In this part of the series, our Partner, Valerie Suen, will look at International Registrations (IR) from Hong Kong brand owners’ perspective.

Once the IR system is implemented, Hong Kong brand owners will have the option of protecting their brands overseas through the IR system. However, this is not always the one-size-fits-all solution and the commercial needs of each brand owner will determine whether IRs should be chosen.

An IR portfolio is easy to manage and renewals can be filed centrally through WIPO, without having to renew individual marks in each jurisdiction.

However, there are downsides brand owners must consider too:

The cost of IRs is not cheap either and there will be more costs with each additional jurisdiction a brand owner designates under an IR. Normally, it will not be worth pursuing an IR if a brand owner only needs to pursue protection in 10 or less jurisdictions.

There are also risks involved with IRs. If a brand owner uses their Hong Kong application/registration as the base for their IR, and the base mark is challenged and removed or cannot register within the first five years, all designations under the IR may fail unless the IR is ‘transformed’ into a domestic mark.

Designations will be governed by the base mark and there is not a lot of flexibility in changing your list of goods or services to suit individual jurisdiction’s laws and regulations.

A Hong Kong IR applicant using their Hong Kong mark as the base mark will not be able to designate the People’s Republic of China (PRC) for their IRs. An additional application will need to be filed in the PRC for protection.

For any enquiries about International Trademark Registration, please feel free to speak to our partner Valerie Suen or counsel Vivian Or!