𝗜𝗻𝘁𝗲𝗿𝗻𝗮𝘁𝗶𝗼𝗻𝗮𝗹 𝗥𝗲𝗴𝗶𝘀𝘁𝗿𝗮𝘁𝗶𝗼𝗻𝘀 (“𝗜𝗥’) 𝗦𝗲𝗿𝗶𝗲𝘀 𝗣𝗮𝗿𝘁 𝟰/𝟲 – 𝗠𝗮𝗱𝗿𝗶𝗱 𝗦𝘆𝘀𝘁𝗲𝗺 𝘁𝗼 𝗯𝗲 𝗶𝗺𝗽𝗹𝗲𝗺𝗲𝗻𝘁𝗲𝗱 𝗶𝗻 𝗛𝗼𝗻𝗴 𝗞𝗼𝗻𝗴
In this part of the series, our Partner Valerie Suen, will discuss how the Madrid System will be implemented in Hong Kong.
Currently, the International Registration (IR) system does not apply to Hong Kong. The government has plans and are working towards implementing the IR system in Hong Kong. Whilst it will mostly mirror the IR systems in other jurisdictions, there will be some notable differences.
IRs in Hong Kong: Foreign brand owners will be able to designate their IRs into Hong Kong, China once the system is implemented. Likewise, qualified brand owners will be able to apply for IRs with a local Hong Kong trade mark application/registration. Qualified applicants are those who are incorporated/domiciled in Hong Kong, or have a real and effective commercial or industrial establishment in Hong Kong.
Relationship with the PRC: Uniquely, as Hong Kong is a Special Administrative Region of the People’s Republic of China (PRC), a Hong Kong IR applicant will not be able to designate the PRC for their IRs. Similarly, a PRC applicant will not be able to designate Hong Kong for their IRs. Brand owners will have to strategically plan where and how they apply for IRs as a result.
Timeline: As a Special Administrative Region of the People’s Republic of China, there are special arrangements for international treaties to be applied in Hong Kong. These will need to be attended to before the Madrid Agreement and Madrid Protocol, both relating to IRs, can be applied in Hong Kong. Local laws and regulations, as well as the Intellectual Property Department’s practice guidelines, will also need to be amended. The earliest IRs will be implemented in Hong Kong will be in 2022/2023.
For any enquiries about International Trademark Registration, please feel free to speak to our partner Valerie Suen or counsel Vivian Or!