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Protecting Trademarks “Hong Kong-style”

The INTA Bulletin interviewed Peter Kam-fai Cheung, Director of Intellectual Property, Registrar of Patents, Designs and Trademarks for the Hong Kong Intellectual Property Department (HKIPD) in December of last year. The HKIPD is co-organizing the Unreal Student Session on Tuesday from 12:00pm to 4:00pm in the Hong Kong Convention & Exhibition Center.

What are the biggest challenges you face?

Despite all the public education and strategic marketing we have done, trademarks and IP generally, as a relatively new and non-obvious knowledge system that is capable of capitalization, are not readily identified and recognized. My biggest challenge has been to highlight the value of IP and to build necessary and sufficient support systems so as to nurture the development of various elements in the IP ecosystem.

Are there particular changes to the trademark laws that you would like to see enacted, and is there any pending IP legislation that might help?

I think trademark proprietors should take a multisensory approach in connecting their goods and services with the customers. They should use and acquire more nontraditional marks. One obstacle regarding registration of nontraditional marks is the requirement of graphical representation, and I think permissible international legal norms do not anticipate the future and should be removed at the domestic level. However, that is not generally perceived as a deficiency, and so such a bill is not in the pipeline.

What steps has the government taken in recent years to improve IP protection?

Hong Kong IP protection is in line with international standards and norms. Hong Kong registered its first trademark in 1874. The Hong Kong IP system is so mature that we have a Prevention of Copyright Piracy Ordinance. Policy, law and enforcement aside, the government is keen to foster the development of international IP trading via Hong Kong. Details can be found here: http://www.ipd.gov.hk/ eng/IP_trading.htm. (See box for more on IP trading in Hong Kong).

Can you discuss any partnerships or events you’re involved with to help increase awareness about IP rights?

IPD has continued its territory-wide campaigns such as the “No Fakes Pledge” Scheme and the “I Pledge” Campaign to encourage pride in the selling and buying of genuine goods among Hong Kong retailers, tourists and local consumers.

IPD launched the “No Fakes Pledge” Scheme in 1998. It aims to enhance consumer confidence in Hong Kong and to strengthen the City’s reputation as a “Shopping Paradise” for genuine products. It encourages participating retail merchants to set a good example by pledging not to sell or distribute counterfeit or pirated products, thus establishing and upholding honest and trustworthy trading practices. In 2013, nine trade associations with 808 retail merchants, covering 6,426 outlets in Hong Kong, took part in the “No Fakes Pledge” Scheme.

All retail merchants participating in the “No Fakes Pledge” Scheme will post the “No Fakes” stickers and tent cards in their shops. With the “No Fakes” logo, tourists and consumers can easily identify reliable retailers and shop with confidence. In 2013, IPD developed a “No Fakes Pledge” Shop Search mobile application to facilitate tourists’ and consumers’ searching of shop information and locating conveniently of all participating retail merchants in the Scheme.

With the help of strong marketing and growing participation, the Scheme will further distinguish honest and reliable retail merchants, thereby gaining the confidence and trust of consumers.

Are there any major trademark-related projects underway within the Office that you would like to highlight? Specifically, are there any major technology changes/projects in the works?

“Hong Kong” literally means “fragrant harbor.” A major IPD trademark-related project that has been underway is called “Fragrant Hong Kong.” The goal of the project is to raise societal awareness by promoting aroma marketing to connect customers with marks and brands, and to set possible standards on smell classification and the application and registration of smell marks. We have done 2013 action items in spring, summer and autumn, and a December event is coming up. More information is available here: http://www.ipd.gov.hk/eng/Fragrant_Hong_Kong.htm.

IPD also will host the 6th Global Multisensory Brand Forum in Hong Kong on May 9, 2014.

Last, IPD is conducting a feasibility study on redeveloping the existing electronic processing systems for the Trade Marks, Patents, and Designs Registries, and the e-Filing System and Online Search System. In the feasibility study, an integrated system is proposed to replace the existing systems, using Web-based technologies supporting popular Internet browsers, smart phones and tablet computers, together with other new technologies such as 2-D barcode, OCR, enhanced e-form, e-payment gateway, etc. The integrated system is planned to be launched by phases in 2017.

What advice or message do you have for trademark owners looking to expand into Hong Kong?

Think about the possibility of trading your trademarks via Hong Kong–based IP trading platforms and marketing nontraditional marks from Hong Kong.

What one major achievement would you like to have accomplished for the Office by the end of your term?

I would like to have made the trading of international IP (“Hong Kong–style”) more visible and tangible in the world scene.

Asia IP Exchange – The Global Online Marketplace for Intellectual Property

The Asia IP Exchange (www.asiaipex.com) is a free online platform developed and managed by the Hong Kong Trade Development Council and showcasing IP rights around the globe in an effort to facilitate international IP trade to global IP players.

As Asia’s largest online IP portal, AsiaIPEX has formed alliances with 23 local and overseas strategic partners with a listing of over 25,000 tradable IP rights.

For more information, contact the Hong Kong Trade Development Council:

Telephone: (852) 2584 4013

Email: asiaipex@hktdc.org

IPD: The Numbers

• Official Name: Intellectual Property Department, Government of the Hong Kong Special Administrative Region, People’s Republic of China (IPD).

• Name of Head: Peter Kam-fai Cheung, Director of Intellectual Property, Registrar of Patents, Designs and Trademarks.

• Date Appointed/Length of Term: April 12, 2011, to May 14, 2014

• Location: Intellectual Property Department, 25/F Wu Chung House, 213, Queen’s Road East, Wanchai, Hong Kong

• Position Within the Government: Works with the Secretary for Commerce and Economic Development.

• Madrid Status: “Not yet.”

• Number of Trademark Examiners: 61

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