The Trade Marks (Amendment) Ordinance 2020 went effective June 19, 2020, except Section 5 and Part 4 of the ordinance, concerning trademarks acquired in Hong Kong under the Madrid Protocol, which shall come into operation on a day to be appointed by the Secretary for Commerce and Economic Development by notice published in the Gazette after completing the relevant preparatory work.

The amendment also confers powers on the Customs and Excise Department to enforce the criminal provisions under the Ordinance (Cap. 559), and makes technical amendments to some existing provisions of the ordinance for enhancing Hong Kong's trademark application and registration system.

Following the enactment of the ordinance, the government will press ahead with relevant preparatory work for the implementation of the Protocol, including preparing subsidiary legislation to provide for the relevant procedural details, setting up a dedicated information technology system and obtaining the agreement of the central government to seek application of the Protocol to Hong Kong. Subject to the progress of this preparatory work, the local government aims to implement the Protocol in Hong Kong as soon as possible.

The Protocol now has 106 contracting parties including China and many other major trading partners of Hong Kong. It allows trademark owners to apply for registration of trademarks in the register of the International Bureau of the World Intellectual Property Organization, and to seek extension of protection of trademarks in multiple jurisdictions by a one-stop application process through such registration, thus greatly simplifying the registration process for trademark owners. The Protocol has yet to be applied to Hong Kong.

"The implementation of the Madrid Protocol in Hong Kong is one of the key measures to enhance the local intellectual property regime. It will not only enable businesses to save time and costs in seeking trademark protection in multiple jurisdictions and managing their trademark registrations, but can also reinforce our position as an ideal place of conducting commercial activities and intellectual property trading," said a spokesman for the Commerce and Economic Development Bureau.

Johnny Chan