At the time of writing, the official Hong Kong trademark renewal fees are HK$2,670 (about US$340) for the first class and HK$1,340 (about US$170) for each additional class included in the same Hong Kong trademark registration. The official fee for late payment of Hong Kong trademark renewal fees is HK$500 (about US$64).
In Hong Kong, trademark renewal fees must be paid every 10 years to maintain a Hong Kong trademark registration in force. This is in line with most other countries in the world. But how is the deadline calculated?
Hong Kong Trademark Renewal Fees Deadline
According to section 49 of the Hong Kong Trade Marks Ordinance Cap. 559, a Hong Kong trademark shall be registered for a period of 10 years beginning on its date of registration.
A Hong Kong trademark registration may then be renewed for further periods of 10 years in accordance with section 50 of the Hong Kong Trade Marks Ordinance Cap. 559. This states that a request to renew a Hong Kong trademark registration must be made, and a Hong Kong trademark renewal fee paid, before the expiry of the registration.
In other words, the deadline for paying the Hong Kong trademark renewal fees is the last day of the 10-year period beginning on the date of registration or the day after the previous 10-year period (depending on the age of the Hong Kong trademark registration).
When calculating Hong Kong trademark renewal fees deadlines, it’s important to note that the date of registration is taken to be the filing date (not the priority date) of the Hong Kong trademark registration, as stated in section 48 of the Hong Kong Trade Marks Ordinance Cap. 559.
Let’s look at some examples to help understand the calculation of the deadline.
Example 1 – Normal Case
Date of Priority: 3 April 2013
Date of Filing: 30 August 2013
Date of Registration: 30 August 2013 (same as date of filing)
Actual Date of Registration: 28 July 2014 (the date when the examination was completed, and the trademark was finally registered)
In this case, the initial 10-year period is calculated from the ‘Date of Registration’ which is the same as the ‘Date of Filing’. This date of registration should not be confused with the ‘Actual Date of Registration’ which is the date on which the application process was completed, and details of the Hong Kong trademark were entered in the Hong Kong trademark register. So, in this example, the deadline for payment of the first Hong Kong trademark renewal fees would be determined as follows:
Date of Registration: 30 August 2013
Expiry of 10 Year Period: 29 August 2023
Therefore, the Hong Kong trademark renewal fees for this case would be payable by 29 August 2023. The next renewal fee would be payable by 29 August 2033 (10 years from the previous expiry date) and so on.
Example 2 – Special Case
In the unlikely event a Hong Kong trademark application has been pending for a long time and is finally registered after, or within 6 months before, expiry of the initial 10-year period, the Hong Kong trademark renewal fees deadline is calculated differently. In this special case, the Actual Date of Registration comes into play. Take the following example:
Date of Priority: 3 April 2008
Date of Filing: 30 August 2008
Date of Registration: 30 August 2008 (same as date of filing)
Actual Date of Registration: 2 July 2018
In these unusual circumstances, rule 33 of the Hong Kong Trade Mark Rules provides that the Hong Kong trademark renewal fees may be paid not later than 6 months after the actual date of registration.
Therefore, in this case, the Hong Kong trademark renewal fees would be payable by the deadline of 2 January 2019. However, subsequent Hong Kong trademark renewal fees would be payable in accordance with the normal calculated deadlines i.e. 29 August 2028 and so on.
What is Required for Hong Kong Trademark Renewal?
To renew a Hong Kong trademark registration, a request for renewal must be submitted within the applicable deadline to the Hong Kong Intellectual Property Department (IPD) using official form T8. The Hong Kong trademark renewal fees must also be paid within the deadline.
When Can a Request be Submitted, and the Hong Kong Trademark Renewal Fees be Paid?
Since Hong Kong trademark renewal fees are subject to change, the Hong Kong IPD allows a 6-month window in which a request for renewal can be submitted and the fees paid. Afterall, the official fees are likely to be quite different in 10 years if only due to inflation! So, it wouldn’t make much sense to allow renewal at any time within a given 10-year period.
Accordingly, the Hong Kong trademark renewal fees may only be paid within a 6-month period ending on the date of expiry of the registration. So, if the renewal fee deadline is 2 January 2019, a request for renewal may be submitted together with payment of the Hong Kong trademark renewal fees during the period from 3 July 2018 until 2 January 2019.
Is There a Grace Period for Payment of the Hong Kong Trademark Renewal Fees?
Whilst the time limit for payment of the Hong Kong trademark renewal fees cannot be extended, it is possible to request renewal and pay the renewal fees late within a 6-month grace period.
Therefore, in the event Hong Kong trademark renewal fees are not paid within the normal deadline, the Hong Kong trademark registration can still be renewed as of right within the 6-month grace period, subject to payment of an additional late payment fee.
Accordingly, the Hong Kong trademark renewal fees may be paid late at any time within the 6-month grace period ending on the date of expiry of the registration. So, if the renewal fee deadline is 2 January 2019, the deadline for late payment of the Hong Kong trademark renewal fees would be 2 July 2019.
Can a Hong Kong Trademark Registration be Restored?
If the owner of a trademark registration fails to pay the Hong Kong trademark renewal fees within both the normal deadline and the grace period deadline, the Hong Kong IPD will remove the trademark from the register and publish a notice of the removal and date of the removal in the official journal.
However, even then, all is not lost. It is still possible to restore a Hong Kong trademark registration, provided the Hong Kong IPD can be persuaded it is just to do so. Therefore, it’s important to note that restoration is not as of right (i.e. not guaranteed).
A request for restoration of a Hong Kong trademark registration must be submitted within a non-extendible deadline of 6 months after the date of the removal from the register. So, if a Hong Kong trademark registration was removed on 20 January 2019, a request for restoration would have to be submitted by 20 July 2019.
A request for restoration requires completion of official form T8 with details of the Hong Kong trademark registration to be restored, and payment of the missed Hong Kong trademark renewal fees together and appropriate restoration fees.
At the time of writing, the official fee for restoration is HK$4,000 (about US$510) for the first class and HK$1,340 (about US$170) for each additional class.
A request for restoration should also be accompanied by reasons as to why the Hong Kong trademark renewal fees were not timely paid.
Provided the request for restoration is filed within time and all required fees are paid, the Hong Kong IPD will decide whether it is just to allow the restoration. Generally, the Hong Kong IPD will allow a request for restoration if the owner can demonstrate it had a proper system in place for renewing the registration and an application to restore was filed as soon as practicable after the omission became apparent.
Therefore, provided an owner genuinely missed paying the Hong Kong trademark renewal fees despite having systems in place to avoid this from happening, it ought to be possible to restore a Hong Kong trademark registration. Obviously, restoration should not be relied upon to delay renewal fee payments.
If you are interested in renewing your Hong Kong trademark registrations and would like further information, please do not hesitate to contact us.
