In “Applying for Trade Mark Protection in Multiple Jurisdictions: the Madrid System” Part I and Part II, we introduced the international registration of trademarks and the outcome of the three-month consultation exercise on the proposed application of the proposed application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) conducted in November 2014.

The Intellectual Property Department of Hong Kong (the “IPD”) conducted a further briefing section to apprise stakeholders on the proposed introduction of the Trade Marks (Amendment) Bill (the “Bill”) on 15 December 2017.

Trade Marks (Amendment) Bill

The purpose of introducing the Bill is:

1. to enable application of the Madrid Protocol to Hong Kong;
2. to introduce miscellaneous amendments to align the Trade Marks Ordinance (“TMO”) with the latest international standards and the interpretation of the IPD as supported by current judicial decisions; and
3. to specify that the enforcement responsibility in respect of criminal provisions under TMO rests with the Customs and Excise Department (“C&ED”).

Legislative proposals for applying the Madrid Protocol

To facilitate the adoption of the international registration system under the Madrid Protocol, the following amendments are proposed in order to align the practice and procedures for examining domestic applications and international applications designating Hong Kong:-

1. To expand the definition of “earlier trade mark” under section 5(1)(a) of the TMO to cover international registrations designating Hong Kong for the purpose of considering priorities for registration.
2. To extend the time period within which an applicant for registration is required to respond to the IPD’s objections raised in respect of potential citation(s) under section 42 of the TMO.
3. To introduce a new empowering provision for making rules giving effect to the implementation of the Madrid Protocol.

Proposals for aligning the law & its interpretation

The following miscellaneous amendments are proposed to align the law with the IPD’s established practice:-

1. To put beyond doubt that the protection afforded cover ALL goods and services, rather than just those “which are not identical or similar”, reference to the goods and services which are “not identical or similar” will be deleted under sections 12(4) (relative grounds for refusal of registration) and 18(4) (Infringement of registered trade mark) of the TMO.
2. Under the current section 46(2) of the TMO, adding a representation of a registered house mark to a trademark application may be allowed if the earlier registered house mark covers registered goods/services which are identical or similar goods and services applied for in a later application. To bring into line of IPD’s established practice, amendment of an application will only be permitted when the goods or services applied for is “identical to or narrower than” the goods or services covered by the house mark.

Update the law to maintain the registration system at international standard

Several minor amendments are proposed to maintain the local system in line with international standard:-

1. A corporate applicant will be required to supply information regarding its place of incorporation for better identification of the applicant and amendment under section 38 of the TMO is being considered. Non-compliance would constitute a deficiency in the trademark application, but would not affect the filing date of the same.
2. Full payment of filing fees will be a pre-requisite for obtaining a filing date and section 39 of the TMO in relation to the filing date will need to be amended accordingly.

Proposed new provisions for enforcement responsibility

The Hong Kong Police Force is currently the law enforcement agency for criminal offences under the TMO, while intellectual property offences under the Copyright Ordinance, Prevention of Copyright Piracy Ordinance and Trade Descriptions Ordinance are enforced by the C&ED. It is proposed that the TMO be amended to better align enforcement responsibility and make it self-contained in the TMO.

It is further proposed to grant general powers to C&ED officers including those to:

1. enter and search premises under the authority of a warrant issued by a magistrate (except when the delay necessary to obtain a warrant could result in the loss or destruction of evidence; or when it would not be reasonably practicable to obtain a warrant);
2. seize goods and inspect documents;
3. arrest and search any person whom a C&ED officer may reasonably suspect of having committed an offence under the TMO; and
4. forfeit and dispose of articles upon a receipt of a court order.

The IPD is preparing the Bill and aims to table the same to the Legislative Council in June 2018. If the preparatory work runs smoothly, the Bill will be adopted in the 4th quartile in 2018.

Conclusion

The above proposed amendments are most welcome for enhancing the development of the local trademark system. We are expecting that guidance notes and manuals will be revised and updated soon. Stay tuned on further updates of the implementation details of the Madrid Protocol in Hong Kong as this will have an impact on strategy for protecting your trademark portfolio.

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This article is written by ONC Lawyers and was first published on ONC’s website.

This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.