Planning to start a business in Macau and register a trademark? It is worth investigating in advance the issues of trademark regulation in the selected jurisdiction. It will also be helpful to preliminarily familiarize yourself with the trademark dispute resolution procedure in Macau since business situations are different. Before you start using a certain designation as a trademark, you should clearly define its legal status, namely: can the designation be used as a trademark, is it obligatory to register it, does it have a legal owner, how to properly dispose of it, etc.
Licensing and use of TM
According to the legislation in force in Macau, trademarks can be used not only by legal entities but also by individual entrepreneurs in their activities. Please note that individual entrepreneurs who are not duly registered cannot have the rights to a particular trademark.
Industrial property rights can be licensed for exploitation. A license to operate a trademark in Macau must be issued in writing.
The licensee enjoys all the benefits and privileges that were granted to the owner when registering a trademark in Macau (unless otherwise agreed). However, it should be borne in mind that the operating license is considered non-exclusive.
Licensing agreements for the use of a trademark are not subject to mandatory registration but can be officially registered upon request of the parties.
Areas of limitation of trademark licenses may be:
- the territory of the license;
- license validity period;
- the way in which the trademark is used (for example solely the production of goods, or the sale, or transportation, or other use);
- restriction on the list of goods and/or services for using a trademark under a license.
An exclusive operating license is understood as one in which the owner of the industrial property right waives for the entire duration of the right to grant any other operating licenses in relation to the licensed object.
Trademark Dispute Resolution in Macau
To prevent future controversies, before registering a TM in Macau, which will be used to mark your goods and services, you should make sure that its appearance is unique, does not violate the rights of third parties and does not mislead the consumer.
Therefore, before registering a TM, analyze the data on the type and form of TM already registered in Macau for similarity with yours.
Factors that must be taken into account before registering a TM in Macau:
- There is no time limit for filing a violation claim, that is, a violation action can be filed until a violation occurs.
- An appeal against an IPD decision may be filed with the first instance court within one month after notification.
If you intend to start litigation in Macau, it is important to consider that both the trademark owner and the licensee may seek the remedy.
The alleged perpetrator has the legal right to participate in the proceedings, responding to the complaint, and presenting evidence to the court.
The TM owner may demand protection of the rights to his trademark against the alleged infringer. There are no specialized courts on this matter. There are no procedures to enforce trademark rights in Macau's criminal law either. The Civil Procedure Code is applied to resolve disputes over trademark rights
ADR techniques are not available in Macau, so a peaceful resolution of a trademark dispute in this jurisdiction cannot be counted on - litigation only.
Sanctions and punishment
In case of violation of TM rights in Macau, criminal sanctions may apply. Very large fines are most common, but imprisonment for up to 3 years can also be applied.
The customs authorities can stop the import and export of counterfeit goods.
Particularly tough sanctions are provided for deliberate attempts to register a mark that infringes on the rights of the other party.
Ensuring trademark protection in Macau has a number of features that are important to consider before filing a claim. Our experienced specialists are ready to advise you and provide support in the process of resolving a TM dispute in Macau and Hong Kong.
You can find out more details by filling out a special form below.