Responding to Trade Mark Objections and Oppositions in Hong Kong

Handling Hong Kong Trade Mark Objections and Oppositions

Publication in the Hong Kong Intellectual Property Journal opens a three-month window. Any person may file a notice of opposition during that period. The process is governed by the Trade Marks Ordinance (Cap. 559) and the Trade Marks Rules (Cap. 559A). You need to understand the procedure whether you are the applicant whose mark is challenged or the party seeking to prevent registration.

The Opposition Window and Grounds for Opposition

The opposition period begins on the date the application is published and lasts exactly three months. No extension is available. Any person, whether or not they have a commercial interest, may oppose. File the notice of opposition on Form T6 and state the grounds relied upon.

Common grounds for opposition include that the mark is not capable of distinguishing the applicant's goods or services, that the mark is descriptive or has become customary in the trade, and that the mark is likely to deceive or cause confusion. An opponent may also argue the mark is identical or similar to an earlier trade mark for the same or similar goods or services. The applicant applied in bad faith. The mark is contrary to law, morality, or public order.

The opponent must specify which goods or services in the application are challenged and provide full particulars of the grounds. A statement of case must accompany the notice, setting out the facts and evidence relied upon.

Hong Kong Trade Mark Objection Response

If you are the applicant and receive a notice of opposition, you have a strict deadline. Within two months of receiving the notice, file a counter-statement on Form T7. The counter-statement must admit or deny each ground raised in the opposition and state the facts on which you rely.

Failing to file a counter-statement within the two-month period results in the application being treated as abandoned. There is no automatic extension. The Registrar may grant an extension upon application and payment of the prescribed fee.

Address each ground of opposition directly. If the opponent claims your mark is confusingly similar to an earlier mark, explain why the marks are not similar or why the goods or services are not the same or similar. If bad faith is alleged, set out the circumstances of your adoption and use of the mark.

Oppose Trade Mark Hong Kong: Filing the Notice

To oppose a trade mark application, file Form T6 with the Intellectual Property Department within the three-month publication period. The form requires the application number and the applicant's name, the grounds of opposition, and a statement of case setting out the facts and evidence.

The fee for filing a notice of opposition is HK$1,000 per class opposed. If the application covers multiple classes and you oppose all of them, the fee is HK$1,000 per class. If you oppose only some classes, the fee applies only to those classes.

After filing, the Registrar serves the notice on the applicant. The applicant then has two months to file a counter-statement. If no counter-statement is filed, the opposition succeeds and the application is refused.

Trade Mark Opposition Procedure Hong Kong

The procedure after the counter-statement is filed follows a structured timeline.

First, evidence rounds. The opponent files evidence in support of the opposition within two months of receiving the counter-statement. The applicant then files evidence in answer within two months of receiving the opponent's evidence. The opponent may file evidence in reply within one month of receiving the applicant's evidence.

Second, hearing. After the evidence rounds close, either party may request a hearing. The Registrar sets a date and the parties present oral arguments before a hearing officer from the Intellectual Property Department.

Third, decision. The Registrar issues a written decision, either refusing the application, accepting it for registration, or accepting it subject to conditions or limitations. The decision may be appealed to the Court of First Instance.

The entire opposition process takes 12 to 18 months from filing the notice to the Registrar's decision, depending on the complexity of the case and whether extensions are sought.

Role of the Intellectual Property Department

The Intellectual Property Department administers the opposition process. Its officers examine the application, publish it, receive oppositions, and conduct hearings. The Registrar of Trade Marks has the power to decide the opposition and to award costs against the unsuccessful party.

The department also maintains the register of trade marks, which records all registered marks and pending applications. Search the register before filing an application. Doing so identifies potential conflicts and can avoid opposition altogether.

Costs and Appeals

The Registrar may award costs to the successful party. Costs range from HK$1,000 to HK$10,000, depending on the work involved. Each party bears its own legal costs unless the Registrar orders otherwise.

A decision of the Registrar may be appealed to the Court of First Instance within 28 days. The appeal is a rehearing. The court may confirm, reverse, or vary the Registrar's decision. Further appeal lies to the Court of Appeal.

Practical Considerations

Search the register before filing. A search of the Intellectual Property Department's database can identify existing marks that may block your application. This reduces the risk of opposition.

Consider negotiation. Many oppositions are resolved by agreement. The parties may agree to limit the specification of goods or services, or the applicant may consent to a condition or limitation.

Monitor the journal. If you own a registered mark, monitoring the Hong Kong Intellectual Property Journal for similar applications allows you to oppose within the three-month window.

Keep evidence. If you oppose, gather evidence of your mark's use, reputation, and the likelihood of confusion. If you are the applicant, gather evidence of your mark's distinctiveness and your honest adoption.

Interaction with Other IP Rights

Trade mark opposition is separate from other intellectual property rights. A standard patent or short-term patent protects inventions, not brand names. A registered design protects the appearance of a product. Copyright arises automatically on creation and protects original works. None of these rights can be used to oppose a trade mark application directly, although they may be relevant to the grounds of opposition, for instance, where the trade mark reproduces a copyright work or a registered design.

Personal data protection under the Personal Data (Privacy) Ordinance (Cap. 486) is not directly relevant to trade mark opposition. However, if an opponent alleges bad faith based on misuse of personal data, the six data protection principles under the PDPO may be relevant. A data user must comply with the principles when collecting and using personal data, and a data subject has rights of access and correction.

Summary of Key Deadlines

The opposition process is formal and time-sensitive. Engage a trade mark agent or solicitor experienced in Hong Kong trade mark opposition, particularly where the grounds are complex or the value of the mark is significant.