Nice classification, 10th edition

Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks and smell marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks and defensive marks.

The application is filed at the Trademark Office.
Multiple-class applications are possible.
Foreign applicants need an address for service in Hong Kong.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 9 to 12 months. The first office action is taken after approx. 2 months.
Prior to registration, the trademark application is published in the “Hong Kong Intellectual Property Journal”.

National:
The opposition period is 3 months minus 1 day from the date of publication of the trademark application.

Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of Madrid Agreement or Madrid Protocol

A trademark registration is valid for 10 years from the date of application.
The registration is renewable for periods of 10 years.

If the trademark has not been used within 3 years from the actual date of registration or has later not been used for 3 years continuously, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.

The official fee is HKD 1.300 for the first class (approx. EUR 123.00) and HKD 650.00 (approx. EUR 61.00) for each additional class.

Trademark Licence Agreement
In Hong Kong a licence agreement has to be in writing. Licensing of unregistered marks is permitted. A trademark may be licensed with respect to some or all of the goods or services covered. There are exclusive and non-exclusive licences. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.

Recordal
There are provisions in law for the recordal of a licensee with the Trademark Office. The provisions are voluntary, but failure to record the particulars of a licence agreement may result in a loss of rights by the licensee. The time frame for a recordal is six months from the date of the licence agreement. If a licence is not recorded, the licensee is not entitled to damages or profits in respect of any infringements of the registered mark occurring after the date of the agreement and before the prescribed particulars of the agreement are registered. There is no prescribed form or content for the validity of a licence agreement. No further documents are required for a recordal.

Effectiveness
The licence agreement becomes effective and enforceable against third parties upon the application date for the entry of a registered user. The licence is not required to be published, but the particulars of the licence, as recorded, will be available in the online trademark database.

Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The licensee is entitled to call upon the registered proprietor to institute proceedings for infringement of the trademark unless otherwise provided for in the licence agreement. He may institute proceedings in his own name after one month’s notice, if the proprietor refuses or neglects to do so. The licensee is not required to cite the proprietor as co-defendant in any such proceedings.

Search type	First class	Add. class
Word Mark Search (availability)	230,00 €	180,00 €
Word Mark Search (identical)	140,00 €	30,00 €
Extended Search (word mark, company name, domain)	510,00 €	180,00 €
Device Mark Search (availability)	380,00 €	310,00 €
Trademark Owner Search	290,00 €
Company Name Search	340,00 €
Domain Name Search (extended)
i-Search (word mark availability + legal opinion)	350,00 €	250,00 €

The Prices above are S.M.D. Markeur Search Fees