The Madrid Protocol is finally on its way

Did you know?                        

  • The new Trade Marks (Amendment) Ordinance 2020 which came into effect on 19 June 2020 empowers the Registrar of Trade Marks to make the rules for implementing the long-awaited Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”) in Hong Kong.
  • The Intellectual Property Department plans to implement the international registration (“IR”) system under the Madrid Protocol in Hong Kong in 2022-2023.

Why does this matter to you?

  • The Madrid Protocol seeks to facilitate the registration and management of trade marks in multiple jurisdictions under one single application in the register of the International Bureau (the “IB”) of the World Intellectual Property Organization (“WIPO”) in lieu of filing individual “national” applications in each of the jurisdictions. A trade mark owner only pays one set of filing fees and can also manage post-registration matters (e.g. renewal, assignment or licence recordal) in different designating contracting parties through a single procedural step with IB of the WIPO, thereby saving costs and enhancing efficiency of trade mark management.
  • For the first time, foreign trade mark owners will be able to apply for an IR with their office of origin and designate Hong Kong. It also means that the Hong Kong trade mark owners can file in Hong Kong and designate one or more of the 100+ member countries in which to register their marks.  
  • It is important to note that, uniquely for Hong Kong, as the Madrid Protocol is an international agreement and Hong Kong is a special administrative region of the People’s Republic of China (“PRC”), it is not possible for a PRC applicant to extend protection from an IR filed in the PRC as the Office of Origin, to Hong Kong, and vice versa. The HKSAR Government has indicated that it is continuing to discuss with the relevant Mainland authorities the possibility of putting in place separate administrative arrangements to facilitate reciprocal applications by Hong Kong and PRC applicants, while proceeding with the implementation of the Madrid Protocol in Hong Kong.
  • Foreign applicants should note that an IR designating the PRC will not automatically apply to Hong Kong and vice versa.
  • Although the implementation of the Madrid Protocol will allow Hong Kong to benefit from the efficiencies of the Protocol, the IR system should not be treated as a “one-size-fits-all” solution. Depending on the nature of the trade marks, the likelihood of the marks being challenged, particularly in the first 5 years of registration of the IR (commonly referred to as a “Central Attack”), the markets of interest, the timeline for launching the marks etc., the IR System might not necessarily be the most ideal option for your filing strategy.

Implementation is still a couple of years away, but you may wish to start devising your business plans and reviewing your trade mark portfolio now, and STAY TUNED!!

If you have any questions regarding the above, please contact us at ip@deacons.com