intellectual property

Trademark & Copyrights Worldwide

A trademark is any sign which allows for a company’s products or services to be easily recognized and distinguished from its competitors.  Such a sign can be in words, designs, letters, characters, colours, sounds, smells, shape of goods, packaging, or a combination of the above.  Trademark registration entitles the owner of the trademark to use it exclusively in relation to the specified goods and services for which the mark is registered.  Another’s use of the trademark without the owner’s consent could make him or her liable for damages.

The application process to register a trademark is often considered straight forward, however, three complications should be noted.  First, each distinct mark involves a separate registration so each variation of a company name, logo or slogan would require submitting a separate application if each variation was to be protected.

Second, for registration purposes, a trademark is applied to goods and services according to a classification system established by the international protocol: currently over 45 classes have been agreed and organised. Consequently, every mark requires a separate application for protection under each class claimed.

Finally, registration in Hong Kong only protects the trademark in Hong Kong.  Protection in Mainland China, Macau and other jurisdictions requires distinct applications in each respective jurisdiction. Weir & Associates advises our clients to therefore decide which marks are truly worthy of registration and in which markets protection should be sought.

Weir & Associates has expertise in assisting clients with processing trademark registrations. Our firm’s lawyers are qualified in multiple jurisdictions including Hong Kong, and the Asia Pacific Region, while our international affiliates and associations give us a global reach. Using our associations and worldwide network of law firms, we can coordinate trademark registration throughout the world.

Media & Entertainment Law Services

Weir & Associates has long been involved in the rapidly developing field of media and entertainment law.  Our practice includes dealing with matters relating to film, television, music and music publishing, artist and talent agreements, licensing and distribution, sports and event promotion, advertising and media, book and magazine publishing, hospitality and leisure, financing and production. We have represented clients across industries including television, cinema, film production, radio, publishing, media, music, advertising and marketing.

Our expertise is not restricted to domestic matters, but extends to cross-border transactions such as joint ventures, mergers, tax structures and intellectual property protection programmes. Our litigators handle complex court or administrative proceedings and arbitrations on civil matters and regulatory prosecutions relating to matters previously described.

We are able to provide such an array of services as we are able to utilize the expertise of our corporate-commercial, intellectual property and litigation departments to serve large multinational companies, private corporations and individuals.  We have lawyers qualified to practice in various jurisdictions including Hong Kong, the United Kingdom, Australia, Canada, Singapore and Sri Lanka.  We also have working associations with foreign law firms in Asia, Australia, Europe and North America.  Importantly, within Mainland China, we have associations with law firms nation-wide including Beijing, Guangzhou, Shanghai, Shenzhen and Xiamen.

Intellectual Property Rights

)As our society becomes increasingly information-based, protecting one’s intellectual property rights through proper licensing and exploitation arrangements has never been more important.  Weir & Associates, working in partnership with its international affiliates as necessary, provides comprehensive services to maximize its clients’ protection under relevant local law.

Our intellectual property lawyers practise as litigators and non-contentious lawyers to provide practical and value-added advice to our clients.  We can draw on the substantial power of our firm’s commercial litigation and corporate practice groups along with utilizing the skills of our specialist groups in corporate structuring, finance, tax and employment.

Non Contentious Services

We provide a range of non-contentious intellectual property related services including:

  • Trademarks, patents and design registrations in Hong Kong, China or internationally (providing seemless coordination across multiple markets);
  • Copyrights and related infringements;
  • Technology transfer agreements;
  • Licensing agreements, including contractual and commercial exploitation of  intellectual property and distribution licensing;
  • Acquisition and disposals of businesses with intellectual property rights; and
  • Dispute resolution.

(See also information in our other areas of practice.)

Furthermore, our substantial experience in business acquisitions allows us to provide useful input in structuring and negotiating arrangements for subsequent transfer or licensing of intellectual property rights throughout the world.

For existing companies, we work closely with trademark and patent agents together with localized lawyers throughout the world to ensure clients have to availability to achieve consistent protection for their intellectual property.  We have experience in advising and implementing strategies to protect and exploit intellectual property, particularly in publishing, software and telecommunications.

Dispute Resolution

In intellectual property dispute resolution, we have considerable experience in assisting clients analyse and implement the most cost effective options when faced with conflicts.  Our lawyers discourage needless litigation though we do not shy away from necessary confrontation.  We have handled dispute resolution matters such as:

  • Protecting trademarks against piracy and parasitic trading;
  • Defending trademark infringement and passing off proceedings;
  • Obtaining orders to restrain internet distribution of unlicensed copies of software;
  • Pursuing patent infringement and revocation actions for goods;
  • Prosecuting unregistered design right infringement actions for products; and
  • Pursuing or defending disputes relating to unauthorised use of confidential information.
Design Registration & Patents

A patent granted in Hong Kong is independent of one granted by the designated office in which the patent was based, including any action under which it is be tested for validity, enforced, amended and rectified in Hong Kong.

The patent system in Hong Kong is designed to protect inventions and new technical ideas of practical use.  Protection requires the invention be new (and not within an excluded class of inventions), involve an initiative step and be industrially applicable. There are two types of patents in Hong Kong: Standard and Short-Term. A patent owner has exclusive right to use and prevent others from using the patented invention in Hong Kong.

“Standard” Patent

A “Standard” patent provides maximum protection of 20 years, subject to annual renewals following the third year.  There is no ‘original’ application procedure commencing in Hong Kong for granting a “Standard” patent; instead, the application is based on registration of a patent granted in any of the following patent offices:

  • State Intellectual Property Office in Mainland China;
  • European Patent Office, in respect of a patent designating the United Kingdom; and
  • United Kingdom Patent Office.

A successful application takes approximately 6 months from the date of application in Hong Kong.

“Short-Term” Patent

A “Short-Term” patent provides maximum protection of 8 years, subject to renewal after the fourth year.   This is most suitable for inventions with a projected shorter commercial life.   An original application is brought in Hong Kong and the entire process takes approximately 3 months.

A “Short-Term” patent provides maximum protection of 8 years, subject to renewal after the fourth year.   This is most suitable for inventions with a projected shorter commercial life.   An original application is brought in Hong Kong and the entire process takes approximately 3 months.

An important distinction in enforcement of a granted “Standard” patent and “Short-Term” patent is that the latter is insufficient to ensure the patent right can be enforced.  A court may still require the owner prove that the patent based on which the “Short-Term” patent was granted is actually valid.

A granted patent can be amended or revoked in Hong Kong and must be renewed in Hong Kong for continuing protection.

Patent Services

Weir & Associates can assist in registering a patent in Hong Kong.  Cost of obtaining a “Standard” patent range from HK$13,000.00 (exclusive of HK$6,880.00 in filing and advertisement fees.  A “Short-Term” patent application typically costs HK$11,000.00 (exclusive of HK$8,920.00 in filing and advertisement fees).

We also assist clients registering patents in Mainland China and other international jurisdictions using our associations and networks with law firms internationally.

Weir & Associates is a Hong Kong law firm
geared to provide comprehensive legal solutions through access to a wide range of resources. For further information, please contact us by telephone, email or fax.

Solicitors and Notaries
6th Floor, Wings Building
110 Queen’s Road Central,
Central, Hong Kong

Tel: (852) 2526 1767
Fax: (852) 2868 3568