There is often confusion between the different types of intellectual property rights, what they protect, and when it’s ok to use “patent pending”, “patented” or “registered”. “I need to copyright my name” or “trade mark my idea” are just a couple of examples.
To clarify, a patent protects the way something works or is put together. A trade mark protects a sign that performs the function of a “badge of origin”. A registered design protects the appearance of a product or part of a product.
So, with that out of the way, when are you allowed to use the terms “patent pending”, “patented” or “registered” to indicate your invention, aesthetic creation, or brand name is protected or pending protection by an intellectual property right? What is correct product marking?
For the purposes of this article, we’ll focus on product marking in Hong Kong, but similar provisions are likely to apply in other jurisdictions.
When a patent application is pending, it means it’s awaiting, or undergoing, examination to determine whether a patent for the invention may be granted.
If you’ve applied for a patent for an invention in Hong Kong (whether a standard patent or a short-term patent), it’s permitted to apply the term “patent pending” to the article embodying the invention (or its packaging) which is sold in Hong Kong.
For example, if you’ve filed a Hong Kong short-term patent application for an invention for a new type of motor for a vacuum cleaner, you may apply “patent pending” to the motor, vacuum cleaner, or the vacuum cleaner packaging and sell the product in Hong Kong without any offence.
However, if you haven’t applied for a patent for your invention, or your patent application is not for Hong Kong, or your patent application has been withdrawn or deemed withdrawn, you cannot use the term “patent pending” in relation to your product when sold in Hong Kong.
But this doesn’t just apply to the term “patent pending.” It applies to anything expressing or even implying that an application has been made for a patent in Hong Kong when it has not. This includes terms such as “patent applied for”, “已申請專利”, or “專利申請待決”.
It’s an offence to make such an unauthorised claim that a patent for your invention is pending when it isn’t. In such circumstances, unless you can prove that you used due diligence to prevent the commission of such an offence, you may be liable on summary conviction to a fine at level 3 (HK$10,000).
Upon approval by the Hong Kong Intellectual Property Department, a patent application may proceed to the grant stage. Notice of grant of a patent is published in an official journal and a grant certificate is issued to the patent proprietor. Until this occurs, it’s not possible to enforce the patent against unauthorised third parties.
Similar provisions apply in relation to use of the term “patented” or anything similar which indicates a product which is sold in Hong Kong is patented when it isn’t. Accordingly, it’s important to understand the distinction between a pending patent application and a granted patent.
So, if you don’t have a granted patent in Hong Kong for your invention, you cannot sell a product embodying or incorporating the invention with an indication that it’s “patented”.
As above, it’s an offence to falsely represent that a product sold in Hong Kong is patented when it isn’t. This includes terms such as “patent”, “專利”, “享有專利”, or anything expressing or implying that an article is a patented product.
Again, unless you can prove that you used due diligence to prevent the commission of such an offence, you may be liable on summary conviction to a fine at level 3 (HK$10,000).
Care should be taken to ensure your products are correctly marked and that this reflects the current situation of your patent portfolio.
Trade Mark Symbols ™ and ®
In terms of trade mark marking, you’ll frequently see the trade mark symbols, ™ or ®, applied to the ends of brands. Here are just a couple of famous examples:
Have you ever wondered what the difference is between the two trade mark symbols?
The trade mark indicator ™ can be used freely and without offence to indicate a brand or slogan is being used as a trade mark because this indicator does not imply a trade mark is registered. It’s often (but not always) used in relation to signs that, at least initially, may not meet the requirements for registration as a trade mark.
For example, company slogans or straplines will often struggle to meet trade mark registration requirements because they aren’t sufficiently distinctive to perform the function of a badge of origin. In these circumstances, a company may use ™ to indicate to third parties the sign is being used as a trade mark and to provide notice of a claim of common-law rights.
It’s the ® symbol that can get you into trouble because this represents your sign is a registered trade mark.
Any person who falsely represents that a sign is a registered trade mark when it isn’t or that certain goods or services are covered by a registered trade mark when they’re not, knowing or having reason to believe that the representation is false, commits an offence and is liable on conviction to a fine at level 3 (HK$10,000).
This includes use of the word “registered”, “註冊”, or any other word or symbol that expresses or implies a sign is registered in Hong Kong when it isn’t.
Correct product marking practices must also be used in respect of products in which the aesthetics are important. A good design can be as important, if not more important, than a trade mark or patent when it comes to selling products to consumers. A nice design stands out from the crowd and can be the difference between success and failure.
Companies that realise the importance of good design will often seek to register their designs. Classic examples of products that might be frequently protected by registered designs include watches, handbags, and cars.
Again, incorrect product marking and improper use of a term which implies a product sold in Hong Kong is protected by a registered design when it isn’t, can land you in hot water.
As with patents and trade marks, any person who falsely represents that a design applied to any article sold by him is registered in respect of that article commits an offence and is liable on summary conviction to a fine at level 3 (HK$10,000) unless the accused can prove that he used due diligence to prevent the commission of the offence.
This includes improper use of the term “registered”, “註冊”, or anything expressing or implying that a design applied to the article is registered in respect of that article.
Correct product marking is an essential aspect of product development and marketing. Inventors, designers, and marketers should work closely with their legal department or intellectual property agents to ensure any indications used in respect of their products are accurate and reflect the current state of their intellectual property portfolios. As outlined above, failure to adhere to good product marking practices could quickly become very expensive and troublesome!