The Hong Kong Trade Marks Registry has made significant updates to the Chapter on the “Absolute Grounds for refusal” in its Trade Marks Registry Work Manual and added factors they will consider in relation to the grounds on “contrary to accepted principles of morality”, “deceptive marks” and “use prohibited by virtue of any law” under sections 11(4)(a), (b) and section 11(5) (a) of the Trade Marks Ordinance. 

Key Changes in Examination Practices 

The updates in the Work Manual primarily focus on three sections of the Trade Marks Ordinance: 

• Section 11(4)(a) – Marks Contrary to Accepted Principles of Morality 
• Section 11(4)(b) – Marks Likely to Deceive 
• Section 11(5)(a) – Use Prohibited in Hong Kong by Virtue of Any Law 

Section 11(4)(a) – Marks Contrary to Accepted Principles of Morality 

This section has been clarified to emphasize that it addresses principles of morality rather than political correctness. In addition to marks that may be considered offensive or vulgar, the Registry has added that marks containing in whole or in part, any sign that consists of any of the following will be refused registration under this section of the Trade Marks Ordinance:- 

• may be contrary to the interests of national security, sovereignty, unity, reputation or territorial integrity; public security or order; and personal safety, notably through transmitting, inciting or trivializing an illegal activity;  

• is, either explicitly or by insinuation, associated or connected with an offensive, indecent or outrageous meaning, conduct or activity, e.g. a sign that incites hatred or otherwise transmits an insulting/degrading/disparaging message towards a particular race, group, gender, religion, institution or belief;  

• is, without authorization, identical to or resemble individual names/emblems/landmarks of government leadership, authorities or agencies (including those of the Central People’s Government); or  
• contains references to or is associated/connected with any well-known tragedy or otherwise shocking/disturbing event, as likely to be considered amongst a section of the public as offensive through commercialization. 

Such marks are likely to be rejected, regardless of the goods or services they are associated with. 

Section 11 (4)(b) of the Trade Marks Ordinance – Marks Likely to Deceive 

Under this section, in addition to words such as “made/made in/imported from” a geographical place, the Registry has added that if the mark includes words or characters such as "exported from" a geographical place even if the area is not famous for the quality of the specified goods and the goods are imported/exported from or made elsewhere, the mark would be considered deceptive. The Registry has also added that marks suggesting official approval without any actual endorsement are also classified as deceptive. 

Section 11(5)(a) – Use Prohibited in Hong Kong by Virtue of Any Law 

The Registry has added an example of trade marks which may be objected under this section if the use of the trade mark constitutes an offence under The Law of the People’s Republic of China on Safeguarding National Security in the Hong Kong Special Administrative Region and/or the Safeguarding National Security Ordinance (Instrument A305). 

Conclusion 

These updates underscore the importance of ensuring that trade marks adhere to distinctiveness and appropriateness criteria before application to minimize the risk of refusals. It is worth noting that unlike the usual descriptive and non-distinctive objections which may be overcome by various means such as filing of evidence of use, some of the absolute grounds of objection mentioned above cannot be overcome by filing evidence of use.  Prior to applying for a trade mark application, trade mark owners are reminded of the importance of conducting a trade mark search to ascertain the registrability and availability of a trade mark. 

For further details, please refer to the complete document from the Trade Marks Registry:  

https://www.ipd.gov.hk/filemanager/ipd/common/trade-marks/registry-work-manual/current/eng/Absolute_grounds_for_refusal.pdf  

The information in this article is for general informational purposes only and should not be considered as professional or legal advice. Please get in touch with us should you like to discuss further.  

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