Common law or registration protection

When entering the local markets, many North American businesses are concerned about business issues such as finding reliable factories, sourcing, logistics, reps and agents, and other operational matters. They are concerned about import-export regulations, business registration, tax issues and other governmental requirements. Although protecting intellectual property rights is important, too often, IP protection take a backseat to these other pressing business.

Many recognize that Hong Kong has a strong common law tradition that offers protection of unregistered trademarks. So there is a sense of security that Hong Kong’s common law will protect their brands, even if they are not registered.

True, unregistered trademark holders may assert the claim of “passing off” a-against infringers. Passing off means someone is presenting or passing off their products as yours without your consent. But proving a ‘passing off’ claim may be difficult since the trademark owner must prove that it has established good will and a reputation in the Hong Kong market. For an international company relatively new to the area, this may be very difficult.

On the other hand, owner of a registered trademark in Hong Kong need not prove it has developed a local reputation. Registration grants monopoly power to prevent others from using the same or a similar mark on their competing products or services. And, you don’t even have to prove that your trademark is being used. (Of course, if the mark has not been used for a prolonged period, the trademark owner may lose his registration for non-use or abandonment.)

With a registered trademark, a business may also seek an injunction to stop others from using the identical or similar trademark covered by the registration. If the trademark is not registered, injunctive relief is almost impossible and only available for ‘well-known’ trademarks as defined by the Trade Marks Ordinance.

The return on investment is well worth the cost of registration.