Trademark rights are strictly territorial. The Chinese Mainland and Hong Kong are under the same country. However, under the constitutional principle of "One Country, Two Systems", Hong Kong has established an independent trademark registration system pursuant to its Trade Marks Ordinance (Chapter 559) and common law precedents. On the other hand, the Chinese Mainland has established a civil law system of grant and confirmation of rights centered on the Trademark Law of the People's Republic of China and the Implementing Regulations of the Trademark Law. The two sets of systems differ significantly in examination logic, legal criteria, and practical operation. In this paper, key points from four dimensions are selected for in-depth analysis.
I. Comparison of Application Basis and Formal Examination
(I) Examination of Filing Language and Applicant's Name
The official languages of Hong Kong are Traditional Chinese and English, and the applicant may choose either as the filing language. However, in Hong Kong's examination practice, the principle of "language consistency" is applied. In this respect, if an applicant changes the filing language in a later application for the designated goods or services, that is, where the applicant has filed an earlier trademark application in Traditional Chinese but submits a later application for an identical or similar trademark in English, the examiner may cite the earlier trademark to reject the later application. This is because the examiner does not regard the applicant's name presented in Chinese and in English as referring to the same applicant. However, an applicant may present its name in both Chinese and English, for example, "一二三有限公司（YI ER SAN Co., Ltd.）". In such a case, if the applicant subsequently files trademark applications using either the Chinese or English version of its company name, both will be recognized as referring to the same applicant. In addition, attention should also be paid to the applicant's address. If an applicant files applications for identical or similar trademarks using different addresses, there is also a risk of "self-conflict".
By contrast, for trademark registration applications in the Chinese Mainland, only Chinese is accepted as the filing language. Although consistency in the applicant's name is required, no ex officio rejection mechanism is triggered due to minor discrepancies in the applicant's addresses. In practice, however, where such situations arise for applicants that are companies not in the Chinese Mainland, a rectification procedure is generally invoked to require that the address for the earlier trademark be updated to unify the applicant's name.
(II) Examination of Standardized Goods and Relevance of Goods
Currently, in terms of application models, both Hong Kong and the Chinese Mainland adopt the "multiple-class filing" system, meaning a single application may encompass multiple classes. However, no official fee reduction or exemption applies to the second and subsequent classes in multi-class applications in the Chinese Mainland. In practice, some applicants still prefer to file applications as "single-class filings". Regarding the examination of whether the goods and services applied for are standard and formal, the Chinese Mainland imposes strict and specific requirements on the description of goods/services. Selections must be made in accordance with the standard names in the Classification Table of Similar Goods and Services and the acceptable goods/service names published on the website of the Trademark Office of the China National Intellectual Property Administration. Non-standard goods/services are generally unavailable for selection and filing through the electronic filing system. By contrast, Hong Kong applies the Nice Classification but accepts much broader descriptions of goods/services. Hong Kong also permits the definition of broad goods by reference to functions, purposes, industries of application, etc., to distinguish them from goods registered by others. Provided that the description of goods/services is sufficiently clear, definite, and classifiable under the application class, it will be accepted by the authorities, with a relatively flexible examination approach.
It is worth noting that Hong Kong examiners review not only the formal legality of the designated goods/services in each class, but also the relevance between the selected goods and across multiple classes. Where a large number of goods items or classes are specified, and the goods or services cover a wide scope with no commercial relevance, the examiner may reject the application by invoking the provisions of the Trade Marks Ordinance concerning "bona fide intention to use". The applicant shall submit evidence to explain the actual use already made of the trademark, or set out how the applicant intends to use the trademark if approved for registration. If such an explanation is reasonable, the application may be accepted. Alternatively, the applicant may choose to delete the non-relevant goods or classes. It is evident that in the Hong Kong trademark system, a substantive examination stance is held on "trademark use". It not only requires the applicant to have a bona fide intention to use the trademark, but also mandates that such intention be consistent, in terms of business logic, with the scope of goods/services specified in the application, to prevent idle trademarks or excessive appropriation of registration resources.
II. Differences in Examination Criteria for Refusals on Absolute Grounds
Absolute grounds relate to the inherent distinctiveness of a trademark and public order. Although the provisions of the Chinese Mainland and Hong Kong are conceptually similar, significant differences exist in their examination scales.
(I) Registrability of Geographical Elements
Article 10 of the Trademark Law of the People's Republic of China explicitly provides that marks "identical with or similar to the nation name of any foreign country shall not be used as trademarks, except with the consent of the government of that country; and that "the place names of the administrative districts at the level of county or above or the foreign place names known by the public may not be used as trademarks".
The examination criteria of Hong Kong are relatively lenient. Where a trademark application contains the name of a country or city, it may be rejected under the "deceptive" provision. However, if the applicant is indeed from that country or city and declares that all the applied-for goods originate from that region, approval for registration of such a trademark may be accepted. For example, in the trademark "
", the term "秋田" refers to "Akita City in northern Japan". The trademark applicant, AKITAKENHAKKO KOGYO CO., LTD., is a company based in Akita City, Japan. The applicant has defined the applied-for goods to "gin, a product of Akita City, Japan", thereby securing registration of the trademark.
(II) Provisions Concerning Public Order and National Security
Both the Chinese Mainland and Hong Kong exclude from registration marks that are contrary to public order or morality. The Trade Marks Registry of Hong Kong made a significant update to the chapter on "Absolute Grounds for Refusal" in its Work Manual in February 2025, expanding the grounds for refusal to include marks that prejudice national security, sovereignty or territorial integrity, or that contravene the Law of the People's Republic of China on Safeguarding National Security in the Hong Kong Special Administrative Region and/or the Safeguarding National Security Ordinance. Meanwhile, new guidelines have been added to refuse commodification of well-known tragic incidents or other shocking and distressing events. The provision regarding "other adverse effects" in Item (8) of Paragraph 1 of Article 10 of the Trademark Law of the People's Republic of China serves a similar catch-all function. In recent years, severe crackdowns have been imposed on the bad-faith registration of the names of heroic figures and major events.
III. Examination on Relative Grounds: From "Right Conflict" to "Market Coexistence"
Examination on relative grounds, which determines whether an applied-for trademark conflicts with another person's earlier rights (including earlier trademark rights, trade name rights, copyright, etc.), is an area where the examination systems of the Chinese Mainland and Hong Kong differ considerably.
(I) Ex Officio Examination of Trade Name Rights
The trademark examination in the Chinese Mainland mainly relies on comparisons against the database of applied-for and registered trademarks. Trade name rights can generally only be raised as a basis for opposition or invalidation, and are rarely invoked by examiners proactively to refuse applications during the substantive examination stage.
By contrast, Hong Kong's examination practice demonstrates a stronger sense of "ex officio intervention". The examiner not only searches earlier applied-for or registered trademarks but also proactively checks whether the mark constitutes another person's trade name using Internet search engines and other tools. Even if such a trade name has not been registered as a trademark, the examiner may refuse the later application once it is determined to be an earlier trade name right with a reputation. The legal basis for this practice is to prevent consumers from being confused about the origin of goods or services, yet it also grants the examiner considerable discretion.
(II) Ways to Overcome Cited Trademarks
When applicants from the Chinese Mainland face cited trademarks in an official refusal notice, their common strategies are to argue that the trademarks of both parties do not constitute similar trademarks on similar goods, or to file a non-use-based revocation against the cited trademarks on the grounds of three consecutive years of non-use.
However, in Hong Kong, a more noteworthy argumentative strategy is honest concurrent use. Where an applied-for trademark conflicts with an earlier similar trademark, the examiner may be requested to exercise discretion to approve the registration if it can be proven that the trademarks of both parties have a long-standing history of honest concurrent use in Hong Kong and are unlikely to cause actual confusion. However, this mechanism imposes a high burden of proof. It generally requires evidence of extensive and continuous use of the cited trademarks for many years before the filing date, to be submitted as a notarized statutory declaration.
Furthermore, regarding the revocation system for non-used trademarks, in the Chinese Mainland, once a cited trademark is successfully revoked, the doctrine of change of circumstances may apply, such that the earlier trademark no longer constitutes a barrier to trademark registration. In Hong Kong, however, when determining whether a cited trademark constitutes a barrier to earlier rights, the examiner strictly takes the legal status of the cited trademark as of the filing date as the basis. If the cited trademark is valid and not subject to revocation at the time of filing (e.g., its registration period is less than three years), the original trademark application will still be maintained as refused even if the cited trademark, as remaining valid at the time of the original application, is successfully revoked subsequently. The applicant will be required to file a new application. A revocation decision shall take effect as from the date of filing the revocation application, or from an earlier date where the grounds for revocation exist as at such earlier date. Therefore, when initiating revocation proceedings in Hong Kong, the revocation applicant will generally claim a proposed invalidation date for the trademark subject to revocation, which may be the date on which registration reaches three years, the filing date of the revocation application, or another point in time, provided that such date must not be earlier than the third anniversary from the actual registration date. This principle reflects the common law's high regard for legal certainty.
(III) Differences in the Effect of a Letter of Consent
Where the applied-for trademark is similar to an earlier trademark, the Chinese Mainland and Hong Kong hold distinctly different attitudes towards the "letter of consent/coexistence agreement" reached by the parties.
For trademark examination practices in the Chinese Mainland, a prudent attitude is adopted towards a letter of consent. This is because, in trademark grant and confirmation proceedings under the legal system of the Chinese Mainland, the public objective of "preventing consumer confusion" is prioritized over "party autonomy", aiming to protect consumer perception and maintain clarity and stability in the trademark regime under the unified national market.
In Hong Kong, a letter of consent has a highly persuasive effect and is tantamount to "unconditional" acceptance. Even if an applied-for trademark is identical to an earlier trademark, the Intellectual Property Department of Hong Kong will generally accept a letter of consent issued by the owner of the earlier trademark, provided that the applicant can submit it and overcome the refusal, unless such a letter of consent is fraudulent or contrary to public policy.
IV. Special Systems: Series of Trademarks and Defensive Trademarks
Under Hong Kong trademark law, distinctive systems originating from the United Kingdom are retained, whereas such systems are absent from the legal regime of the Chinese Mainland.
(I) Series of Trademarks
Hong Kong allows up to 4 similar variations to be filed for registration as a single "series of trademarks". The trademarks within the series must resemble each other in the material particulars thereof. Differences between the trademarks in a series are limited only to matters that do not materially affect the distinctiveness of the trademarks, such as variations in typeface, conversion between simplified and traditional Chinese characters, color differences, or upper/lower case variations. This reduces the cost for enterprises to register multiple similar defensive trademarks. The Chinese Mainland does not have a "series of trademarks" system; each trademark must be filed and registered as an individual mark.
(II) Defensive Trademarks
For a mark that is registered in Hong Kong and has become a well-known trademark, its owner may register a "defensive trademark" in classes of goods or services where it is not used to prevent dilution of the well-known trademark's distinctiveness. Registration of a defensive trademark does not require an intention to use. However, if an applicant seeks to register a sign as a defensive trademark, it must submit evidence by way of a statutory declaration or affidavit to prove that the claim that the sign is well-known to a substantial degree in Hong Kong is true. Although the Chinese Mainland law provides cross-class protection for well-known trademarks, it does not establish a special "defensive trademark" registration system. Instead, right holders are required to actively file oppositions or invalidation applications based on the risk of infringement.
In summary, although the trademark examination systems of the Chinese Mainland and Hong Kong share certain similarities, including the Nice Classification and some substantive law principles, they differ significantly in practical operation due to distinct legal traditions and market environments. The Chinese Mainland examination places greater emphasis on rigorous legal logic and a clear definition of the boundaries of rights, stressing consistency between the proactive examination and the application of the law. Hong Kong examination, by contrast, is more market-oriented and focused on fairness and equity. Whether in the proactive incorporation of trade name right searches, respect for letters of consent, or the establishment of systems for defensive trademarks and trademark series, it fully reflects the pragmatic approach of the common law system.
For trademark legal practitioners, when handling Hong Kong-related or cross-border trademark matters, it is necessary to abandon the inertial mindset of adopting a "one-size-fits-all approach". Before entering the Hong Kong market, one should fully assess the risks associated with trademark elements, maintain consistency in multilingual applications, preserve early evidence of use properly, and make good use of Hong Kong's unique systems, including letters of consent and a series of trademarks, to maximize the effectiveness of brand protection.
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