Hong Kong Trade Mark Opposition Proceedings

1. Advertisement of the Application

After a trade mark application has been examined and any objections have been overcome, the Trade Marks Registry will publish the acceptance of the application in the online Intellectual Property Journal. Any person who believes the mark should not be registered may object to registration by filing a notice of opposition.

2. Initial Request for Voluntary Withdrawal

It is customary for a potential opponent to send a pre-action letter to the Applicant to give reasonable notice of the proposed opposition proceedings and to request voluntary withdrawal of the application before the Notice of Opposition is filed. This gives the Applicant a chance to avoid opposition proceedings and the pre-action letter is an important factor that will be taken into consideration by the Trade Marks Registry when deciding the extent to which the Opponent may recover its legal costs from the Applicant if the opposition is successful. It will also assist in an application for an extension of time if the Opponent has sent a pre-action letter and is awaiting a substantive reply from the Applicant.

3. Notice of Opposition

Opposition proceedings are commenced by filing a Notice of Opposition. This sets out the legal basis of the opposition. It does not include the Opponent’s evidence which forms the factual basis for the opposition.

The Opponent must serve a copy of the Notice of Opposition on the Applicant.

A Notice of Opposition must be filed within a 3 month period, calculated from the date on which the application was published. For example, an application published on 4 May 2011 may be opposed up to 3 August 2011.

This 3 month period may only be extended for one 2 month period.

4. Extensions of Time

Please refer to the Deacons Oppositions flow diagram for a graphic summary of the deadlines involved in opposition proceedings.

An application for an extension of time to oppose must be made to the Trade Marks Registry before the expiry of the 3 month period opposition period, that is no later than 3 August 2011 in our example.

Reasons for the extension of time request and an explanation of what action has been taken prior to the expiry deadline should be provided. The Trade Marks Registry will consider and weigh up all factors including the adequacy of the reason for the delay. Where negotiations are ongoing between the parties then documentary evidence of such negotiations may be required.

In some circumstances, the Trade Marks Registry will be more inclined to grant the extension of time request – such as where the other side has previously been granted an extension in similar circumstances.

The party seeking the extension could also request consent from the other side, particularly where the parties are in negotiations. The party seeking the extension must send a copy of the request to the other side and the Trade Marks Registry will seek the view of the other party.

If the other party consents to the extension request then the Trade Marks Registry will ordinarily grant the extension of time. If the other side does not respond or consent is declined, the Trade Marks Registry will make a provisional determination which may be objected to by either side within 1 month. The objecting party will need to request a hearing and this may be attended by both sides. The Trade Marks Registry will issue its final decision on the extension of time request after the hearing has been held.

5. The Grounds of Opposition

Some of the more common grounds for opposing a trade mark application are:-

• Lack of distinctiveness. This means that the mark is not capable of distinguishing the applicant’s goods and services, perhaps because consumers will not regard the mark as identifying the products of a particular business, or it is descriptive of the products or their characteristics, or it is a sign that is generic or common in the trade;
• Similarity with earlier marks (including “well-known” trade marks) or conflict with earlier rights (including copyright or registered design rights);
• The use of the mark is prohibited on the basis of passing off or under the copyright or design law;
• The mark was applied for in bad faith or its use would be contrary to law;
• The mark is contrary to morality or is likely to deceive the public.

6. Counter-Statement

Within 3 months of receiving a copy of the Notice of Opposition, the Applicant must file a Counter-statement.

This 3 month period may only be extended once by 2 months.

The Applicant must serve a copy of the Counter-statement on the Opponent. If the Applicant does not file a Counter-statement then the application will be deemed to have been withdrawn.

7. Opponent's Evidence

Within 6 months after the date of receiving a copy of the Counter-statement, the Opponent must file its evidence to support the Opposition. This period may be extended by one or more 3 month periods at the discretion of the Trade Marks Registry.

The Opponent will need to provide proof to support the grounds of opposition, e.g. details of any prior trade mark registrations or other rights and information regarding any prior use of a trade mark, the well-known status of a trade mark or details of bad faith. Detailed evidence will need to be provided in the form of a sworn declaration, with exhibits attached. The declaration should not contain any legal arguments, only evidence to substantiate the claims made in the Notice of Opposition.

Failure by the Opponent to file evidence will result in abandonment of the opposition.

8. Applicant's Evidence

Within 6 months after the date of receipt of the Opponent’s evidence, the Applicant must file its own evidence in support of its application. This period may be extended by 3 month periods at the discretion of the Trade Marks Registry.

Such evidence might include evidence of honest concurrent use or use of the mark prior to the first date of use claimed by the Opponent.

The Applicant must file a copy of the original statutory declaration at the Trade Marks Registry with a copy to the Opponent.

9. Evidence in Reply

Within 6 months after receiving a copy of the Applicant’s evidence (if filed), the Opponent has the option of filing evidence in reply. This period may be extended by 3 month periods at the discretion of the Trade Marks Registry.

Evidence in reply may only respond to points raised in the Applicant’s evidence. Therefore, an Opponent should ensure that the best possible evidence is made available when first filing its original evidence.

The Opponent must file the original evidence in reply at the Trade Marks Registry with a copy to the Applicant.

10. Additional Evidence

If either party wishes to file further evidence before the hearing, it must provide an adequate explanation for the delay and obtain the leave of the Registrar.

11. Formal Hearing

Following the conclusion of the evidential stage, the matter is then set down for a hearing which will usually take 18 months and up.

Written decisions are usually issued within 3 to 6 months after the hearing.

12. Appeal

The decision may be appealed to the Court within 28 days from the date of the decision.

13. Costs

The successful party to a trade mark opposition is entitled to recover from the other side a portion of its legal costs arising from the opposition. If the parties cannot agree on the amount to be paid then the Registrar can be called upon to make a determination as to the amount payable. The Registrar typically awards costs in the region of 60% to 70% of the actual costs incurred by the successful party which includes Hong Kong lawyers’ fees but not the fees of foreign counsel.

14. Timing

A trade mark opposition can take around 2½ to 3½ years from filing the opposition to reach the hearing stage. The exact timetable will depend on whether any of the parties request extensions of time as well as the backlog of pending cases at the Trade Marks Registry.

Please contact us if you require our brochure on our fees for Hong Kong Trade Mark Oppositions.