Registration Guide of Trademarks

Macao SAR Economic Services

INDEX

A trademark is used to identify and promote the owner’s products or services, and to enable the consumer to distinguish them from the products and services of other traders.

According to the World Intellectual Property Organization (WIPO), “a trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise.” Trademark may be one or a combination of words, letters, numerals, figurative elements or combination of color. A sign may include three-dimensional shapes such as the shape of the product or its packaging, and also includes sounds or fragrances.

It is not necessary to register a trademark in the Macao SAR before a person could use it on his products or services. A trademark owner with either a registered or an unregistered trademark may protect the mark under “Action of Unfair Competition” under the “Macao Commercial Code”. An “Action of Unfair Competition” requires proof that the owner enjoyed prior reputation and damage inflicted on to his mark.

However, the registration of a trademark under the “Industrial Property Code” gives an owner the right to prevent third parties from using his mark, or a deceptively similar mark, without the owner’s consent for the products or services for which it is registered. He may also prevent other persons from using the mark in relation to products or services for which his mark is registered or in relation to similar products or services.

Registration therefore gives a right of ownership that is easier to establish than under the “Commercial Code”.

A trademark may be registered if it is: a sign or group of signs represented in a special manner, namely words, including personal names, drawings, letters, numerals, sounds, the shape of a product or its packaging, and which are capable of distinguishing the products or services of one company from those of other companies.

• Signs that consist exclusively in the shape resulting from the nature of the product itself, the shape of the product necessary for obtaining a technical result, or the shape that gives the product its own substantial value;
• Signs or indications that may be used exclusively and commercially to designate the kind, quality, quantity, purpose, value, geographical origin or time of production of the product or of the rendering of the service, or other characteristics thereof;
• Signs or indications that have become customary in current language or in bona fide and established commercial practices;
• Colors, except where they are combined together or used with graphics, wording or other elements in a particular and distinctive manner.

The Macao SAR allows the formation of these different kinds of trademarks:

• Product trademark: a trademark used on products or their packaging.
• Service trademark: a trademark used in the course of the rendering of a service, in order to identify the service provider.
• Association trademark: a specific sign belonging to an association of individuals and/or bodies corporate, whose members use or have the intention of using the sign for products or services.
• Certification trademark: a specific sign belonging to a corporate entity that controls the products or services or establishes the regulations with which they must comply and that is to be used on the products or services subjected to that control or for which the regulations were established.
• Three-dimensional trademark: a trademark based on the 3D appearance of the product or its container.
• Sound trademark: a type of non-physical trademark that uses a specific type of sound used in trademark registration. A product or a type of service may be represented by means of a distinct tone or strings of tones.

There is no requirement that an applicant for a trademark must have used the mark. It is sufficient if an applicant uses or proposes to use a trademark in relation to products or services when applying for registration.

A trademark when registered is valid for 7 years counted from the date of the respective granting. It may be renewed indefinitely, and each renewal will extend the trademark’s validity for another 7 years.

The Macao SAR’s trademark registration system is territorial. Trademarks granted in the Macao SAR will only get protection in the Macao SAR. If protection is required in other countries, it will be necessary to make separate application in those other countries.

• All individuals holding a Macao SAR Resident’s Identity Card;
• All bodies corporate registered in the Macao SAR and constituted according to the law of the Macao SAR;
• For those who do not hold valid Macao SAR Resident’s Identity Card, or are not a body corporate registered in the Macao SAR, they could appoint one of the followings as their proxy:
  • Lawyer registered with the Macao Lawyers Association;
  • Individual is residing in the Macao SAR;
  • Body corporate registered in the Macao SAR;
  • Official industrial property agent authorized or accredited in the Macao SAR (currently not applicable).

Applicants must complete the “商標註冊申請書/ Pedido de Registo de Marca” form (Trademark Registration Application Form) in order to initiate an application process to register a trademark for their products or services. The forms are available through the Intellectual Property Department(IPD), Macao Economic Services(MES).

• Application forms should be completed in Chinese or Portuguese (instructions on how to fill the form are at the back of the application form).
• Each application form is only applicable to one and only one trademark registration, and should belong to the same class of the “International Classification of Goods and Services”.
• Applications may be completed by individuals or bodies corporate, but the following conditions should be borne in mind:
  1. Individual applying: Macao SAR Resident’s Identity Card is required for certification and identification. Signature’s authenticity will be examined by the IPD;
  2. Body corporate applying: those who have the authority to within the bodies corporate regulations should sign the form. Official certification of authenticity is required, through a Notary Office of Macao SAR;
  3. If the individual or body corporate applying is not a Macao SAR resident or establishment, the form should then be signed by a proxy.

1. The completed “商標註冊申請書/ Pedido de Registo de Marca” (Trademark Registration Application Form);
2. Where appropriate, the application shall be accompanied by the following documents:
   1. Power of Attorney;
   2. Documents proving the priority right claim;
   3. Transliteration and translation of the writing in less popular characters;
   4. Authorization to use another person’s name, firm’s name, name or emblem of establishment, picture, painting or any other expressions or representations that appear in the trademark;
   5. Authorization to include in the trademark any flags, coats-of-arms, escutcheons, symbols, arms or other emblems of the Macao SAR, municipal districts or other public or private entities, within or outside the Macao SAR, as well as badges, stamps and official hallmarks, indicating any inspection and warranty, private emblems or denomination of the Red Cross or of any other bodies of a similar nature;
   6. Authorization to include in the trademark monuments in the Macao SAR, or the respective designation, representation or imitation thereof;
   7. Authorization to include in the trademark signs of high symbolic value, namely religious symbols;
   8. Decorations or other distinctions referred to or reproduced in the trademark;
   9. Certificate from the competent registrar proving the right to include in the trademark the name or any reference to a specific rural or urban property and the proprietor's authorization to that effect, if the applicant is not the proprietor;
   10. Authorization from the owner of previously registered marks or other industrial property rights with which the subject matter of the trademark being applied for could be confused with;
   11. Legal, statutory or regulatory provisions governing the use of a collective mark.

The application forms along with the supporting documents should be handed in to the IPD of the MES (at the 8th floor of the Luso International Bank Building.)

The application form and relevant fees should be submitted and paid within eight working days after the application has been handed in. The fees are in Patacas, and may be paid at the Administration and

Finance Division of the Economic Services (which is located on the 6th floor of the Luso International Bank Building). Fees may be paid in cash or by cheque, crossed and made payable to “經濟局” or “Direcção dos Serviços de Economia”.

When fees are paid, please include the receipt and hand it back to the IPD (8^th floor). The application process is then completed and filed.

Once the IPD has received the application, it will, within 1 month, proceed to its formal examination to ensure that it contains all elements required, and to classify the products and services.

If the application lacks any of the required elements, or should it not be in order, the applicant would be notified by the IPD. His application shall be rectified within the time period specified in the notification. If the applicant is not notified, he will have a maximum of 3 months from the filing of the application to make it in order.

If an application is in order, the request will be published on the first Wednesday, two months after the initial application date, in the Official Bulletin of Macao SAR.

Any person may file an opposition to the registration during a two months period after the publication of the application in the Official Bulletin of Macao SAR.

A duplicate of the opposition is sent to the applicant. The applicant may respond to the complaint in writing, and it is to be filed within one month of the respective notification. Both parties are then given the opportunity, within certain time limits, to file evidence in support of the application and opposition. Once the period for the presentation of oppositions has expired, the IPD will proceed to the examination and study the proceedings, and decide upon the granting, or not, of the application.

If there is no opposition to the mark, the IPD will prepare the examination report within 6 months from the date of the publication in the Official Bulletin of Macao SAR of the application notice.

After the registration has been granted, it will be published on the first Wednesday of the month, in the second series of the Official Bulletin of Macao SAR. This publication will include the application number and the applicant’s name.

Up to a maximum period of 6 months after the date of publication of the grant in the Official Bulletin of Macao SAR, the applicants would be required to finish paying the fees of granting and issuing of registration certificate and to complete the “其他行為申請書/ Pedido de Outros Actos” form (Request for Other Actions Form). Registration certificate will be issued 10 working days after the fees have been paid.

If an application is not in accordance with the regulations of “Macao Industrial Property Code”, the IPD will publish the ruling on refusing the registration in the Official Bulletin of Macao SAR. The appeal against that decision should be lodged with the Macao Basic Court, within 1 month of the date of publication thereof in the Official Bulletin of Macao SAR.

The registration details of trademarks, after being published in the Official Bulletin of Macao SAR, may be searched through the computer terminals located at the IPD. These computer terminals are available to the public.

In addition, requests for trademark searches are also possible. The search report will be ready 5 working days after a request is made.

The applicant or owner may complete the “其他行為申請書/ Pedido de Outros Actos” form (Request for Other Actions Form) to request an annotation for their trademarks, accompanied by the documents bearing out the facts to be annotated, and the original “Trademark Registration Certificate” (for those who have their Trademarks registration granted). The annotation fee should be included at that time.

Annotations may include:

• The granting of operating licenses;
• Transmission of trademarks;
• Alteration of applicant’s / owner’s or company’s name;
• Alteration of applicant’s / owner’s of company’s address;
• Any other facts or decisions that alter or extinguish trademarks.

The above application will be processed within 5 working days after a request is made, and the annotations will be published on the first Wednesday of the month, in the second series of the Official Bulletin of Macao SAR. Within 10 working days after the annotation has been published, the IPD will process the relevant updates on to the certificate (applicable only to those who have obtained the grant of the trademark registration).

Within the final 6 months of the registration validity, the applicant should renew his trademark protection and pay the respective renewal fee. This renewal process will be conducted within 5 working days from the date the request is made, and the notice of the renewal will be published in the Official Bulletin of Macao SAR. Within 10 working days after the renewal notice has been issued, the IPD will file and return the renewed registration certificate to the owner.

Full text of the “Industrial Property Code” is available through our website at: http://www.imprensa.macau.gov.mo/bo/i/99/50/codrjpien/indice.asp

For further information, please contact the IPD of the MES.

Address: Rua do Dr. Pedro José Lobo, Nº. 1-3, 8th Floor, Luso International Bank Building, Macao

Tel.: (853) 710 287

Fax: (853) 715 291

E-mail: dpi@economia.gov.mo

The industrial property protection notice posted on the Official Bulletin of Macao SAR is available at the “Trademark Registration Protection” link at the Government Printing Services website.

The web address is http://www.imprensa.macau.gov.mo/bo/ii/en/marcas.asp

To report infringements to Intellectual Property, please contact Macao Customs service.

Address: Rua S. Tiago da Barra, Doca D. Carlos I S. W., Macao

24 hour hotline: (853) 965 011

Fax: (853) 965 003

Website: http://www.sa.gov.mo/

Applicants may also seek legal advice on Intellectual Property through the lawyers of Macao. Information on Macao lawyers may be obtained from the Association of Macao Lawyers.

Address: Av. da Amizade, Nº. 918, World Trade Centre Building, 11th Floor “AB”, Macao

Tel.: (853) 728 121

Fax: (853) 728 127

E-mail: aam@macau.ctm.net

Website: http:/www.aam.org.mo

This document has been produced with the financial assistance of the European Community. The contents are provided by the Macao SAR Economic Services, and therefore do not represent the official opinion of the European Commission.

(This booklet serves as a normal guide on some aspects of the registration of trademarks. The Macao Economic Services does not intend to use this guide as a mean to provide legal advice. Thus, this booklet carries no legal authority.)

Source: Macao SAR Economic Services