Hong Kong is finally getting ready for Madrid Protocol


The Government issued a consultation paper on the proposed application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) to Hong Kong in November 2014.At long last, pursuant to the Trade Marks (Amendment) Ordinance 2020 gazetted on 19 June 2020, a new Part XA was added to the Hong Kong Trade Marks Ordinance providing a basis for the application of the Madrid Protocol in Hong Kong. Madrid Protocol is an international trade mark system that allows the filing of a single trade mark application to apply for protection in more than 100 countries including China and US. Trade mark owners under Madrid Protocol can apply for registration of trade marks in the register of the International Bureau of the World Intellectual Property Organization, and to seek extension of protection of trade marks in multiple jurisdictions by one application and this greatly simplifies the process for trade mark owners as they do not need to file individual national applications in each of the jurisdictions. The new sections in the Trade Marks Ordinance relating to Madrid Protocol will come into force on a day to be appointed by the Secretary for Commerce and Economic Development after completing the relevant preparatory work.  The Government is now preparing the subsidiary legislation to provide for the relevant procedure details etc. The current roadmap is to implement the Madrid Protocol in Hong Kong by 2022-2023 the earliest. Once in operation,  trade mark owners in Hong Kong can complete one single application in Hong Kong and designate other member jurisdictions in which to register their trade marks. Similarly, trade mark owners in other Madrid Protocol’s member jurisdictions can extend protection of their trade marks to Hong Kong. There are two important points to note! Although Hong Kong will be a designated jurisdiction under the Protocol, since Hong Kong is a special administrative region of the People’s Republic of China (“PRC”), a Hong Kong applicant cannot extend protection to China through the Madrid Protocol. Similarly, a Chinese applicant in mainland China may not extend protection to Hong Kong. In other words, separate applications must be made to seek protections in both jurisdictions. There are efforts to implement a special arrangement between Mainland and Hong Kong to facilitate the reciprocal filing of trade mark applications.  However, there is no updated information on this yet. Foreign applicants should bear in mind that an international registration designating the PRC will not automatically apply to Hong Kong and vice versa. Although Madrid Protocol provides a more convenient mechanism for trade mark owners to obtain protection of their trade marks in multiple jurisdictions, it is advisable for trade mark owners to review their business plans and needs to ensure this is indeed the best strategy for their trade mark protection and management.  However, as the Madrid Protocol will not come into effect until 2022-23 the earliest, trade mark owners should continue filing nationally as soon as possible to ensure their trade marks are adequately protected. We will keep you informed of further development on the implementation of Madrid Protocol in Hong Kong.  Please contact our Partner, Ms Rosita Li (email: [email protected]) or our Trainee Solicitor, Mr David Cheung (email: [email protected]) for more information.