Registration and use

Ownership of marks

Who may apply for registration?

Any person or legal entity having a legitimate interest, in particular, a manufacturer or trader, may apply for trademark registration.

Scope of trademark

What may and may not be protected and registered as a trademark?

Words and devices or a combination thereof may be registered.

The following marks may not be registered:

  • marks consisting exclusively of signs or indications that may be used in commerce to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or the rendering of the services or other characteristics of the goods or services;
  • marks consisting exclusively of signs or indications that have become customary in the current language or in bona fide and established commercial practices for the designation of the goods or services;
  • marks consisting exclusively of colours, except when these are arranged in an original and distinctive manner;
  • marks containing flags, coats of arms, or other emblems of the Macao SAR, of local councils, or other national or foreign public or private bodies without the consent of the competent authority;
  • marks containing official signs, seals, and stamps of control or guarantee, if intended for products that are the same or similar to the products to which these are to be applied, except with the consent of the competent authority;
  • marks containing heraldic insignia or escutcheons, medals, decorations, or distinctions of honour that the applicant is not entitled to or, if he or she is entitled thereto, if disrespect or disrepute would result from the use thereof;
  • marks containing the emblem or name of the International Red Cross or of any other body to which the chief executive of Macao has granted the exclusive right to their use, except where special authorisation has been obtained;
  • marks containing a trade name, company name, business name or shop sign not belonging to the applicant or that the applicant is not authorised to use;
  • marks containing the name or portrait of an individual without his or her consent or, in the case of a deceased person, without the consent of his or her heirs up to the fourth degree, or even if such consent has been obtained, if the use of the mark containing such name or portrait may cause disrespect or disrepute to the person concerned;
  • marks containing a sign or signs that are an unlawful reproduction without authorisation of a work that is the literary or artistic property of another party;
  • marks containing false indications of the nature, quality, or utility of goods or services for which the mark is intended;
  • marks containing any false indication of origin, with regard to the country, region or locality, factory, property or place of business;
  • marks likely to cause confusion with one or more other marks already registered with respect to identical or similar goods or services in the name of another party; and
  • marks being entirely, or in a substantial part, a reproduction, an imitation or a translation of another unregistered mark that is known to belong to another party being a national of or having his or her principal place of business in a Paris Convention member state, where confusion may be caused because the mark applied for is to be used for goods or services identical or similar to those for which the well-known mark is used, provided, however, that opposition on this basis can be successful only if the owner of the well-known mark files proof that he or she has applied for registration of their mark in Macao.

Colours may be registrable as a mark only if arranged in an original and distinctive manner.

The shape of a product or of the package or cover of a product may be registered as a mark, provided that it is capable of distinguishing the goods concerned from identical or similar goods.

Collective marks may be registered. Certification marks may also be registered.

Unregistered trademarks

Can trademark rights be established without registration?

Provisional protection is given to a trademark application. Total protection is given as from the grant of the trademark registration. Thus, trademark rights are not established without registration.

Only registration confers proprietary rights. The effect of registration therefore is attributive of ownership.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The existence of a well-known mark may be a ground for the opposition of a trademark application in Macao, provided that the owner applies for registration of the well-known mark at the same time.

The evidences that are required include market studies that reveal the reputation of the mark to the relevant public, costs with marketing companies, sales volume, and other factors relevant to the reputation of the mark.

The benefits of registration

What are the benefits of registration?

Only registration confers exclusive rights to a mark. Only registration confers proprietary rights. The effect of registration, therefore, is attributive of ownership.

The following acts performed without the consent of the owner of a registered mark are deemed infringement:

  • use in the course of trade in Macao of any sign that is identical or confusingly similar to the registered mark for goods or services being identical or similar to those for which the mark is registered; and
  • use in the course of trade in Macao of any sign that, due to the identity or similarity of that sign and the mark or the affinity between the goods or services, creates in the consumer’s mind a risk of confusion, including the risk of association of the sign with the mark.

The exclusive right to a mark does not include the right for the owner to prevent a third party from using in the course of trade his or her own name or address, or any indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the services, or any other characteristics of goods or services, or even the mark itself if this is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, provided that in any such case such use is in accordance with honest practices and good customs in industrial and commercial matters.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The requirements and related documents for the filing of a trademark application in Macao are as follows:

  • the applicant’s full name, nationality, occupation, address or place of business;
  • a copy of the mark (in the case of a device mark);
  • a certified copy of the home application, if a priority is claimed;
  • the list of goods and services;
  • a power of attorney duly dated, signed by the legal representative, notarised and legalised by a notary public and a Hague Convention apostille.

Electronic filing is available. Trademark searches are available but not required before filing.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If no opposition is filed against the trademark application and if the application is filed with all the required documents, it usually takes five months to obtain a trademark registration and another five months to obtain the registration certificate.

The registration formally comes into effect with the granting decision of the applied trademark.

The costs to obtain a trademark registration are given upon request.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The applicable classification is the ninth edition of the International Classification of Goods and Services under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Multi-class applications are not available.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

If the opposition period lapses without any opposition having been filed or the opposition proceedings have been terminated, the application will be examined as to form, registrability, per se, and prior conflicting registrations.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

A registered mark should be used. If a registered mark has not been used without a legitimate reason for three consecutive years, the registration of the same may be declared forfeited.

Only registered trademarks are obliged to be used. Before registration there is no obligation of use of the trademarks.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is optional. Possible markings include 'Marca Registada', MR, ®, ‘chu chak seong pio’ (Cantonese), ‘zhu ce shang biao’ (Mandarin) or ‘Registered Trademark’.

Appealing a denied application

Is there an appeal process if the application is denied?

An appeal against the decision of the Intellectual Property Department (IPD) of the Macao Economic Services (MES) may be lodged with the first instance court within one month of notification. Both the applicant and the opposing party may lodge an appeal. Further appeal lies with the court of second instance.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Within two months of publication (the term is not extendable), any third party considering itself prejudiced by the possible grant of the registration may file an opposition. The applicant may file a counter-statement within one month (the term is not extendable).

The opposition or the cancellation of a trademark can be requested in the following circumstances:

  • that the person in whose name the registration of a mark was made was not entitled to acquire it;
  • that the registration concerns a mark that was not registrable;
  • that the grant of the registration infringes third-party rights based on priority or other legal title, and, in particular, that the grant infringes upon rights to an earlier mark, provided the use requirement in respect of that mark is complied with. Note, however, that no cancellation on this ground may be requested in the case of acquiescence in the use of the later mark during five years;
  • that the mark being the subject of the registration is wholly or partly an imitation, translation or reproduction of a mark that is well known in Macao, and is used for the same or similar articles and there is danger of confusion;
  • that the mark being the subject of the registration is graphically or phonetically identical or similar to an earlier mark being highly renowned in Macao, irrespective of the goods or services for which it is applied, if use of the later mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark; or
  • that the grant of the registration infringed provisions requiring authorisation or consent and this has not been given.

The cancellation procedure may be started before the competent court within one year from the date of grant of the registration of the mark.

A brand owner that does not yet have its trademark protected in Macao cannot oppose a bad-faith application.

The costs associated with a third-party opposition or cancellation proceeding are given upon request.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The duration of registration of a trademark is seven years from the application date and is indefinitely renewable for further seven-year periods.

Surrender

What is the procedure for surrendering a trademark registration?

The procedure for surrendering a trademark registration is the filing of a formal request at the Macao patent and trademark office (PTO) with the corresponding power of attorney, duly notarised and legalised with Hague Convention apostille.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks can be also protected as copyrights or designs in case the corresponding requirements are fulfilled.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Protection can be given to trademarks online or to domain names by the unfair competition rules.