As many of our clients are aware, the Hong Kong Intellectual Property Department (IPD) has conducted a review of the costs and fees of services provided by its various registries. The government’s policy is that official fees charged should be set at levels sufficient to recover the full cost of providing the services. The Financial Secretary has also emphasized the need to uphold the “user pays” principle and to give priority to those fees that have not been revised for years. It was noted that the official trade mark related fees had been in force since April 2003. Patent and design related fees had not been revised since May 2004 and fees relating to the copyright licensing body had been in force since July 2001.
A paper suggesting revisions to the relevant fees was published in December 2014. The paper proposed multiple changes to the costs and fees of services provided by the various registries of the IPD, most significantly, a substantial increase in the cost of trade mark applications and searches whilst reducing the cost of trade mark and registered design renewals.
Industry bodies including the Law Society, the Asian Patent Attorneys Association and the Hong Kong Institute of Trade Mark Practitioners, expressed concern that higher application and search fees could be a barrier to market entry, particularly for small and medium enterprises. A decrease in trade mark and design renewal fees at the same time could also result in an abuse of monopoly rights as proprietors hold on to unused marks and designs due to the low cost of renewal.
The IPD considered the views and concerns expressed by the industry bodies but maintained that the fee revision proposal was a reasonable package balancing all the different considerations. Accordingly, the amendments have been passed and the new fees came into force on 30 March 2015.