After a public consultation held between November 2014 and February 2015, the Hong Kong Government will be adopting the international registration of trade marks (Madrid Protocol) system.
Currently the Madrid Protocol, under which applicants can apply registration in one or more member countries or territories by filing a single application and paying one set of fees, does not apply to Hong Kong even though China is a contracting party to the Madrid Protocol. After the Madrid Protocol is applied to Hong Kong, the Hong Kong Trade Mark Registry will act as an office of origin and designated office to accept international applications under the Madrid Protocol.
It is worth noting that although Hong Kong will be one of the designating countries, after the Madrid Protocol is applied in Hong Kong a Chinese national or corporation domiciled in Hong Kong cannot designate China in the international application. Likewise a Chinese national/corporation domiciled in mainland China cannot designate Hong Kong in the application. This is because Hong Kong and China is considered as 'one' country. Applicants will have to file separately in both Hong Kong and China in order to have protection.
The proposed timetable is that during 2017 - 2018, the Hong Kong government will consult the Legislative Council and start making amendments to the current legislation, formulate the workflow and make plans for a special IT system. It is estimated that the earliest that the Madrid Protocol will be applied to Hong Kong will be 2019.
The implementation of the Madrid Protocol in Hong Kong will enable local businesses wishing to expand overseas to benefit from the efficiency of the Madrid Protocol system and further enhance Hong Kong as an international business centre and intellectual property trading hub. However local businesses will have to bear in mind that they will have to make separate applications in order to have protection in mainland China.
To read more about the Madrid Protocol and which countries have recently been added and which are to come, please click here.
