The Trade Marks Registry recently accepted the first movement mark for registration since the IPD published guidance two years ago. What lessons are there for applicants?

The Hong Kong Trade Marks Registry has accepted a movement mark for registration (number 302814561AA). This is the first of this kind within the jurisdiction after the Hong Kong Intellectual Property Department (IPD) introduced a new chapter in the Registry’s Work Manual to clarify the know-how of a movement mark registration in early 2014.

At the same time, the application form was also revised to add a new check box of “non-traditional mark”.

The application for the first movement mark was filed by FWD, a Hong Kong insurance company, and describes a sequence of movement consisting of 50 images. It was first registered in New Zealand, then Singapore and subsequently in Hong Kong.

Tips for application …

According to the Hong Kong Trade Marks Ordinance, a visual representation and a written description are required for filing a non-traditional trade mark. In addition, the Ordinance calls for additional information on the movement sequence particularly for movement marks.

A likely problem for a movement mark application lies in the mark description, said Serena Lim, senior associate at Hogan Lovells. Whether it describes a trade mark appropriately to give the public sufficient notice of the monopoly over the claimed “movement” can be a big concern. “An image or a word mark for instance is very clear to present to examiners, but it’s not as straightforward with a non-traditional trade mark, such as a movement, smell or colour”, she said.

“It’s a balancing exercise,“ explained Lim, “On one hand, one must describe the claimed movement with sufficient precision; on the other hand, the description should not be too narrow that whatever rights a mark owner gets is not enough to enforce against infringers.”

According to Eugene Low, a partner of Hogan Lovells, an orthodox mark normally takes six to nine months to be registered, but a movement mark may take longer. “This might be attributed to questions on whether the claimed sequence of movement is precise enough, for instance. In addition, if a movement mark application covers different classes, there are higher chances to have citations during the process,” said Low.

… and concerns on enforcement

“Movement marks are still very new to Hong Kong at this stage and there is no doubt that more of such marks will be filed given that forward thinking companies are continuously coming up with innovative ways to strengthen their brands,” said Vivian Poon, a partner of Deacons.

However, Poon raised a concern over how trade mark owners will enforce similar movement marks. It will be interesting to see how the courts assess them due to a lack of case law in relation on non-traditional marks. “A traditional mark will still be easier to enforce compared to movement marks which will consist of many images and frames,” she explained.

The city’s IP blueprint

Low said that the introduction of movement marks in the Registry’s Work Manual was to encourage non-orthodox marks in Hong Kong. He interpreted it as part of the government’s policy to follow the global IP trend as well as to promote Hong Kong as an IP trading hub in Asia Pacific area.

In recent years, many countries have begun to allow for registration of non-traditional trade marks. For example, China revised the Trademark Law two years ago and permitted sound mark registration; Japan also introduced non-traditional marks in its amended Trade Mark Act in 2015.

The IPD and the Hong Kong Trade Development Council are working to promote Hong Kong as an IP trading hub in Asia. “Before making one’s IP valuable, appropriate protection of IP rights must be available and for a trade mark, and a registration is the simplest proof of one's rights,” said Serena Lim.

“We need a developed and innovative IP protection system if we are going to compete with our competitors, Singapore for instance,” she added.

Stephy Tang, Hong Kong