Hong Kong, special administrative region of China, geographically shares a land border with Mainland China. Despite this, under the “one-country, two-systems” principle, Hong Kong has a separate legal system from Mainland China. The Basic Law provides that Hong Kong should, on its own, develop appropriate policies and afford legal protection for IP rights. This post highlights some of the major differences in the trademark laws between Mainland China and Hong Kong because it is these differences that often cause problems.
First to Use vs. First to File
In Mainland China, the principle of first-to-file establishes that the right to the trademark belongs to the business whose trademark application has the earliest date of filing. The date of filing is important, not the date when the trademark was first used in commerce. On the contrary, Hong Kong adheres to the principle of first-to-use, which establishes that trademark rights accrue to the first business to use the mark in association with the sale of goods or services on the market. Unregistered or common law trademarks enjoy the legal rights to claim a trademark as compared to the filed or even registered trademarks.
To file a trademark application in Mainland China, it is vital to submit some documents, such as the certificate of corporate good standing, power of attorney and priority document if claiming priority. These important documents usually needs to be signed by the applicant or its representative. While in Hong Kong, NO document is required, even when claiming priority.
Goods and Services
China trademark classification system is based on the international NICE classification system and developed a sub-classification system for each of the 45 classes. Goods falling into the same subclasses are considered similar to each other. Likewise, goods falling in different subclasses are not considered similar. In Hong Kong, the sub-classification system does not apply although Nice Classification is also adopted. The examiner usually considers 6 factors, for example, the nature and composition, the trade channels and the users, to judge whether the goods or services are identical or similar.
Furthermore, an additional fee will be charged for items more than 10 in Mainland China. But in Hong Kong an application fee has included all the fees no matter how many the items.
Timeframe of Registration
If the application is straightforward, CNIPA is usually able to register the mark around 8 to 12 months from the date of filing. In Hong Kong, the whole application process can take as little as 7 months from receipt of application to registration.
Period of Validity
In both Mainland China and Hong Kong, the period of validity for a registered trademark is 10 years. As China is a first-to-file country, the owner of a registered trademark gains exclusive rights starting from the day the registration is granted. In contrast, a trademark registration in Hong Kong takes effect from the date of filing once it is approved.
Examination of Opposition
CNIPA will examine the grounds of opposition by discretion, even if the applicant did not file any response against the opponent. It means, the opponent may fail in an opposition case without any action from the applicant. However, in Hong Kong, if an applicant did not file a counter-statement to a notice of opposition, his application will be deemed as withdrawn automatically.
In comparison of Mainland China, it is more efficient and convenient for brand owners to register their brands in Hong Kong. Considering the unique trademark practice in Hong Kong and the fact that more and more squatters are registering foreign brands, foreign brand owners should plan their filings immediately and secure registration for their brands in Hong Kong as soon as possible.
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