Frequently asked questions after trademark registration -Company Formation_Trademark Registration_Tax Service - Hong Kong CPA

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Intellectual Property Rights - Trademark Registration

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Frequently asked questions after trademark registration

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Q：

How long does the trademark rights last?

A：

The trademark rights period varies by country. For some countries and regions, e.g., Hong Kong, Singapore, EU, etc. the rights will be protected for 10 years from the date of application; For some countries and regions, e.g., China, Taiwan, etc. the rights will be protected for 10 years from the date of registration; For Macao, the rights will be protected for 7 years from date of registration.

Q：

I have registered my mark in my country, does it mean I will get protection in whole world?

A：

As intellectual property protection is generally territorial in nature, applying for registration of a trademark in home country does not automatically give registered trademark protection in other countries.

Q：

How to maintain my trademark registration?

A：

Generally, you only need to submit a renewal for your registered trademark before the expiry date to extend the trademark protection period. However, in some countries, the Trademark Office requests the owner to provide specimens of use of the trademark, e.g., the USA, the Philippines, etc.

Q：

When can I submit renewal?

A：

Generally, you may submit a renewal half year before the expiry date. But in some countries, you may submit one year before the expiry date, e.g., China, Argentina, etc.

Q：

What should I do if I forgot to renew my trademark?

A：

In most countries, there is a 6 months grace period to submit a renewal. However, a penalty will be incurred. For some countries, e.g., Hong Kong, you may request for restoration between 6th month and 12th months after the expiry date.

Here is an example for a registration which should be expired on 31st December 2020:

Type	Submit Period	Fees
Normal renewal	1st Jul 2020 ~ 31st Dec 2020	Renewal fee
Renewal within grace period	1st Jan 2021 ~ 30th Jun 2021	Renewal fee + penalty
Restoration	1st Jul 2021 ~ 31st Dec 2021	Restoration fee

Q：

What should I do if I miss the grace period?

A：

You will have to file for your trademark again and go through all registration procedures. Certainly, you may have to face a risk that your application is rejected by the Trademark Office.

Q：

Does my trademark agent have the responsibility to remind me about the renewal?

A：

Actually, the responsibility of the trademark agent is assisting you to complete a trademark registration (except for being rejected) and the contract is finished once the Certificate of Registration is delivered to you. The trademark agent may kindly remind the owner to renew the mark to gain another cooperation chance. However, the renewal is usually conducted almost 10 years later, the person in charge and the contact person of the owner may be changed. Therefore, the owner should remark the expiry dates of the trademark registration on its own to avoid any late filing.

Q：

Will the Trademark Office issue a reminder to me before the expiry date?

A：

Most Trademark Office will not issue a renewal reminder to applicants. For some countries, such as Hong Kong, the registrar will issue a renewal reminder within 6 months to 1 month before the expiry date and send to the address for service provided at the time of application (it usually is the agent’s address if the applicant authorizes an agent).

Q：

Why the renewal fee is much expensive than the application fee?

A：

The fees depend on the official fee and the attorney fee (or service fee). Usually, the attorney fee (or service fee) for filing an application or renewal is almost the same. Therefore, the main reason is the trademark office cost renewal higher than application.

Q：

Should I re-submit an application rather than filing a renewal to save costs?

A：

It is not advisable to give up the registration. There is several reasons:-

There is no substantive examination for renewal. Once the renewal is submitted, it will only need to have a formality check. There is no big risk to be rejected or to be opposed.

The value of the mark is getting higher than 10 years ago. Since you have invested a lot of precious time and resources onto the mark, the mark becomes more famous and well-known. During the ten years of use, the value of the mark keeps accumulating.

In contrast, you may need to face the risk of rejection and fees for filing response will be incurred. Therefore, it is advisable to request renewal instead of filing new application.

Q：

Should I renew my old registration since I have designed a new one and get registered for it?

A：

It is advisable to keep renewing the old registration if the budget is allowed. As mentioned above, the value of a mark is kept accumulating year by year. The registration is a very good proof that the mark is being used for a long period. If you would like to sell your mark later on, usually an older registration could be sold for a higher price.

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