As discussed in the Q3 2018 issue of our IP & TMT Quarterly Review, the Hong Kong Trade Marks (Amendment) Bill 2018 ("Bill") intends to introduce new provisions in light of Hong Kong acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ("Madrid Protocol")12. With updates to the trade mark law and registration procedure in Hong Kong becoming imminent, there is also a pressing need for the Hong Kong Intellectual Property Department ("IPD") to upgrade its IT system in order to better facilitate its integration with the World Intellectual Property Organization ("WIPO")'s Madrid System.
To this effect, the IPD has commissioned the development of a New Integrated IT System ("NIS"). It is expected that the NIS will be deployed and commence operations in February 2019.
Hong Kong is not the only one giving a "face lift" to its IT systems. On 27 November 2018, the PRC State Intellectual Property Office ("SIPO") introduced a new online trade mark service system ("SIPO's New Service System") to provide an updated and efficient platform for the public to search for trade mark-related documents.
NIS and Workshops by IPD
The launch of the NIS will help streamline the process of e-filing and e-searches for trade marks, designs and patents. It will enable trade mark searches to reveal an unlimited number of records, as opposed to the current search results, which can only show up to 1,000 records. This means that users will no longer need to restrict search criteria to generate statistics accurately and efficiently. The NIS will also introduce a new business-to-business e-filing capability that will enable bulk filings of applications and renewals of registrations in a single online process.
The IPD does not intend to run the old and new IT systems in parallel for a transitional period: the NIS will immediately replace the current system upon its launch. To prepare for the upcoming roll out and to enable easy assimilation of the NIS, the IPD offered workshops, such as the Focus User Group Meeting B2B (system to system) e-Filing service, and carried out User Acceptance Tests ("UAT"), in October 2018. Participants in the UAT workshops had a first-hand experience in navigating through the NIS, and the IPD has been busy fixing any bugs and issues identified during the UAT.
Due to the implementation of the NIS, the following services will be affected:
- E-filing service: the service will be suspended for about 10 days. During this period, the IPD will only receive forms and correspondences at the Public Service Counter or by mail, subject to the extended opening hours of the IPD;
- Online search service: the online search service will still be available but the accuracy of the data will be affected (i.e. showing data prior to the suspension period); and
- Official journal: the publication of the official journal will be suspended for two weeks for the acceptance of trade marks, five weeks for request to record or for grant of patents and four weeks for the registration of designs. Other notices published under the Trade Marks Ordinance (Cap. 559), Patents Ordinance (Cap. 514) and Registered Designs Ordinance (Cap. 522) will be suspended for two weeks.
SIPO's New Service System and SIPO's Future Plan
The PRC has also been busy by launching the SIPO's New Service System in November 2018, which provides an updated, transparent and efficient platform for the public to search for trade mark-related documents. The public can now quickly retrieve documents such as certificates of registration and priority documents with just the trade mark registration number or the registrant's name.
In light of the current increasing trend of using QR codes, the SIPO has also decided to incorporate QR codes on the trade mark registration certificates. This will enable the public to scan the QR code on a certificate, which would lead them to the SIPO's New Service System to help verify the certificate's content, validity and authenticity.
Given the rapid pace of development of technology and the growing demand for efficient solutions, the IPD's NIS and the SIPO's New Service System are to be welcomed. The system upgrades will enable the public to obtain and verify IP information online more quickly and efficiently
12. Please refer to our Asia IP & TMT Quarterly Review 2018 Q3 for further discussion on the Trade Marks (Amendment) Bill 2018 and the Madrid Protocol at https://www.mayerbrown.com/files/ Publication/8b32a036-3c99-40e1-8fba-6798a8159eab/Presentation/ PublicationAttachment/12b6cead-e1c2-4078-a9b2-7e7ec85bbe01/ ASI-IP-TMT-QuarterlyReview-2018Q3.pdf.
Visit us at www.mayerbrownjsm.com
Mayer Brown is a global legal services organization comprising legal practices that are separate entities (the Mayer Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; Mayer Brown JSM, a Hong Kong partnership, and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.
© Copyright 2018. The Mayer Brown Practices. All rights reserved.
This article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein. Please also read the JSM legal publications Disclaimer.