Search
15.3.2005
Search
Registrar’s duty to carry out searches
Section 42 of the Trade Marks Ordinance requires us to examine applications for
registration to determine whether they satisfy the requirements of the Ordinance,
including any requirements imposed by the Trade Marks Rules. In examining
applications, we need to conduct searches to consider the grounds for refusal :
the absolute grounds for refusal which in broad terms concern the distinctiveness
of a trade mark (see chapter on Absolute grounds for refusal), and
the relative grounds for refusal which relate to confusing similarity to earlier trade
marks (see chapter on Relative grounds for refusal).
Search relating to relative grounds for refusal
To consider the relative grounds for refusal of an application for registration we need to
search for earlier identical or similar marks for identical or similar goods or services
(see chapter on Relative grounds for refusal).
We search for earlier marks by using the trade marks search system available on-line :
http://ipsearch.ipd.gov.hk
The registry database contains details of earlier registered trade marks and applications
for registration. However, not all earlier marks will be revealed in a search – a mark
entitled to protection under the Paris Convention as a well-known mark may not
necessarily have been registered in Hong Kong, or may not have been registered for
particular goods or services. Without registration, an owner will need to protect his
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mark by opposition.
Searching words and devices
In searching for earlier identical or similar marks, we check marks that include words,
characters, letters or numerals against the database for other marks that include
identical or similar words, characters, letters or numerals. Our search not only includes
marks likely to be confused visually, it also takes phonetically identical or similar
marks into account. Three-dimensional marks, colour, sound and smell marks are also
checked against identical or similar marks.
What does a search of earlier marks involve?
The trade marks search system allows search of details of registrations and applications
for registration under the Trade Marks Ordinance (Cap. 559) and under the old
Ordinance (Cap. 43). The details, kept in electronic form and stored on the register,
include information such as the name and address of the owner, the address for service
of the owner, the date of registration, any disclaimer, limitation or condition to which
the registration is subject, etc (see rule 29 of the Trade Marks Rules). There are also
historical records of assignments, licences, security of interests, etc.
The on-line search system has a “Help” function which provides details of search
interfaces, methods of inputting search criteria, searchable fields and search result lists.
Searching device marks
The search system allows search of device marks by code numbers. Device marks are
classified under a system based on the Vienna Classification, the international
classification of figurative elements of marks administered by the World Intellectual
Property Organization (WIPO) (http://www.wipo.int/classifications/en/index.html).
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The classification consists of a number of categories, divisions and sections in which
the figurative elements of a mark are classified. Each category, division and section has
a code number that gives access to the marks classified in it.
The appropriate device codes can be obtained from our on-line search system by
entering the relevant device description(s) in either English or Chinese.
Searching marks for particular goods and services
Trade mark registrations for goods and services are classified under class numbers in
accordance with the International Classification of Goods and Services under the Nice
Agreement (see section 40, rule 2(1) (definition of “Nice Agreement”) and rule 5; see
also chapter on Classification).
Cross search
In searching for earlier identical or similar marks, our on-line search system
automatically extends the search to classes identified in our cross-search list (see Cross
search list). This automatic extended search helps us to identify earlier marks for
identical or similar goods or services.
Searches relating to absolute grounds for refusal
We make dictionary, telephone directory and Internet searches in considering our
objections to an application for registration on the absolute grounds for refusal. The
following reference books and Internet sites are our main sources but the list is not
exhaustive :
Chinese
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Lin Yu Tang’s Chinese-English Dictionary
http://www.arts.cuhk.edu.hk/Lexis/Lindict/
English
Collins English Dictionary
http://www.onelook.com/
Other languages
Collins Robert French-English/English-French Dictionary
Collins German-English/English-German Dictionary
Collins Sansoni Italian-English/English-Italian Dictionary
Kenkyusha’s New Japanese-English Dictionary
Abbreviations, Acronyms
www.acronymfinder.com
Financial
A Dictionary of Finance (Oxford University Press)
www.investopedia.com
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General
Master Dictionary of Food & Wine
Geographical
Merriam Webster’s Geographical Dictionary
Symbols
www.symbols.com
Technical
McGraw-Hill Dictionary of Scientific & Technical Terms
http://techweb.com
www.webopedia.internet.com
Computer Dictionary (Microsoft Press)
Dorland’s Illustrated Medical Dictionary
http://medical-dictionary.com
Martindale The Extra Pharmacopoeia
Hawley’s Condensed Chemical Dictionary
If we base our objection to an application on information from a particular source not
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listed above, we should let the applicant know the source of the information by giving
him the reference to the relevant website or dictionary.
Emblems protected under Article 6ter of the Paris Convention
Marks consisting of any emblems, abbreviations or names of states and international
intergovernmental organizations protected under the Paris Convention shall not in
general be registered without the authorization of the competent authorities or
organizations (see sections 64 and 65). Therefore, marks must also be searched against
the World Intellectual Property Organization (WIPO) notifications of protected
emblems etc. of states and international and intergovernmental organizations (see
section 66). Details of the protected emblems, abbreviations and names are notified to
the Permanent Representation of the Hong Kong Special Administrative Region of
China to the World Trade Organization by the International Bureau of the World
Intellectual Property Organization. WIPO’s Article 6ter database can be searched and
viewed at http://www.wipo.int/ipdl/en/search/6ter/search-struct.jsp. You may also
enter this WIPO website through the hyperlink at our website at
http://www.ipd.gov.hk/eng/electronic_services.htm.
Geographical designations
Section 11(1)(c) prohibits the registration of marks consisting exclusively of signs
designating geographical origin (see chapter on Geographical origins) and section
11(4)(b) prohibits the registration of marks likely to deceive the public (see chapter on
Classification).
But we should note that marks designating geographical origin can be registered as
collective or certification marks (see chapter on Certification and collective marks).
Geographical names and devices need to be identified by searches in geographical
dictionaries or on the Internet to ensure that a mark does not fall within the prohibitions
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of the Trade Marks Ordinance, i.e. it is not :
exclusively a geographical designation for the goods/services, e.g. a name or map
outline of a country; or
likely to deceive the public as to the geographical origin of the goods/services.
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