In the Hong Kong Special Administrative Region (the Hong Kong SAR), a company or business name registration is not an indication of intellectual property rights (IPR). Company registration, business registration and trade mark registration serve different purposes. They are regulated by separate laws and the registration systems are administered by different government departments.
A company name registration at the Companies Registry or a business name registered with the Business Registration Office under the Inland Revenue Department is not the same as a trade mark registration at the Trade Marks Registry of the Intellectual Property Department. Having registered as a local company or a registered non-Hong Kong company with the Companies Registry, or obtained a business registration from the Business Registration Office, a company is still required to apply for the registration of its trade marks with the Trade Marks Registry in order to obtain the protection under the Trade Marks Ordinance. As the owner of a registered trade mark, the company has the exclusive right to use the trade mark in the Hong Kong SAR in relation to the goods and/or services for which the mark is registered. For details of the differences among company name registration, business registration and trade mark registration, please see Differences among company registration, business registration and trade mark registration.
In recent years, there have been reports of companies incorporated at the Companies Registry with names which are very similar to registered trade marks of other companies. These companies pose themselves as representatives of the owners of such trade marks when contracting with manufacturers in the Mainland of China to produce counterfeit products bearing such trade marks.
If the infringing activities take place in the Hong Kong SAR, the owner of a registered trade mark may take legal actions against the infringer(s) as described below.
The owner of a registered trade mark under the Trade Marks Ordinance (Cap. 559) has the exclusive right to use the mark in the Hong Kong SAR for the goods and/or services registered. The trade mark owner may take infringement proceedings against a person who uses, in the course of trade or business, a sign identical or similar to the registered trade mark in relation to identical or similar goods or services. Relief can be obtained from the court by way of damages, injunctions, accounts; order for the delivery up of infringing goods, material or articles and for the disposal of infringing goods, material or articles that have been delivered up are available to the owner of a registered trade mark.
Even if a trade mark is not registered in the Hong Kong SAR, the trade mark owner may be able to bring an action in passing off, which is a common law civil action in the court against misrepresentation as to the source of the goods and/or services. To found an action for passing off, three elements have to be established. Firstly, the plaintiff’s goods and/or services, with the use of the trade mark, have acquired a goodwill or reputation in the market. Secondly, there is a misrepresentation by the defendant leading or likely to lead the public to believe that the goods and/or services offered by the defendant are goods and/or services of the plaintiff. Thirdly, the plaintiff has suffered or is likely to suffer damage as a result of the defendant’s misrepresentation. If the court is satisfied that a passing off action is established, an injunction may be granted to restrain the act complained of, and the defendant may be required to pay damages to the plaintiff for the loss or damage suffered.
To address the company name issue, the Hong Kong SAR Government has implemented a number of measures which include:-
The Intellectual Property Department will continue to promote awareness of IPR protection through its educational and publicity programmes.