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Workshop – How to avoid deficiencies in trademark applications?

Workshop – How to avoid deficiencies in trademark applications?. 13 May 2005. Objectives of the workshop. Proper protection of IP rights with scope of rights clearly defined in the trademark application Do it once Do it right. Outline. We will run pass you:

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Workshop – How to avoid deficiencies in trademark applications?

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  1. Workshop – How to avoid deficiencies in trademark applications? 13 May 2005 Intellectual Property Department, Hong Kong SAR Government

  2. Objectives of the workshop • Proper protection of IP rights with scope of rights clearly defined in the trademark application • Do it once • Do it right Intellectual Property Department, Hong Kong SAR Government

  3. Outline • We will run pass you: • common pitfalls (applicable to paper and e-filing) • points to note in e-filing • way forward Intellectual Property Department, Hong Kong SAR Government

  4. Deficiency checking • Deficiencies affecting filing date • Deficiencies not affecting filing date • Remedied in 2 months Intellectual Property Department, Hong Kong SAR Government

  5. Common pitfalls • The most common one is specification Intellectual Property Department, Hong Kong SAR Government

  6. Classification of goods and services Before filing, please check • Nice classificationhttp://www.wipo.org/cl For further reference • UK Patent Office’s Trademark Classification searchhttp://www.patent.gov.uk/tm/dbase/goodsclass/index.htm • IPD online searchhttp://ipsearch.ipd.gov.hk/trademark/jsp/index.html Intellectual Property Department, Hong Kong SAR Government

  7. Specification – Example of wrong class no. “playing cards” • Class 16 X • Class 28  Intellectual Property Department, Hong Kong SAR Government

  8. Specification – Example of imprecise terms “retail services” • not acceptable • “retail services by electronic means” acceptable Intellectual Property Department, Hong Kong SAR Government

  9. Specification –Example of repetitive terms computers; computer peripheral apparatus; printers; magnetic discs; modems; computers and computer software Intellectual Property Department, Hong Kong SAR Government

  10. Specification –Examples of additional phrases Examples of additional phrases X “all other goods in this class” X “all other related services” X “and supporting services” Intellectual Property Department, Hong Kong SAR Government

  11. Specification – language requirement • Follows the language of proceedings • For applications filed in Chinese, use of Chinese / English terms in the Chinese version of the Nice Classification is acceptable T恤衫, 非醫用X光防護設備 Intellectual Property Department, Hong Kong SAR Government

  12. ABC ABC Trademark Representation • Unclear representation • Representations in T2 and T2S are not identical Intellectual Property Department, Hong Kong SAR Government

  13. Convention Priority Claim • Inaccurate priority date Year 2004  Year 2005 Intellectual Property Department, Hong Kong SAR Government

  14. Language in completing application form • Either English or Chinese Intellectual Property Department, Hong Kong SAR Government

  15. IPD websitehttp://www.ipd.gov.hk • Registry Work Manual • FAQ • How to apply to register a trademark in the Hong Kong SAR? Intellectual Property Department, Hong Kong SAR Government

  16. Points to note in e-filing Intellectual Property Department, Hong Kong SAR Government

  17. Representation in colour (1) Colour claim application • before filing, open the JPEG file to check the colours claimed are clearly shown Intellectual Property Department, Hong Kong SAR Government

  18. Representation in colour (2) For glossy, golden or silver mark, • use software e.g. photoshop, paintbrush to enhance the colour • use digital camera Intellectual Property Department, Hong Kong SAR Government

  19. Image before enhancement Intellectual Property Department, Hong Kong SAR Government

  20. Image after enhancement Intellectual Property Department, Hong Kong SAR Government

  21. Sample Trademark Clarity of image Intellectual Property Department, Hong Kong SAR Government

  22. ISO country codes:applicant’s address (1) Intellectual Property Department, Hong Kong SAR Government

  23. ISO country codes: applicant’s address (2) • Manual mapping of ISO and the registry’s internal codes in the computer systemExample: • ISO: UNITED STATES • Internal: UNITED STATES OF AMERICA • However, names of ISO countries are correctly reflected in online search, Hong Kong Intellectual Property Journal and registration certificate Intellectual Property Department, Hong Kong SAR Government

  24. ISO country codes:convention priority claim • “European Community” does not exist in ISO country codes • Use cover letter (PDF) if you wish to claim “European Community” Intellectual Property Department, Hong Kong SAR Government

  25. Remedy deficiencies • Take action to remedy deficiencies in e-mode, avoid a mixed mode of e-filing and paper filing Intellectual Property Department, Hong Kong SAR Government

  26. Way forward • Your views on how to assist you to get the application right upfront • Deeper and broader e-commerce • interactive features (DIY) for change of name, address, address for service, agent’s address and renewal Intellectual Property Department, Hong Kong SAR Government

  27. Q & A Intellectual Property Department, Hong Kong SAR Government

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