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Hong Kong SAR to implement Madrid Protocol in 2019

Published on 27 Jan 2017 | 1 minute read

After a public consultation held between November 2014 and February 2015, the Hong Kong SAR 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 SAR even though China is a contracting party to the Madrid Protocol. After the Madrid Protocol is applied to Hong Kong SAR, the Hong Kong SAR 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 SAR will be one of the designating countries, after the Madrid Protocol is applied in Hong Kong SAR a Chinese national or corporation domiciled in Hong Kong SAR cannot designate China in the international application. Likewise a Chinese national/corporation domiciled in mainland China cannot designate Hong Kong SAR in the application. This is because Hong Kong SAR and China is considered as 'one' country. Applicants will have to file separately in both Hong Kong SAR and China in order to have protection.

The proposed timetable is that during 2017 - 2018, the Hong Kong SAR 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 SAR will be 2019.

The implementation of the Madrid Protocol in Hong Kong SAR will enable local businesses wishing to expand overseas to benefit from the efficiency of the Madrid Protocol system and further enhance Hong Kong SAR 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.

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Principal, Hong Kong Head of Trade Marks
+852 3412 4168
Principal, Hong Kong Head of Trade Marks
+852 3412 4168