Welcoming Hong Kong to the Madrid Protocol

Arent Fox

Arent Fox

Hong Kong is gearing up to implement the international registration system under the Madrid Protocol in the next two years.

International Protection for Trademarks

On June 19, 2020, the Trademarks (Amendment) Ordinance, which amended certain trademark laws in Hong Kong, provided a basis for the application of the Madrid Protocol in Hong Kong. Once in effect, applicants can apply to extend protection of their International Registration to Hong Kong without filing a separate application in that country.

While there is no “worldwide” trademark registration system, the Madrid System can be a relatively convenient and cost-effective way to register trademarks around the world for brands with a worldwide footprint. Under the Madrid system, rights holders can file a single application and pay one set of fees to apply for protection in over 100 countries. The centralized system of registration allows rights holders to expand, renew, and maintain their international portfolios with relative ease.

The Madrid system is governed by two treaties called the Madrid Agreement and the Madrid Protocol. Only sovereign states or qualified intergovernmental organizations, like the E.U., may become contracting parties to the Madrid Protocol. China, as a sovereign state, is a contracting party to the Madrid Protocol. However, as a special administrative region of the People’s Republic of China, Hong Kong could not become a contracting party. For brand owners, this meant that an International Registration filed under the Madrid Protocol that designated China only provided an extension of protection for the mark in China, but not Hong Kong. As such, brand owners taking advantage of filing under the Madrid Protocol would have to file a separate application for their mark in Hong Kong.

Although Hong Kong will be a designated country under the Protocol, since the Chinese government considers Hong Kong to be part of China, a Chinese national or corporation domiciled in Hong Kong cannot extend protection to China through the Madrid Protocol. Similarly, a Chinese national or corporation domiciled in mainland China may not extend protection to Hong Kong. Accordingly, applicants that fall into either category will need to file separately in Hong Kong and China to have protection.

Next Steps

In light of these upcoming changes in Hong Kong, companies with brand expansions in the next two years that use the Madrid System may wish to take advantage of this development.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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