Register your trademark ASAP can protect products and enhance brand value. However, trademark registration is territorial, they can only be protected by laws in the area where they are registered. Business operators and entrepreneurs with less experience are advised to plan in advance when applying for trademarks. If you intend to develop business in the Mainland, Taiwan and overseas, you probably need to register in each place one by one. This article will summarise the trademark systems of many popular countries and regions, at the end you will gain a deeper understanding of their policies.
Hong Kong Trademarks
Hong Kong trademarks are based on "first to use" principle. Trademark application can be submitted to Intellectual Property Department (IPD) . If a continuously used trademark is pre-emptively registered and used without authorization by others, the trademark holder can protect its rights and interests through local laws and file a lawsuit in accordance with common law. infringement. However, the plaintiff needs to prove that the counterfeit trademark has a certain reputation among the public, resulting in infringement of goodwill.
Scope of protection
In Hong Kong, a variety of trademarks can be registered. The elements that constitute a trademark include words, colours, shapes, instructions, numerals, graphic elements, sounds, the shape of the goods or their packaging or any combination of these. According to IPD, smell constitutes a trademark in principle. However, since there is no feasible way to explicitly express scent marks, it is difficult to implement in practice, and applicants cannot use scent samples or chemical formulas as scent marks.
Hong Kong also protects Certification Mark, Collective Mark, and Defensive Trade Mark. Certification Mark is registered by non-trading organizations certifying the quality of goods or services. Collective mark indicates goods or services provided by members of a trade association, it is registered by trade associations with regulations that control the use of the mark by members of the association. Defensive Trade Mark protects marks which are extremely well-known in Hong Kong.
Trademark validity period
In Hong Kong, a registered trademark is initially registered for 10 years, and can be renewed every ten years. The renewal application can be made within six months before or after the expiration of the registration period. If the registered trademark has not been used in Hong Kong for three consecutive years, the trademark can be cancelled by others.
Mainland China Trademarks
Trademarks in Mainland China employ "first to apply" principle. Applications can be sent to State Intellectual Property Office of China (SIPO). If a registered trademark is used by others without permission, and the trademark holder can initiate an infringement lawsuit. If an unregistered trademark is pre-registered by others and used locally, the original owner has the right to file a malicious registration, raise an objection and apply for cancellation of the registration within the announcement period, or apply for the invalidation of the trademark. However, the trademark rights holder can discuss with the subsequent trademark registrant and submit a "coexistence agreement", to allow the trademark review and Adjudication Board to consider allowing two different trademarks to coexist.
Scope of protection
Trademarks in China contain a variety of elements, including words, graphics, three-dimensional signs, colours, letters, numbers, sounds and their combinations. Other protected forms include Collective Mark and Certification Mark. The former is used to indicate the membership of collective organizations of producers and operators, whereas the latter certifies the origin, raw material, manufacturing method, quality and other characteristics of the goods or services.
Trademark validity period
The initial period of validity of a registered trademark in China is ten years, and renewal can be applied for every ten years. The renewal application can be made within twelve months before the expiration of the registration period, or within six months after the expiration. If the trademark is not used within three years after registration, others can apply to cancel the trademark registration.
Taiwan Trademarks
Taiwan's trademark law adopts the principle of "first to apply". Once the applicant successfully registers a trademark with the Intellectual Property Office (IPO), they have the right to commercially use the products and services under the trademark and can also report trademark infringers. If a trademark is pre-emptively registered, the party that originally used the trademark has the right to claim that they are the first-to-use party in goodwill, and continue to use the trademark, or file an objection within three months after the issue of the trademark registration. The party can also file for review, or cancellation and perform re-registration within five years.
Scope of protection
In Taiwan, elements constituting a trademark includes words, graphics, symbols, colours, sounds, three-dimensional shapes or combinations of them. There are also Certification Mark, Collective Trade Mark, and Collective Mark. Certification Marks are used to certify the specific quality of other people's goods or services, highlighting the difference from uncertified goods or services; Collective Trade Marks are used to certify that goods or services originate from specific group members, showing that the goods meet specific qualities, geographical sources, and other requirements; Collective Marks are not used for commercial or transactional goods or services, but are used to recognize the membership of a specific group, showing that the user of the Mark is associated with the group.
Trademark validity period
Trademark registration in Taiwan is valid for ten years and can be renewed every ten years. The applicant can apply for renewal six months before or after the expiration of the registration. If the trademark is not used within three years after registration, the trademark may be revoked.
Japan Trademarks
The trademark policies in Japan employs "first to apply" principle. Applicants can register through Japan Patent Office (JPO). The applicant is not allowed to declare non-exclusive use, which means that they cannot claim no rights to the common elements used in the industry. Besides, there is no "coexistence agreement" system. If similar or identical trademarks have been registered by others, subsequent applications will not be allowed by the authorities. Though, the subsequent applicant can negotiate with the trademark rights holder via transfer system. If mutual agreement is reached, the trademark can be transferred to the subsequent applicant through unifying the trademark holder.
Scope of protection
Japanese Trademark Law protects a variety of traditional and non-traditional trademark types. Traditional ones include words, graphics, three-dimensional trademarks, and symbols and their combinations; non-traditional ones include colour, sounds, positions, dynamic trademarks, and hologram trademarks.
Trademark validity period
The validity period of Japanese trademark registration is ten years. Applicants can renew a trademark within six months before or after the expiration. If the trademark has not been used in Japan for three consecutive years, it may be revoked.
South-Korea Trademarks
South Korea's trademark law adopts the principle of "first to apply". If a trademark registered with the Korean Intellectual Property Office (KIPO) is used by others without authorization, the trademark holder has the right to file an infringement lawsuit. If a well-known brand wants to file an infringement lawsuit for an un-registered trademark, it must meet the requirements of "widely recognized" and "misleading the public" in the local "Anti-Unfair Competition Law" before filing a lawsuit.
Scope of protection
South Korea allows and protects various types of trademarks, trademark elements include words, graphics, colours, three-dimensional trademarks and their combinations, as well as new types of trademarks such as dynamic and hologram trademarks. In addition, South Korea also protects other types of trademarks, such as Service Mark, Collective Mark, Certification Mark, and Business Badge.
Trademark validity period
Trademark registration in South Korea is valid for ten years and can be renewed every ten years. The applicant can apply for renewal within six months before or after the expiration of the validity period. Others have the right to apply for cancellation of the trademark, if the original holder have not used the goods or services of the registered trademark in South Korea in three consecutive years.
Association of Southeast Asian Nations (ASEAN) Trademarks
The Association of Southeast Asian Nations (ASEAN) is referred to as "ASEAN". Currently, there are ten member states, collectively known as the "ASEAN 10" (ASEAN 10), including Singapore, Thailand, Vietnam, Malaysia, Myanmar, the Philippines, Indonesia, Laos, Cambodia, Brunei. Among them, Singapore, Malaysia and Thailand are popular markets. The following is a brief introduction to the trademark laws of the three countries. If you would like to know more about the trademark systems of other member states, you can consult certain brands for assistance, such as OneStart Business Centre, it provides one-stop business services for entrepreneurs.
Singapore Trademarks
Singapore mainly uses the "first to apply" principle, people can apply for trademark registration with the Intellectual Property Office of Singapore (IPOS). If a registered trademark is used without authorization, the trademark holder can file a complaint directly. However, if an unregistered trademark is used without authorization, the merchant can also file a lawsuit according to the common law. However, it must be proven that the infringed trademark is widely known, and the use by others will mislead the public. The process is generally more complicated.
Scope of protection
The types of trademarks in Singapore include words, graphics, symbols, three-dimensional shapes, colours, slogans, sounds, holograms, product appearance; other types of trademarks are also available, including Certification Mark, Service Mark, Collective Mark.
Trademark validity period
Singapore trademarks are valid for ten years from the date of registration. Applicants can apply for a ten-year renewal within six months before or after the expiration date, with no limit to the number of renewals. If the registered trademark has not been used in Singapore for three consecutive years, others will have the right to apply for cancellation of the trademark.
Malaysia Trademarks
Malaysia mainly adopts the "first to use" principle. Applicants can apply for trademark registration with the Intellectual Property Corporation of Malaysia (MyIPO).
Scope of protection
In Malaysia, the elements that constitute a trademark include words, numerals, figures, emblems, colours, the appearance of the packaging of goods and their combinations.
Trademark validity period
A Malaysian trademark is valid for ten years from the date of registration. Applicants can apply for renewal within six months before or after the expiry date. If the trademark has not been used in Malaysia for three consecutive years, anyone has the right to apply for cancellation.
Thailand Trademarks
Thailand mainly adopts the principle of "first to apply". Trademark registration can be filed with the Department of Intellectual Property (DIP) of Thailand. Those who have previously used an unregistered trademark have the right to request a cancellation of the trademark within five years from the date of registration. The applicant needs to prove they have a Better Right to the trademark first, otherwise the lawsuit will not be accepted. The cost of the process is relatively high.
Scope of protection
Trademarks in Thailand can include a variety of elements, such as words, patterns, pictures, numerals, letters, colours, sounds and their combinations; at the same time, they also protect Service Mark, Collective Mark, and Certification Mark.
Trademark validity period
A trademark in Thailand is valid for ten years from the date of registration. It can be renewed for ten years three months before the expiration. There is no limit to the number of renewals. The latest date to renew is within six months after expiration. If the trademark has not been used in Thailand for three consecutive years, others will have the right to apply for cancellation of the trademark.
US Trademarks
Trademarks in United States adopts the "first to use"principle. To validate a trademark, filing an application with the United States Patent and Trademark Office (USPTO) is not the only requirement. One or more application bases (Filing Basis) are also needed to be met, in order to prove the actual usage or the intention to use the trademark.
Scope of protection
In the United States, common trademark elements include words, letters, numerals, graphics, artistic fonts, images, symbols, three-dimensional graphics, sounds or combinations thereof; other trademark types protected include Service Mark, Collective Mark, Trademark, Certification Mark.
Trademark validity period
A trademark registered in United States is valid for ten years from the date of registration. Applicants must apply for renewal within one year before the expiration date, each time it can be renewed for ten years. If the trademark has not been used in the United States for three consecutive years, the trademark rights may be abolished.
Australia Trademarks
Australia mainly adopts “first to apply” principle, though “first to use” trademarks are also protected. Applications can be submitted to Australian Intellectual Property Office (IP Australia). Under the Australian trademark law, if a registered trademark is used by others without authorization, the trademark owner can file an infringement lawsuit. According to Australian Common Law, if an unregistered trademark is used by others, the merchant can file a counterfeiting lawsuit, but they must prove that the trademark is widely known among the public.
Scope of protection
Common trademark elements in Australia include words, shapes, patterns, three-dimensional graphics, colours, sounds, smells and their combinations, as well as dynamic icons. Other types also include Certification Mark, Collective Mark, and Defensive Mark.
Trademark validity period
A trademark in Australia is valid for ten years from the date of registration. It can be renewed every ten years, and the application must be done within six months before or after the expiration date. If the registered trademark has not been used in Australia for three consecutive years, the trademark rights could be revoked.
European Union Trademarks
The European Union (EU) includes a number of European member states. Only one application is required to be sent to European Union Intellectual Property Office (EUIPO) to obtain trademark rights in all 27 member states of the EU. The EU trademark law mainly adopts the principle of "first to apply". Once a registered trademark is used by others without authorization, the trademark holder has the right to file an infringement lawsuit. Once an unregistered trademark is registered maliciously, the original user has the right to file a malicious application, but they cannot file an infringement lawsuit.
Scope of protection
In EU, the elements of a trademark include words, graphics, colors, three-dimensional graphics, smells, sounds, tastes, position marks and dynamic marks, etc., special marks such as Collective Mark, Certification Mark, and Guarantee Mark are also protected.
Trademark validity period
An EU trademark is valid for ten years from the date of registration. Applicants can apply for renewal within six months before or after the expiry date. If the registered trademark has not been officially used in EU for commercial purposes within five consecutive years, others can apply for cancellation of the trademark registration.
EU member states
Finland, France, Germany, Netherlands, Poland, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Greece, Spain, Sweden, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Portugal, Romania, Slovakia, Slovenia.
UK Trademarks
After Brexit, applicants are now required to file an application with the UK Intellectual Property Office (UKIPO)to obtain trademark rights in the UK. The United Kingdom mainly adopts the "first to apply" principle, but if an unregistered trademark is used by others without authorization, they have the right to file a lawsuit for counterfeit under Common Law, provided that the trademark is well-known.
Scope of protection
Common elements of trademarks in UK include words, graphics, colours, three-dimensional graphics, and their combinations. Smell trademarks, sound trademarks, dynamic trademarks and hologram trademarks are also allowed; other types also include Certification Mark and Collective Mark.
Trademark validity period
A UK trademark is valid for ten years from the date of registration, it can be renewed every ten years. The applicant can apply for a renewal within six months before or after the expiration date. If the trademark has not been used in the UK for five consecutive years, anyone will have the right to apply for cancelling the trademark.
Conclusion
Different countries or regions have their own trademark laws. Applicants should first check the details carefully. It is important to note that, although renewals can still be applied after a trademark expires, additional fees are often required. Hence, it is best to submit applications as soon as possible. If you are troubled by trademark law, do not hesitate to seek assistance from business consultants. OneStart offers trademark registration services across Hong Kong, China and oversea areas. Their professional team are more than happy to answer questions regarding trademark registration. Feel free to call 3575 6888, or Whatsapp our staff to learn more!
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