Trademark

Validity and renewal of trademark registrations in Hong Kong

A registered trademark is valid for ten years from the filing date and is renewable for further periods of 10 years, and can last indefinitely, with a payment of renewal fee. Trademarks in Hong Kong may be renewed within six months immediately before the expiry of the validity term, and not six months after its expiry.

Renewal takes effect from the date of expiry.

For example:

Date of registration: 8 June 2002

Date of expiry: 7 June 2012

If renewed for another 10 years, the next expiry date is 7 June 2022 (assuming all the above dates are working days)

Late renewal within 6 months after expiry is still possible on the payment of a late renewal fee. Failure to renew within 6 months after expiry results in the removal of the trademark from the register. A request for restoration and renewal must be made and the applicable fee for restoration and renewal shall be paid within 6 months after the date of removal.

User requirement

A trademark in Hong Kong will be cancelled if it has not been used for three consecutive years from the registration date.

Loss of protection provided by trademark registration       

The consequence of non-renewal of registered trademark is a loss of protection provided by trademark registration.

However, depending on the quality of the legal system in its jurisdiction, trademark registration will provide the protection normally attributable to them. But, for example in Hong Kong – as a common law jurisdiction, even unregistered trademarks may be protected by common law principle of passing-off if the original owner of the unregistered trademark can prove its good faith and reputation, and that the unauthorized use of the trademark may cause harm to the original owner. That said, actions of passing-off are often more difficult to initiate than actions of infringement of registered trademarks.

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