Amendments to Hong Kong’s Trade Marks Ordinance paves the way for Madrid Protocol

In Insights

7 July, 2020

The Trade Marks (Amendment) Ordinance 2020 was gazetted on June 19, 2020. While the Amendment does not introduce any substantive changes to the underlying Hong Kong trademark laws, it does provide a basis in Hong Kong Law for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol).

The Madrid Protocol with 106 contracting parties provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees and in one currency.

The World Intellectual Property Organization’s International Bureau administers the Madrid Protocol and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all member states.

The Madrid Protocol has yet to be applied to Hong Kong and its implementation is one of the key measures to enhance the local intellectual property regime.

Under the Madrid Protocol, foreign trademark owners in member countries can apply to register their trademarks in other signatory offices. For Hong Kong or Chinese trademark owners, they will also be able to apply in Hong Kong and designate other member countries in which to have their marks registered.

The Amendment also confers powers on the Customs and Excise Department to enforce the criminal provisions under the Trade Marks Ordinance (Cap. 559) and makes technical amendments to some existing provisions of the Trade Marks Ordinance for enhancing Hong Kong’s trademark application and registration system.

The Hong Kong Government will press ahead with the relevant preparatory work for the implementation of the Madrid Protocol as soon as possible, including preparing subsidiary legislation to provide for the relevant procedural details, setting up a dedicated IT system and obtaining agreement from the Central People’s Government to seek application of the Madrid Protocol in Hong Kong.

We will keep you updated on any future developments regarding the implementation of the Madrid Protocol in Hong Kong.

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