Region: Hong Kong

3D shape mark held to be indistinctive

An application to register a three-dimensional shape mark for medical devices in Class 10 has been refused for being devoid of distinctive character. According to the principles of distinctiveness, in order to be distinctive enough for registration, a mark must offer a guarantee that the medical devices bearing the mark or the shape of the mark come from one specific undertaking.

03 April 2013

Does internet use qualify as trademark use?

The Trademarks Registry has issued a decision relating to revocation of the trademark WAVERLEY in Class 24 on the grounds of non-use. In the decision the registrar considered whether the online promotion of the owner’s products on its own website and other independent websites where the trademark appeared qualified as genuine use under the Trademarks Ordinance.

17 October 2012

Do you PAYEASE?

Following a registrability hearing, the Hong Kong trademarks registrar recently refused registration of the trademark PAYEASE for certain services in Classes 36 and 38. The registrar held that the mark was indistinct and consisted exclusively of a sign that designated the kind, quality, intended purpose or other characteristics of the services applied for.

26 September 2012

Coalition forces postponement of controversial copyright bill

The second reading of the Copyright (Amendment) Bill 2011 has been postponed following the submission of nearly 1,400 amendments to the bill by a political coalition. The public supports a full exemption for derivative works, while the government believes that, in general, a parody does not substitute the original work and thus causes no economic prejudice to the owner. How a balance will be struck remains to be seen.

08 August 2012

RICE PAPER too descriptive for paper-related and food products

The registrar of trademarks has refused an application to register the word mark RICE PAPER in a number of classes due to its descriptiveness and lack of distinctive character. The registrar held that the mark had failed to acquire enough distinctiveness to be identified by the relevant consumers as an indication of origin.

01 August 2012

Megaupload case and other internet piracy issues

The Megaupload website, which allowed users to download pirated films, music and other content, has been taken down. While Megaupload’s main servers were located in the United States, Megaupload Limited is incorporated in Hong Kong. Pursuant to the Mutual Legal Assistance in Criminal Matters Ordinance, Hong Kong Customs cooperated with the US Department of Justice in the action.

16 May 2012

WONDERFUL held to be laudatory

The trademark registrar has refused an application for registration of the mark WONDERFUL by Paramount International IP Holding Company for “processed nuts” in Class 29 for being descriptive and devoid of distinctive character. From the perspective of relevant consumers, the overall impression of the mark was of a laudatory and descriptive word describing the quality of the processed nuts.

28 March 2012

MARLBORO LIGHTS mark not liable to mislead public

In a recent decision the Trademark Registry of Hong Kong upheld registration of the MARLBORO LIGHTS trademark in respect of cigarettes in Class 34. The registrar was unable to reach the conclusion that the subject mark was misleading to the public as to the quality of the cigarettes sold at the material date based on the limited evidence submitted by the applicant.

29 February 2012

Registrar reclassifies goods following Nice changes

The 10th Edition of the Nice International Classification of Goods and Services came into force on 1st January 2012. The revisions and changes made by the new edition will affect the Trademarks Registry's cross-search list of identical or similar earlier registered trademarks and applications, used in the examination of new applications for registration in certain classes.

01 February 2012

Review of the patent system

Under the existing patent regime, two types of patent are granted: standard patents and short-term patents. As this system has been in place for more than 10 years, the government has carried out a public consultation seeking views on a review of the patent system.

18 January 2012

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