Transfer of IP rights in Hong Kong

A patent or any such application or right shall vest by operation of law in the same way as any other personal properties and may be vested by an assent of personal representatives. (section 50(3) Patent Ordinance (“PO”)).

A patent, or an application for a patent, can be transferred from one person to another (see section 50(1) PO). An assignment can be done by having the parties entering into an assignment agreement that gives legal effect to the transfer. An assignment of a patent, or of an application for a patent, must be in writing and signed by or on behalf of the assignor, or in the case of a body corporate is so signed or is under the seal of that body (section 50 (6) PO).

No.  However, recordal of the assignment of a patent or any such application is strongly encouraged to safeguard the rights of the assignee as non-registration may lead to certain adverse consequences. As per sections 52(1)-(3) PO, which any person, who claims to have acquired the property in a patent or an application for a patent by virtue of a later assignment, shall be entitled as against the right of any other person under an earlier unregistered assignment if the assignment is not recorded with the Patent Registry 

2.1 Are original supporting documents essential or are copies sufficient?

In general, under no circumstances the original supporting documents are essential. As for copies of the supporting documents:

1. if Form P19 (which is the specific form required for recording the patent assignment)  is signed by or on behalf of the assignor, no supporting documents need to be provided at all; or 
2. if Form P19 is signed by the assignee, copies of the supporting documents evidencing the assignment (for example, assignment agreement) are required.   

2.2 Are there any legalization and/or notarization and/or translation requirements?

Notarization or legalization is not required for recording the patent assignment.  

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required.

2.3 Is there a must to use a specific form?

Yes. A specific Form P19 is required to request for recordal at the Hong Kong Patent Registry.

The record in the Patents Registry has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the licensee vis-a-via third parties under certain circumstances. 
In particular, according to sections52(1)-(3) PO, any person who claims to have acquired the property in a patent or application for a patent by virtue of a later assignment shall be entitled as against any other person whose application of an earlier unregistered assignment.  

No specific formalities are required if the assigned patent is held by more than one proprietor, other than that:

1. for the assignment agreement, all proprietors shall be the assignors and parties to the assignment agreement; and
2. for recording the assignment with the Patent Registry, the Form P19 needs to be signed by all proprietors or an agent who is authorised to act for all the proprietors.  

There is no requirement to appoint a domestic professional representative, but you need to have an address in Hong Kong, China for service of documents.

HK$325 for filing Form P19. 

The use of a registered patent, or a patent that is subject of an application for registration, can be licensed, or sub-licensed (see sections 50(4) and 52(3) PO)

A licence may also be exclusive or non-exclusive. 

None of the above forms of licence requires recordal to become effective.

8.1 Are original supporting documents essential or are copies sufficient?

In general, under no circumstances the original supporting documents are essential. As for copies of the supporting documents:

1. if Form P19 (which is the specific form required for recording the patent assignment)  is signed by or on behalf of the Licensor, no supporting documents need to be provided at all; or 
2. if Form P19 is signed by the Licensee, copies of the supporting documents evidencing the licence (for example, licence agreement) are required.   

8.2 Are there any legalization and/or notarization and/or translation requirements?

Notarization or legalization is not required for recording the patent assignment.  

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

8.3 Is there a must to use a specific form?

Yes. A specific Form P19 is required to request for recordal at the Hong Kong Patent Registry.

The record in the trademark register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-a-via third parties under certain circumstances. In particular according to sections 52(1)-(3) PO, any licensee who claims to have acquired the property in a patent or application for a patent by virtue of a later license shall be entitled as against the licensee of his former unregistered  license. 

There is no requirement to appoint a domestic professional representative, but you need to have an address in Hong Kong, China for service of documents.

HK$325 for filing Form P19.

No. 

This is because creating a pledge generally require actual/constructive delivery of possession and the concept of possession is inapplicable to trademark as a chose in action.  

A registered trade mark, or an application for registration of a trade mark, can be transferred from one person to another (see sections 27(2) and 31(1) Trade Marks Ordinance (Cap 559) (“TMO”)). The assignment can be done by having the parties entering into an assignment agreement that gives legal effect to the transfer. An assignment of a registered trade mark, or of an application for registration of a trade mark, must be in writing and signed by the assignor (sections 27(4) and 31(1) TMO).

No.  However, recordal of the assignment is strongly encouraged to safeguard the rights of the assignee given that non-registration may lead to certain adverse consequences, as per s.29(3) TMO:

1. the transaction is ineffective as against a person acquiring a conflicting interest in the relevant TM right(s) without knowledge of the transaction; and/or
2. the person who becomes the owner of a trade mark by virtue of the transaction (i.e. the licensee) will not be entitled to damages or an account of profits for any infringement of the trade mark occurring after the date of the transaction

2.1 Are original supporting documents essential or are copies sufficient? 

Under no circumstances that the original supporting documents are essential.  
As for copies of the supporting documents: 

1. if the application is signed by or on behalf of the assignor, it does not need to be accompanied by any documentary evidence of the transaction (rule 62(2) TMR).  So, copies are not required either; 
2. if the application to register particulars is not signed by or on behalf of the assignor, it must be accompanied by documentary evidence of the transaction, for example, a copy of the assignment (rule 62(2) TMR). The document will be open to public inspection rule (rule 69(1)(r) TMR). Where a copy of the assignment is not filed, other documentary evidence will be accepted if it is sufficient to establish the assignment (rule 62(2) TMR). Hence, copies are sufficient under such circumstances. 

2.2 Are there any legalization and/or notarization and/or translation requirements?

There is no legalization or notarization requirement for registering a trademark assignment with the Trade Marks Registry. 
As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

2.3 Is there a must to use a specific form?

Yes.  A specific Form T10 is required to request for recordal at the Hong Kong Trade Marks Registry. The following particulars will be required for filling out the Form T10:

1. the assignee’s name and address (rule 63(1)(a)(i) and 63(1)(b)(i) of Trade Mark Rules Cap 559A (“TMR”)); 
2. if the assignee is a corporation, the place under the law of which the corporation was formed and registered, incorporated or established (rule 63(1)(a)(ia) and (b)(ia) TMR); 
3. the date of the assignment (rule 63(1)(a)(ii) and (b)(ii) TMR); 
4. in an assignment of any right, description of the right assigned (rule 63(1)(b)(iii) TMR); 
5. the date on which the entry in the register is made (rule 63(2) TMR); and 
6. the date of application of registration of particulars or giving of notice (sections 29(3)(a), 29(4)(a) and 31 TMR).

The record in the trademark register has a declarative effect in that failure to do so will not render the assignment invalid as between the assignor and assignee, but it will affect rights of the licensee vis-a-via third parties under certain circumstances. In particular, according to s.29(3) TMO: 

1. the transaction is ineffective as against a person acquiring a conflicting interest in the relevant TM right(s) without knowledge of the transaction; and/or
2. the person who becomes the owner of a trade mark by virtue of the transaction (i.e. the assignee) will not be entitled to damages or an account of profits for any infringement of the trade mark occurring after the date of the transaction.

No specific formalities are required if the licensed trademark is held by more than one proprietor, other than that:

1. for the assignment agreement, all co-owners should be the assignors and parties to the assignment agreement; and 
2. for recording the assignment, the Form T10 needs to be signed by all co-owners, or an agent who is authorised to act for the co-owners.

No specific formalities are required for partially assigning a trademark. 

There is no requirement to appoint a domestic professional representative. 

HK$800 for registering a trademark assignment.

A licence to use a registered trade mark may be general (i.e. the licence covers all of the goods or services of the registration) or limited (i.e. the licence covers some but not all of the goods or services of the registration). (section 31(1) TMO).

A licence may also be granted as an exclusive licence or a non-exclusive licence.  The grantor of an exclusive licence cannot grant a licence to any other person (except in respect of other goods or services, or in respect of use in another location) nor can he use the mark himself.  

None of the above types of licences require recordal to become effective between the licensor and licensee.  In respect of the effect of the recordal of a trademark licence, please see our answers in question 10 below. 

9.1 Are original supporting documents essential or are copies sufficient? 

Under no circumstances that the original supporting documents are essential. As for copies of the supporting documents:

1. if the application, or notice, is signed by or for the grantor of the licence. it is not necessary to produce the licence when applying to register particulars (of a licence of a registered mark) or when giving notice to register particulars (of a licence of a mark that is the subject of an application for registration) (rule 62(3) TMR).  Hence, copies are not required either;
2. if the application or notice is not signed by or for the grantor, documentary evidence to establish the licence, for example a copy of the licence, has to be filed and will be open to public inspection (rules 62(3) and 69(1)(r) TMR).  Under such circumstances, copies of the licence agreement are required to be submitted. 

9.2 Are there any legalization and/or notarization and/or translation requirements?

There is no legalization or notarization requirement for registering a trademark licence with the Trade Marks Registry.

As for translation, if (1) the supporting documents are required; and (2) the supporting documents are not in English or Chinese (both of which are official languages in Hong Kong), translation of such documents into English or Chinese is required. 

9.3 Is there a must to use a specific form?

Yes.  A specific Form T11 is required to request for recordal at the Hong Kong Trade Marks Registry.

A licence must be in writing (section 33(3) TMO).

The record in the trademark register has a declarative effect in that failure to do so will not render the licence invalid but it will affect rights of the licensee vis-a-via third parties under certain circumstances. In particular:

1. unless particulars of a licence are filed for registration, the licence is ineffective as against a person acquiring a conflicting interest without knowledge of it (sections 29(3)(a) and 31(3) TMO);
2. additionally, unless particulars of the licence are filed for registration, the licensee does not have the rights of a licensee under the Ordinance, including rights in relation to infringement (sections 29(3)(b) and 31(3) TMO);
3. unless particulars of the licence are filed before the end of the period of 6 months beginning on its date, the licensee will not be entitled to damages or an account of profits for infringements for the period before particulars of the licence are registered (sections 29(4)(a) and 31(3) TMO).

No. For a recording a partially licensed registered trademark, Form T11 provides options for you to fill out details of specific goods/services for which the granted licence is covered.  

There is no requirement to appoint a domestic professional representative

HK$800 for each application or notice to register a trademark licence. 

No. 

This is because creating a pledge generally require actual/constructive delivery of possession and the concept of possession is inapplicable to trademark as a chose in action.