Valuation of Trademarks

Factors which may affect the value of a trademark:

• The territorial nature of the trademark. Whether there is valid registration of the trademark being infringed?

If the trademark has not been validly registered, or the registration is no longer valid, this will limit the legal action and remedies available in trademark infringement proceedings. 

Unregistered trademark may be protected by passing off action under common law. But it is necessary to prove goodwill of the trademark and evidence of sales figures and advertising figures of the goods or services using the trademark for a period of time is typically required.

In E-commerce or internet, context, the use of the trademark can extend to cover domain registrations, social media accounts, AdWords, tag lines, etc.

Whether the trademark is being applied to goods in Hong Kong or used in the course of trade in goods or services or in another place where the mark has never been registered. For the case of Hong Kong, the power of the trademark owner to prevent parallel importation of trademark goods is very weak.

• Whether there is any existing or pending opposition, cancellation or revocation actions against the trademark?

• Whether the trademark is a well-known mark or not which enables the trademark to have enhanced protection as compared to ordinary trademark

The value of a trademark will affect the assessment of damages available for the winning party in trademark infringement cases.

For legal advice or services on trade mark infringement or defence to trade mark infringement claim, please contact CHOW & CHEUNG [Tel: +852 2856 3799 or Email: cac@ccsn.hk]

www.ccsn.hk

 

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