For a long time, brand owners wishing to secure registered trade mark rights in Hong Kong have had to do so by obtaining registrations through the Hong Kong Trade Marks Registry. Even though China is a contracting party to the Madrid Agreement and Madrid Protocol (which allows for international registration of trade marks through the Madrid System), these international treaties do not apply to Hong Kong.
Some of the issues concerning the implementation of the Madrid System in Hong Kong are:
- Hong Kong’s eligibility for membership to the Madrid Union (made up of contracting parties to the Madrid Agreement and the Madrid Protocol), since membership is restricted to sovereign states or qualified inter-governmental organizations (such as the European Union). Hong Kong, being a Special Administrative Region of China, therefore does not qualify.
- The inability to extend protection from an International Registration filed in China as the Office of origin to Hong Kong and vice versa due to Article 3bis of the Madrid Protocol:
The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin.
Proposed implementation in Hong Kong
Following a consultation exercise in 2014, the Hong Kong Intellectual Property Department recently held a briefing session on the roadmap for implementing the Madrid System in Hong Kong through the Madrid Protocol. It is intended that the Madrid Protocol be implemented in Hong Kong by extension of China’s membership through Article 153 of the Basic Law which provides that:
“The application to the Hong Kong Special Administrative Region of international agreements to which the People’s Republic of China is or becomes a party shall be decided by the Central People’s Government, in accordance with the circumstances and needs of the Region, and after seeking the views of the government of the Region…”
In order not to delay the implementation of the Madrid System in Hong Kong, the territorial restriction under Article 3bis of the Madrid Protocol will apply while Hong Kong discusses the possibility of a special arrangement with China to facilitate reciprocal filing of trade mark applications.
What does this mean for brand owners?
- Under the Madrid System, brand owners can file a single application, pay one set of fees, and designate one or more contracting jurisdictions in which it wishes to register its trade mark. Hong Kong’s accession to the Madrid Protocol will enable local businesses wishing to expand overseas to more efficiently register and manage their trade marks through a single channel. International businesses wishing to register their marks in Hong Kong can also take advantage of the Madrid System to extend their geographical scope.
- However, brand owners filing through Hong Kong (or China) as the Office of origin will be subject to the territorial restriction under Article 3bis of the Madrid Protocol, in that an international application originating from Hong Kong cannot designate China, and vice versa. Protection will have to be sought through separate domestic registrations in the other jurisdiction.
- Brand owners not filing through Hong Kong or China as the Office of origin will however have the option of extending protection from their International Registrations to both Hong Kong and China.
Changes will have to be made to the current legislation and information technology infrastructure of the Intellectual Property Department for the implementation of the Madrid System. Full implementation of the Madrid System in Hong Kong is not expected before 2019.