Hong Kong: Trade Marks (Amendment) Ordinance 2020 – changes to embrace and changes to beware of

July 2020

The Trade Marks (Amendment) Ordinance 2020 (the “Amendment Ordinance”) was gazetted on 19 June 2020 and most parts of the amendments come into operation immediately. The Amendment Ordinance amends the Trade Marks Ordinance (Cap. 559, Laws of Hong Kong) in several major respects:-

1  Enabling the application of the Madrid Protocol in Hong Kong

The amendment provides a basis in Hong Kong Law for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) in Hong Kong.

Following the enactment of the Amendment Ordinance, the Hong Kong Government will press ahead with relevant preparatory work for the implementation of the Madrid Protocol, including preparing subsidiary legislation to provide for the relevant procedural details, setting up a dedicated information technology system and obtaining the agreement of the Central People's Government to seek application of the Madrid Protocol to Hong Kong. Subject to the progress of this preparatory work, the Government aims to implement the Madrid Protocol in Hong Kong as soon as possible, hopefully by 2022 or 2023.

Therefore, the parts of the Amendment Ordinance concerning trade mark rights acquired in Hong Kong under the Madrid Protocol is not effective yet and will come into operation on a day to be appointed by the Secretary for Commercial and Economic Development of the Hong Kong Government.

2  Unifying the criminal enforcement powers with the Customs and Excise Department of Hong Kong

The Customs and Excise Department (“C&ED”) has been responsible for enforcing the criminal provisions of infringement of trade marks registered in Hong Kong under the Trade Descriptions Ordinance (Cap. 362, Laws of Hong Kong). However, enforcement of the offences of “falsification of the Trade Marks Register”, “falsely representing that a trade mark is registered” and “misuse of the title ‘Trade Marks Registry’” under the Trade Marks Ordinance has been the responsibility of the Hong Kong Police. The Amendment Ordinance brings the enforcement responsibility in respect of all offences relating to trade marks under the C&ED.

3  Miscellaneous amendments to enhance Hong Kong’s trade mark application and registration system

3.1    A corporate applicant will be required to provide information as to its place of incorporation or establishment for better identification of the applicant. Failure to do so at the time of filing of the trade mark application would constitute a deficiency in the application, which must be remedied within 2 months of receiving a deficiency notice from the Registrar of Trade Marks. If the deficiency is not remedied within the prescribed time, the trade mark application shall be deemed never to have been made.

3.2    Likewise, when filing application to register a registrable transaction relating to a trade mark registration or application, it will be necessary to provide the place of incorporation or establishment of the trade mark applicant, assignor, assignee, transferee, or person vested with rights in a trade mark or application by assent or by order of the Court, if that party is a corporation.

3.3    A trade mark application will not be accorded a filing date until the application fee is paid.

3.4    One change that encountered some controversy relates to section 46 of the Trade Marks Ordinance. The old s.46 provides that a trade mark applicant may apply to the Registrar to amend the mark under application by adding a representation of a registered trade mark (hereinafter referred to as the “prior registered mark”) he owns to the mark under application. This is often done by a trade mark applicant to enhance the distinctive character of his mark under application, or to increase the difference of his mark under application from a cited mark, so as to overcome registrability objections on absolute or relative grounds. When the government proposed to amend s.46 by adding a provision that the registered particulars of the prior registered mark added to the mark under application should be carried over to the amended mark, some practitioners had raised the issue as to whether or not a prior registered mark which was obtained by consent of the owner of an earlier trade mark (hereinafter referred to as “earlier mark owner”) could be added, and if so, whether there would be any mechanism to notify the earlier mark owner so that he has a chance to object or oppose. However, as practitioners’ views were diversified on the issue, the Amendment Ordinance was passed without special arrangement to deal with the situation where the prior registered mark added to a mark under application was obtained by consent of an earlier mark owner, and without any mechanism to alert the earlier mark owner that the prior registered mark, the registration of which he consented to, was used to populate new trade marks without his knowledge and consent. Given this situation, it would be advisable for trade mark owners to formulate new strategies to protect his rights when being asked to provide a letter of consent to the registration of a later mark.