A trade mark, patent or design registered in mainland China does not provide protection in Hong Kong or Macau. If you want protection in these territories, you will need to register your IP rights in these territories.
Trade mark registration in Hong Kong and Macau are each separate from mainland China. At present, neither territory are members of the Madrid system, although Hong Kong is anticipated to join the Madrid system in the near future. As such, if you want trade mark protection in these territories, you will need to apply for trade mark registration directly.
These territories both allow you to claim priority from your Australian trade mark application provided you file within six months of the date on which the trade mark was first filed in Australia. You do not have to make a priority claim, and you can file an application directly at any time.
Like mainland China, Hong Kong and Macau provide an opposition period of three months from the acceptance and advertisement of the trade mark. Trade marks can be cancelled for non-use if they have not been used for a period of three years. Hong Kong provides a trade mark registration term of 10 years, and Macau provides 7 years. Trade mark registrations can be renewed indefinitely.
The Hong Kong IP department has more information on trade marks available in English at their website https://www.ipd.gov.hk/eng/trademarks.htm and their trade mark search system is available at https://esearch.ipd.gov.hk/nis-pos-view/tm#/tmSearch
Patents and designs
More information on patents is available from the Hong Kong Intellectual Property Department at https://www.ipd.gov.hk/eng/applicants/patents.htm
A Hong Kong patent right can sometimes be a useful addition to an IP portfolio. Many businesses have registered companies in Hong Kong that hold financial assets, which can make it a useful forum for patent litigation.
Hong Kong operates a re-registration patent system. Applications can be filed in English or Chinese. Applicants should be aware of several important deadlines, set out below.
The grant of a standard patent is based on the prior grant of a corresponding patent by any one of three designated patent offices:
- the China National Intellectual Property Administration (CNIPA);
- the United Kingdom Intellectual Property Office (UKIPO);
- the European Patent Office (EPO), with respect to a granted patent designating the United Kingdom.
A Hong Kong standard patent has a two-stage application process.
In the first stage, the applicant files a request to designate a pending patent application filed with CNIPA, the UKIPO or the EPO. This can be a PCT national phase application. The request must be filed within six months of the publication of the designated patent application.
In the second stage, after the designated patent application has been granted, the applicant can request registration and grant in Hong Kong. The request must be filed within six months of the grant of the designated patent application.
The term of the Hong Kong standard patent is 20 years from the filing date of the designated application.
Hong Kong also provides a short-term patent, which provides protection for a maximum of 8 years. The novelty and inventive step requirements are the same as standard patents. Applications are made directly to the Hong Kong Intellectual Property Department. A short-term patent requires a search report prepared by a PCT International Search Authority, such as IP Australia or CNIPA. A short-term patent application may include only one independent claim.
Hong Kong protects designs for a maximum of 25 years from the filing date.
A design application for Hong Kong can claim a priority date based on an Australian application if you file the Hong Kong application within six months of the filing date of the first application.
A grace period provides that exhibiting a design at an official international exhibition will not destroy its novelty if the Hong Kong application is filed within six months of the opening of the exhibition. It is preferable not to rely on grace periods as your disclosure may risk falling outside these limited circumstances.
Macau has both invention patents, with a maximum term of 20 years, and utility model patents, with a maximum of 10 years.
There are two ways to obtain a patent in Macau – through a direct patent application, or by re-registration of a patent granted by CNIPA or the EPO. A request for re-registration must be made within 3 months of grant.
In order to claim an earlier priority date, direct applications must be filed in Macau within 12 months of the filing date of the corresponding application.
Macau protects designs for a maximum of 25 years from the filing date.
A design application for Macau can claim a priority date based on an Australian application if you file the Macau application within six months of the first application.
Engaging a patent attorney
IP Australia’s Engaging an attorney toolkit sets out everything you need to know about engaging an attorney for your patent application.
IP rights registered in mainland China do not provide protection in Hong Kong. If you want to enforce trade marks, patents and designs in Hong Kong, you will need to register them in Hong Kong.
Like Australia, Hong Kong does not operate a copyright registry. To enforce copyright, the owner must show evidence of their ownership of the copyright. A mainland Chinese copyright registration may be used as evidence for enforcement in Hong Kong.
A local lawyer can advise you on the enforcement options available to you and the most appropriate strategy for your situation, be it cease and desist letters, civil action in the courts, or enforcement by the Hong Kong Customs and Excise Department.
IP owners can bring civil cases for IP infringement in Hong Kong’s courts. Courts can issue injunctions, award damages, and order other actions.
Criminal and Customs enforcement
In addition to customs enforcement, the Hong Kong Customs and Excise Department is responsible for criminal enforcement of trade marks and copyright throughout the entire territory of Hong Kong. With powers similar to a police force, they are able to investigate counterfeit goods or other infringement, make arrests, and prosecute offenders.
Hong Kong Customs can seize trade mark or copyright-infringing goods entering or leaving Hong Kong’s borders. Note however that the goods must be unloaded, reloaded or the shipment modified in some way in order for them to take action. They are unable to take action against goods that are transiting through Hong Kong.
IP owners can record their rights with Hong Kong Customs by providing evidence of their IP right (trade mark or copyright), and details of the alleged infringement. For best results, IP owners should be proactive about monitoring for infringement and passing information to Hong Kong Customs to action. IP owners should be responsive, and consider appointing a local agent or representative to act as a contact point for Customs officers.
More information is available from Hong Kong Customs website at https://www.customs.gov.hk/en/enforcement/ipr_protection/index.html