Macau Trademark and IP Frequently Asked Questions
- What is considered a Macau Trademark according to Law?
- Which Marks May Be Registered in Macau?
- What Cannot Be Registered?
- Who can register a trademark in Macau?
- Where will the mark be registered?
- What is the effect of a registration?
- What is the procedure for an initial registration?
- What happens after the filing?
- How can an Opposition be filed?
- When will the registration certificate be issued?
What is considered a Macau Trademark according to Macau Law?
The Macau Trademark law lays down the procedure for registering a trademark (normal commercial trademarks) in Macau. It is applicable to Macau residents, Citizens of any country in the Paris Convention union (or its revised versions). It also applies to persons who reside in or owns a business location in any country in the Paris Convention union and Citizens of those countries that have signed related agreements with Macau. The law provides protection for a mark as a sign or group of signs which can be represented graphically and which distinguish the products or services of one company from those of other companies, namely words, including personal names, designs, letters, numerals, sounds, the shape of the product or its packaging. Not more than one registration may be filed in the same application and each mark to be used on the same products or services can be registered only once. Anyone who adopts a mark owns full and exclusive rights to use and dispose of the inventions, creations and distinctive signs) within the limits, conditions and restrictions determined by the law.
Which Macau Trademark May Be Registered?
Macau Trademark for Goods or Services
A Macau Trademark may be registered in connection with goods or services provided that when applied it will distinguish the products or services of one company from those of other companies.
To be distinct, a Macau Trademark must be sufficiently unique from any other mark for the same goods or services that use of the two marks would not mislead or confuse consumers. A mark is not distinctive if it consists exclusively of signs or indications that are commonly used in current language or in the trade to describe the products or services to which it is applied. A mark is deemed to be a reproduction or imitation of another mark in whole or in part when, cumulatively, the following circumstances occur:
The registered mark has priority;
They are both meant to designate identical or similar products or services;
They are graphically, figuratively or phonetically so similar to another registered mark that it would easily lead to confusion of consumers, as they would be unable to distinguish between the two marks without a close examination or comparison.
In addition to the circumstances referred to above, it shall also be considered to be a reproduction of or partial imitation of another mark if:
The Macau Trademark uses an invented or fanciful name that forms part of an earlier mark belonging to another proprietor.
The external appearance of the packaging or wrapping with the relevant colors and the arrangement of any wording, devices, and insignias is such that any person would be unable to distinguish the goods or services from those of the proprietor of the legitimate mark.
Color Macau Trademark
A color or colors combined either together or with graphics, printed words, or other items in a particular and distinctive manner may constitute a mark. A color in and by it self, however, cannot be registered as a mark.
Collective Macau Trademark
A mark may be protected as a collective mark, according to the conditions pertaining to association marks - a specific sign belonging to an association of individuals and/or corporate bodies, whose members use or have the intention of using the sign for products or services -, or certification marks - a specific sign belonging to a corporate entity that controls the products or services or establishes the regulation 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. The registration of a collective mark shall give the name holder the right to control the marketing of the respective products or services, in the terms stipulated by law or in the statutes.
What Cannot Be Registered?
The following words or devices may not be registered as a mark:
Identical Macau Trademark
Marks that consist entirely of the reproduction or imitation of a mark previously registered by someone else for the same products or services.
Deceivingly or confusingly similar marks
Marks that consist, in whole or in part, of the reproduction or imitation of a mark previously registered by someone else for identical or similar products or services, that could mislead or confuse the consumer, or that incurs a risk of association with the registered mark.
Marks likely to be used for unfair competition
Irrespective of the intention, marks filed by an applicant that are likely to cause unfair competition cannot be filed.
Nominative or descriptive marks
Marks consisting exclusively of signs or indications which are commonly used to designate the kind, quality, quantity, purpose, value, geographical origin, or time of production of the product or the rendering of a service, or that have become customary in everyday language or in legitimate and established commercial practices.
Marks with unauthorized content
The application for registration shall be refused whenever the mark or any of the elements contained are unauthorized, such as:
The name or emblem of an establishment, or any characteristic part thereof that does not belong to the applicant or that the applicant is not authorized to use, if it is liable to mislead or confuse the consumer.
Medals or designs likely to be confused with official decorations or with the medals and awards conferred as prizes at official meetings and exhibitions.
Arms or heraldic insignia, medals, decorations, surnames, titles and honorary distinctions to which the applicant is not entitled, or if disrespect or discredit is brought upon a similar sign.
Marks with Prohibited Words or Representations
A mark that contains in whole or in part any of the following:
Any words not in Portuguese, Chinese or English, or a combination of these languages, unless the mark is used in connection with goods to be exported, consists of an international mark, or is applied for by a foreign individual or company not domiciled in Macau.
Signs that exist 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 value.
Signs likely to mislead the public concerning the nature, qualities, usefulness or geographical origin of the product or service to which the mark applies.
Signs that constitute a breach of copyright or industrial property rights.
Who can register a trademark in Macau?
Proprietor or User
To apply for mark registration, the proprietor or user must be a resident of Macau, a citizen of the Countries or Territories that are members of the World Trade Organization, and the International Union for the Protection of Industrial Property, in accordance with the terms of the Paris Convention. A proprietor or user with citizenship in any other country may apply to register a mark if international agreements or reciprocal arrangements exist between Macau and the country in question.
Paris Convention priority applicant
An applicant may claim a priority date for registration pursuant to the Paris Convention. Macau recognizes registration priority for applicants who have filed for protection of a mark in a country that has signed the Paris Convention, provided the Macau application is made within six months from the date the application is filed in the first country where protection is sought. In such a case the Macau registration date is the same as the application date in the Convention country. A legal representative or assignee is entitled to the same priority.
Priority application based on use in Macau
If an unregistered mark is used in Macau for up to six months, during that period the owner of the mark has the right to file a registration application or to oppose any application submitted by a third party.
Authorized Agent or Attorney
Legal action may be taken by:
An individual interested in or owning an industrial property right, or by an agent especially empowered for the purpose, provided that they are domiciled or established in Macau.
A corporate body interested in or owning an industrial property right that has its registered office in Macau, or through directors, managers or employees duly accredited for the purpose.
Lawyers registered in Macau.
Authorized representatives must attach a power of attorney to the application. If the power of attorney has been issued in another country, it must be duly notarized and translated.
Where will the mark be registered?
Marks Register
To register a mark in Macau, the applicant files for initial registration with the Intellectual Property Department of the Macau Economic Services (I.P. Office). The Office is open to public inspection. Any person may ask for a certified copy of registration entries, filed documents, and pending applications for a registration that has already been published. They may also obtain information regarding the date of publication of documents.
What is the effect of a registration?
A person who adopts a mark to identify goods or services and who registers the mark and satisfies all other legal requirements enjoys ownership and exclusive rights to that mark. The registration of a mark gives the owner presumption of novelty or distinction compared with marks previously registered. Subject to conditions defining the lapse in use of the mark, which is optional unless it is registered for goods or services for which the use of a mark is mandatory. Once the registration is valid, a proprietor of a registered mark has the right to add the acronym "M.R.", " R" or simply (r), to designate " Marca Registada", being " Registered Mark" in Portuguese, or the equivalent expression in Chinese, or else the English expressions " Registered Trademark" or " TM".
What is the procedure for an initial registration?
If desired, the applicant may request a search at the I.P. Office to determine whether an identical or similar mark has already been registered or has a pending application. An application is then filed in two copies in form of registration forms, attachments, and fees. Only one class of goods or services may be listed in each application.
If the applicant claims priority based on protection of a mark in a member country of the Paris Convention, the Macau application must be filed within six months of the date the application was filed in the member country where protection was sought. An applicant claiming priority must declare the intention to do so, provide specific information, and submit certain documentation. The failure to do any of these things will result in the loss of the right to claim priority. If the applicant claims priority based on the unregistered use of the mark in Macau, the application must be filed within six months of the date the mark was first used in Macau. The application must be accompanied by documents proving evidence of that use.
What happens after the filing?
The registration shall be granted if no grounds are discovered for refusal and oppositions, if any, are considered unfounded. The Registration can be partially refused if some products or services are not considered remittable.
It can be stated in the granting of the registration which elements of the mark, if any, are not for exclusive use.
Once the application documents are all correctly submitted, the I.P. Office will review the classification of goods or services that the applicant has supplied. The I.P. Office may approve the specification of goods or services or require the applicant to amend it. If the application covers goods or services from different classes, the I.P. Office will require the applicant to file separate applications for each class.
Within one month of the application being filed, the Registrar will review the application for compliance with the application requirements. If there are any irregularities in the application, the Registrar will notify the applicant. Otherwise, the application proceeds to publication in the Official Gazette. The applicant must respond in the time given to any requests for production of missing documents or correction of other irregularities in the application or the application will be refused and it will not be published in the Official Gazette.
How can an Opposition be filed?
Any person who considers the potential granting of registration prejudicial to his or her interests may file a notice of opposition to the registration with the I.P. Office. The filing of an opposition starts an administrative process during which both parties file statements and evidence that may include inspections of commercial or industrial establishments, or other relevant premises. Once all the necessary documents have been filed, and any inspections have been carried out, the I.P. Office will make a decision. An aggrieved party may appeal to the Court on the I.P. Office decision within one month after the decision has been published in the Official Gazette.
When will the registration certificate be issued?
The I.P. Office will issue a certificate of registration at the end of the appeal period or after the final court decision is known. Registration and certificate are due after the date the mark is granted and within six months from the date of publication of the registration in the Official Gazette.
Click here to see Macau Trademark Application Fees or click to see Macau Trademark Application Procedures
For further information or assistance, please call us:
Hong Kong Office: +852 2341 1444
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Shanghai Office: +86 21 6439 4114
Beijing Office: +86 10 6874 8420
or send email to enquiries@bycpa.com.
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