Under the Madrid Agreement and Madrid Protocol, together known as the Madrid System, the owners of trade marks have been able to register their brand internationally through the contracting parties to the Madrid System. A contracting party is either a sovereign state or a qualifying inter-governmental organisation, e.g. the European Union.
While China is a contracting party, Hong Kong is not included as part of China, and as a result is excluded from the System. At present applications must be made through the Hong Kong Trade Marks Registry, however, this will all change if the proposal to join the Madrid System is adopted.
If Hong Kong is able to join the System it will probably do so under a special arrangement with China, as Hong Kong is not a sovereign state and does not qualify for membership.
If the proposal is adopted, trade mark applicants will submit their application directly to the International Bureau without the requirement to submit the application through Beijing, as the office of origin, and only one set of fees will be payable.
The application for registration, all filings and correspondence with the Bureau can be in Chinese or English, but if Chinese is used an English translation must be provided.
An application for registration filed in Hong Kong cannot designate Mainland China as a contracting party in which it wishes to register its trade mark. Similarly, an application in Mainland China cannot designate Hong Kong. To address this issue Hong Kong is seeking to reach a reciprocal filing agreement with China.
The distinction will not affect an international application, which can designate both Hong Kong and China as jurisdictions for the registration of a trade mark.
It is expected that the proposal could be adopted and in place in the course 2019.
ROSEMONT (HONG KONG) LTD
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