John Larrysson Column: Trademarks

Have you ever been told that you must not use trademarks, but were unsure what exactly that meant? Today I will cover the basics of Hong Kong trademark law.

Trademarks are intellectual property like copyright, but there the similarities end. (HK Trademark Ordinance Section 27) They can be used for as long as you are in business, if you remember to renew them. (Section 49) Other people can use them, but with limits. (Section 19) Unlike copyrighted works, trademarks are only simple writeable names and symbols. (Section 3) They are used by businesses to identify themselves. They are like names. I break no law by saying that C.Y. Leung is the Chief Executive of Hong Kong. Newspapers use his name all the time.

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It would be breaking the law if I said I am C.Y. Leung; doing that would cause confusion. Even if I said I am Sea Why Leung it would cause confusion. Just like, C.Y. Leung, a company has the right to be represented by their name or trademark. Other people can use the name, but not in a way that would cause confusion. Anything that looks like a company's trademark is also their trademark. Drawing a red can of cola, with a white stripe, is using the trademark of the Coca-Cola company. It does not matter if you use a straight stripe, while they use a curved stripe. The cola cans in a video game had to be changed to blue for this reason! It is similar to their trademark, so it is their trademark. (section 18)

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Trademarks have to not make too much sense. Everyone has the right to use reasonable descriptions of their service or product. So reasonable descriptions cannot be trademarks. The name 'Efficient Computers' is a reasonable description, so it cannot be the name of a computer company. However the name 'Apple Computers' makes no sense, so it can be a trademark. [Section 11 (1) (c), Section 19 (3) (c)]

National and cultural symbols, like flags, can't be used as trademarks. If you want to use an Italian flag as a decoration in your restaurant go ahead. However you can't use it to represent your business or prevent anyone else from doing the same thing. (Section 64, 65, 66) Many countries have laws about using flags and other cultural symbols.

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Groundless threats to sue someone for using a trademark are against the law. (Section 26) A threat is groundless if it has no good legal reasons. So if you lose business because someone falsely claims you are using their trademark, you can sue for any lost business.

People and organisations can also have trademarks, not just businesses. They do not even have to be registered, although registration makes work easier for courts. The weather alert symbols used by the Hong Kong Observatory are trademarks, although they are probably unregistered. Using someone's unregistered trademarks in a way that confuses their product with yours is called passing off. (common law, see Lee & Pendleton, Intellectual Property in Hong Kong, chapter one) Someone else could announce their own weather alerts. However they cannot use the same signal names and symbols as the Hong Kong Observatory. The Hong Kong Observatory is protected by trademark law. Even a simple student club would be protected in the same way.

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I have had to read the entire Hong Kong Trademark Ordinance for work. Most of it deals with issues of registration. The key sections to understanding it have been referred to in this article. An instruction to never use trademarks is usually dependant on the speaker not knowing what trademarks are. The BBC never uses trademarks as they are forbidden to advertise. That’s why whenever Blue Peter made anything from a cereal box the Kellogg's logo was covered. They are names and symbols that are part of the language all around us. If students never read or hear the trademarks signal number 8, MTR, CITYBUS, Wellcome or Vitasoy then they will miss a functional part of language used in Hong Kong. It is possible and easy to never break the Trademark Ordinance, but difficult or impossible to never use trademarks.

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Disclaimer: I am not a lawyer and this article is not formal legal advice. It is based on my reading of the HK Trademarks Ordinance and Dr. Alice Lee's Intellectual Property in Hong Kong. No guarantee whatsoever is made that the text is legally accurate. Laws can be changed and may have been modified or overturned after this article was written.


Intellectual Property Department:

Chapter 559 Trademark Ordinance:

Intellectual Property in Hong Kong:

by John Larrysson

[email protected]

A native English speaker who has been teaching practical English in Hong Kong for more than a decade.