Priority Claim in HK Trade Mark Application
If an applicant files a trade mark application in HK within 6 months of the trade mark registration application filed in a Paris Convention country or a WTO member country, territory or area, the applicant can claim the date on which he filed the Convention application or WTO application as his Priority Date for the HK trade mark application (Section 41 of the Trade Marks Ordinance Cap. 559).
The trade mark has to be the same for both the HK application and the Paris Convention application or WTO application but it can be for any or all of the same goods or services.
The difference in the class numbers of certain goods and services of the trade mark due to the change in the edition of the Nice Classification does not affect an applicant’s right of priority if the requirements for claim to priority under section 41 of the Trade Marks Ordinance and rule 9(1) of the Trade Marks Rules have been met.
A 3rd party cannot acquire rights in the trade mark by use between the priority date and the application date in Hong Kong. But rights acquired before the priority date are not affected.
The HK Intellectual Property Department (IPD) usually would not require the submission of supporting documents for the claim to priority unless there is potential conflict between the trade mark application (which claims priority) and an earlier filed trade mark application.
But information like the name of each country, territory or area in respect of which a right to priority is claimed is still required to be provided in the HK trade mark application Form T2.
An applicant must claim the priority in the trademark registration application. Amendment to the application to include the priority claim after filing to the HK IPD is not possible.
For legal advice or services on IP disputes or IP infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799 Email: cac@ccsn.hk]
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