3. How long does the legal protection of a trade mark last under the Trade Marks Ordinance? What are the possible penalties for an infringement?
Once a trade mark is registered, the registration will last for a period of 10 years beginning on the filing date of the application for registration (see section 48 and section 49 of the Trade Marks Ordinance). Each renewal of registration, which requires the payment of a renewal fee, extends the registration for another period of 10 years. Thus, unlike copyrights and patents, as long as its registration is renewed, a registered trade mark may continue to be protected indefinitely.
Under section 18 of the Trade Marks Ordinance, the owner of a registered trade mark is entitled to sue for trade mark infringement if another person uses in the course of trade or business a trade mark identical or similar to the registered trade mark in relation to identical or similar goods or services. Where the registered trade mark is a well-known trade mark, the owner is entitled to sue for infringement if another person uses in the course of trade or business a trade mark identical to or similar to the well-known trade mark, whether or not in relation to identical or similar goods or services. (Note: For a more detailed explanation of "well-known trade mark", please refer to section 4 and schedule 2 of the Trade Marks Ordinance.)
Trade mark infringement is a civil wrong (i.e. the infringer would incur civil liability). In legal proceedings for trade mark infringement, relief (in the form of various kinds of court orders) by way of:
- damages (compensation);
- injunction (a court order forbidding the infringer to continue selling the goods under the trade mark in question);
- surrender the infringing goods; and
- surrender the profits derived by the infringer in respect of the infringing goods.
is available to the owner of the registered trade mark.