stipulated in relevant regulations and is entitled to the remedies provided for in this regulation. In the process of trademark application, rejection of registration is also a common occurrence, and the reason for this is that many applicants do not have sufficient understanding of the relevant regulations.

There are three reasons for refusing to register a Hong Kong trademark:The situation where absolute reasons, relative reasons, and honesty are used simultaneouslyBelow, we will provide a detailed introduction to the relevant regulations.

1Absolute reasons for refusing registration

(1) Except as otherwise provided in paragraph (2), the following trademarks shall not be registered:

(a) Signs that do not comply with the provisions of Article 3 (1) (Definition of Trademark);

(b) Trademarks lacking distinctive features;

(c) A trademark consisting purely of signs that can be used in an industry or business to indicate the type, quality, quantity, intended use, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods or services;

(d) A trademark consisting purely of symbols that have become customary in the current language or in the honesty and established practices of the relevant industry.

(2) If any trademark already has significant characteristics due to its use before the registration application date, registration of the trademark shall not be refused by virtue of paragraph (1) (b), (c) or (d).

(3) Any mark that is purely composed of the following shapes shall not be registered as a trademark for goods:

(a) The shape generated by the nature of the product itself;

(b) The shape of the product required to achieve a certain technological achievement;

(c) The shape that endows the product with significant value.

(4) If any trademark:

(a) Violating widely accepted moral principles;

(b) If it is likely to deceive the public, the trademark cannot be registered.

(5) For example:

(a) Any trademark is prohibited from being used in Hong Kong under or by virtue of any law;

(b) If the registration application for any trademark is made in bad faith, the trademark shall not be registered or registered to the extent that it is prohibited from use or the registration application is made in bad faith, as the case may be.

(6) If any trademark is composed of or contains the following items, the trademark shall not be registered or registered within the scope of its composition of or containing the following items:

(a) National flag or its design style;

(ab) National anthem; (Added by Article 13 of 2020 No. 2);

(b) The national emblem or its design style;

(c) District flag or its design style;

(d) District emblem or its design style.

(7) Any trademark that falls under the circumstances specified in Article 64 (national emblem, etc.) or Article 65 (emblem of certain international organizations, etc.) shall not be registered.

(8) If the registration application is made for certain goods or services and the reason for refusing registration only exists for a certain part of those goods or services, then the refusal only applies to that part of the goods or services.

(9) As for clause (6):

The meanings of regional flag and regional emblem are the same as those in the Regulations on Regional Flag and Regional Emblem (No. 117 of 1997);

The meanings of the national flag and national emblem are the same as those in the National Flag and National Emblem Regulations (No. 116 of 1997); (Revised by Article 13 of 2020 No. 2);

The national anthem refers to the national anthem, its lyrics, and music score as defined in the National Anthem Regulations (No. 2 of 2020) and expanded by Article 8 of the regulations. (Added by Article 13 of 2020 No. 2).

IIRelative reasons for refusing registration

(1) Trademarks that meet the following conditions shall not be registered:

(a) The trademark is identical to a prior trademark;

(b) The registration application for this trademark is filed for certain goods or services (the former), while the prior trademark is protected for certain goods or services (the latter), and the former is the same as the latter.

(2) Trademarks that meet the following conditions shall not be registered:

(a) The trademark is identical to a prior trademark;

(b) The registration application for this trademark is for certain goods or services (the former), while the prior trademark is protected for certain goods or services (the latter), and the former is similar to the latter;

(c) The use of the trademark in relation to such goods or services is likely to cause confusion among the public.

(3) Trademarks that meet the following conditions shall not be registered:

(a) The trademark is similar to a prior trademark;

(b) The registration application for this trademark is filed for certain goods or services (the former), while the prior trademark is protected for certain goods or services (the latter), and the former is the same or similar to the latter;

(c) The use of the trademark in relation to such goods or services is likely to cause confusion among the public.

(4) Subject to the provisions of paragraph (6), any trademark that is identical or similar to a prior trademark (a subsequent trademark) shall not be registered if:

(a) The prior trademark is entitled to protection as a well-known trademark under the Paris Convention;

(b) Using the later trademark without proper justification would result in unfair exploitation or damage to the distinctive features or reputation of the earlier trademark. (Replaced by Article 6 of 2020 No. 3).

(5) Subject to the provisions of paragraph (6), if any trademark is used in Hong Kong:

(a) To prevent the use of unregistered trademarks or other marks in the business process or operation by any legal rules (especially by virtue of laws on counterfeiting);

(b) If a trademark is prevented by any prior right (excluding those referred to in paragraph (a) or paragraphs (1) to (4)) (especially by law relating to copyright or registered design), the trademark shall not be registered or registered to the extent that it can be prevented, and any person who has the right to prevent the use of a trademark as a result shall be referred to as the owner of a prior right in relation to the trademark in this Regulation.

(6) Unless the owner of a prior trademark or other prior right raises an objection based on any of the reasons mentioned in paragraphs (4) and (5) in the legal proceedings against registration under Article 44 (Legal proceedings against registration), the registration of the relevant trademark shall not be refused on such grounds. (Revised by Article 6 of 2020 No. 3)

(7) If the registration application is made for certain goods or services and the reason for refusing registration only exists for a certain part of those goods or services, then the refusal only applies to that part of the goods or services.

(8) If the owner of a prior trademark or other prior right agrees to the registration of the relevant trademark, this provision does not prevent the registration of the trademark.

IIIThe situation where honesty is used simultaneously

(1) Where the director or court is satisfied that:

(a) The situation where a certain trademark and related prior trademarks or other prior rights have been honestly used simultaneously;

(b) If it is appropriate to register a trademark due to other special circumstances, Article 12 (Relative Reasons for Refusal of Registration) does not prevent the registration of the trademark.

(2) The registration of a trademark under or by virtue of paragraph (1) shall be subject to such restrictions and conditions as the Director or the court deems appropriate to impose.

(3) This provision does not prevent the Director from refusing to register a trademark based on any of the reasons stated in Article 11 (Absolute Reasons for Refusal to Register).

Source: Hong Kong Intellectual Property Department Document "Trademark Ordinance" (Chapter 559)

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