Did you know that in Hong Kong, registering a limited company name with the Companies Registrar won’t prevent others from registering the name as a trademark? 

According to a recently released survey conducted for the Intellectual Property Department, neither did 53.1% of the 1206 companies surveyed. 

The Companies Registrar has jurisdiction over registration of limited companies in Hong Kong.  The Inland Revenue Department’s Business Registration Office issues business registration certificates and the Trade Marks Registry of the Intellectual Property Department registers trademarks. These are all different agencies governed by different laws and regulations.  Thus, registration as a limited company or a registered business does not provide protection as a trademark. 

When reviewing an application for a new limited company, the Companies Registrar only searches its own databases to see if another limited company with the same or almost identical name is already registered or pending.  If not, the name will be registered as a limited company.  The Companies Registrar will not search the business registration or trademark database.  This is true even if the name is that of a well-known trademark.  And, there are reports that such well-known trademarks have been registered as Hong Kong limited companies without the authorization of the owners of the well-known marks.  A lawyer from the Companies Registrar said that under current laws and regulations, these companies have the right to be registered.

On the trademark side, Hong Kong, like China, is a ‘first to file’ jurisdiction.  This means that whoever files an application first can register the trademark even if the applicant has not used the mark at the time of filing. 

In the application process, a trademark examiner will check for a prior existing or similar mark in the department’s database.  If not, the proposed mark is published for public opposition.  Once the period is over and no opposition is filed, the mark will be registered and others are prevented from registering the mark in Hong Kong for the covered classes even if another is already using the mark without registration.  Addressing registration of another’s business or company name as a trademark, a lawyer with the Intellectual Property Department said that registration as a limited company or registered business is not ground for opposing registration of a proposed trademark. 

This is how a ‘first to file’ system works.  Another system is called the ‘first to use’ system where the first to use a trademark, not the first one to file it, may register the mark.  Under this system, in addition to the department database for prior existing marks, an examiner will check the media and on the Internet to see if the same or similar mark is already in use in commerce.  If so, the proposed mark will not be registered.

While neither a limited company nor a trademark holder may defeat registration of the other as a trademark or company name, respectively, if the registration is used in perpetuation of a fraud or other deceitful purpose, there may be a legal recourse in the court system to invalidate the registration based on fraud and deceit. 

The proverb ‘an ounce of prevention is worth a pound of cure’ comes to mind, but the current rigid system requires after the fact action to invalidate registration instead of outright rejection of registration.

So, what can a multi-national company do to protect itself?  Register, register, register.  If you are contemplating doing business in the region, it makes business sense to register your company name and brands here.  Otherwise, you may find that you have to buy your name from a squatter.  Fortunately, the cost of registering trademarks in Hong Kong is comparatively inexpensive and significantly fast when compared with most other jurisdictions.  Want to know more?  Email us at info@ProactiveAdvisoryGroup.com.