Trademark Opposition Proceedings in Hong Kong
[Professor Wagstaff]
“I don’tt know what they have to say
It makes no difference anyway
Whatever it is, I’m against it
No matter what it is or who commenced it
I’m against it!
Your proposition may be good
But let’s have one thing understood:
Whatever it is, I’m against it
And even when you’ve changed it or condensed it
I’m against it!
I’m opposed to it!
On general principles, I’m opposed to it!”
[College Students]
“He’s opposed to it
In fact, indeed, he’s opposed to it”
Almost all nations’ trademark registration schemes incorporate an ability to challenge the ultimate validity or registrability of a service mark or a trademark application before it reaches the official registration status. Accordingly, and ordinarily, in trademark law practice, an opposition proceeding is the agency adjudication of one or more formal objections raised by a third party against a published trademark application, preventing said application from being registered.
Here in the United States, pursuant to the Lanham Trademark Act, any party who may be damaged by the actual or proposed registration of a mark is entitled to challenge the same. This is a contested (inter partes) process which plays out before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”).
Proceeding through this gauntlet, the interested party(ies) is (are) afforded an opportunity to contest a trademark application before it registers, potentially impacting the opposer’s legal rights or commercial interests. Such an internal trademark agency proceeding necessarily incorporates the interposition of pleadings, evidence (to wit, affidavits, declarations, deposition testimony, documentary, and/or physical exhibits), and, in some cases which go the distance a hearing before the TTAB. In America, this type of proceeding can, indeed, be quite protracted (i.e., 2 to 3 years) and prohibitively expensive. It is also not outside the realm of possibility that the matter may be settled by inter-party negotiation long before any final decision is reached by the TTAB.
For context, in the U.S.A., the yearly number of trademark oppositions has, over time, risen to exceed 6,000. Based on the information available, the USPTO has received and docketed the following number of trademark oppositions in recent fiscal years:
FY 2024: 6,651
FY 2023: 6,387
FY 2022: 6,702
Not every global jurisdiction evinces such transparency in its trademark statistics. For example, data on the annual number of trademark opposition proceedings in Hong Kong does not appear to be readily available. Nevertheless, Hong Kong is a central hub of intellectual property law activity and home to untold number of trademark and patent applications yearly.
From some other types of data, which are more readily available in Hong Kong, one may gather some pertinent information and draw some solid conclusions. Certainly, trademark oppositions are authorized by law in Hong Kong, and the most common grounds therefor are as follows: bad faith, similarity of marks/goods/services, and passing off. A selective review of decisions of the Hong Kong Trademarks Registry (“HKTR”) from, let us say, 2020-2021, tends to reflect that the greatest success was achieved in those oppositions that were based upon the ground of bad faith (in contrast to the ground of similarity of marks and goods/services.)
Hong Kong
As is not uncommon with older city names, there are a number of theories about how Hong Kong originally derived its name. Apparently, "Hong Kong" is the romanization of a Cantonese phrase, "Heung Gong" (香 港), which means "fragrant harbor" or "incense harbor". During the Ming Dynasty, the area was a prominent seaport for incense (agarwood) and other fragrant products. However, a different theory holds that the city’s name was derived from the sweet taste of fresh water flowing into the harbor from the Pearl River or the smell of the multiplicity of incense factories lining the coast.
Hong Kong, a former colony of the British Empire, nowadays boasts 7.5 million inhabitants living in a 430 square mile area, making it the 4th most densely populated region in the world, not to mention the 3rd ranked global financial center (behind N.Y.C.), the 9th largest exporter, and the 8th largest importer. The city has a remarkably high per-capita income, and the largest number of skyscrapers and, yet, still boasts the highest life/age expectancy in the world.
Hong Kong is a so-called “special administrative region” of China, with a tri-partite form of government, to wit, executive, legislative, and judicial powers devolved from the national government. According to terms and conditions and the "one country, two systems" principle, the fundamental law of Hong Kong is the regional Constitution.
Notwithstanding, accurately predicting Hong Kong's commercial, political, and legal future is not only beyond the scope of this article, but is fraught with complex challenges and, perhaps, opportunities. To be sure, Hong Kong constantly now precariously walks the high wire, inasmuch as, despite its internationally appealing position as a global finance nexus, it is endlessly scrutinized due to Mainland Chinese politics and PRC security measures. At the same time, the city actively seeks to simultaneously maintain its own unique identity whilst, at the same time, it forges new paths toward growth and diversification.
Hong Kong is Part of China, But Hong Kong Marks are not Chinese Marks
The Chinese policy (or principle) of “One Country, Two Systems” is on display, in its full application, in the Hong Kong business and IP (including trademark) arena. The legal and economic systems of Hong Kong are separate and distinct from Mainland China (the People’s Republic of China or “PRC”).
In situations wherein protection is needed in both Hong Kong and the PRC, separate applications must be submitted in each given jurisdiction. Moreover, the differences between the PRC and Hong Kong in terms of their respective trademark regimens are, indeed, eye-opening. Consequently, it is imperative to engage competent IP practitioners who can either handle both jurisdictions or, in the alternative, two law firms, one covering each jurisdiction for you and your IP client(s).
There are numerous differences between the two systems. Set forth hereinbelow is a summary of some of the major differences.
In Hong Kong, the trademark registration regime is operated under the Hong Kong Trademark Ordinance. In China, trademark practice and registration are governed by the PRC’s own trademark laws and regulations.
As is the case with the U.S. system, there is no extraterritoriality in either the Hong Kong or PRC systems. That is to say, the Hong Kong registration only serves to protect the mark within Hong Kong, and the PRC Chinese mark only protects the mark within the territorial boundaries of the PRC.
Under Hong Kong law, as in the United States, trademark rights are established through actual use in commerce. Thus, the first to use a mark in connection with goods or services generally has the right to the mark, even if not formally registered. In stark contrast, in the PRC, trademark rights are established only via registration. Accordingly, the first party to file an application with the PRC Trademark Office generally is granted the trademark rights, irrespective of the issue of prior use.
With respect to well-known marks, the Owners of unregistered well-known marks in Hong Kong, may seek injunctions against infringing use. Over on the mainland, well-known marks do enjoy special protection, however, the definition and enforcement mechanisms are quite different than in Hong Kong.
The Trademark Registration Process in Hong Kong
In 1873, the Hong Kong government passed the Trade Mark Ordinance Cap 43. That law stood the test of time until April 4, 2023 when the new Trade Marks Ordinance Cap. 559 (reprinted hereinbelow) came into force. Both the repealed law, and the current legislation, possess a number of many similarities with United Kingdom (“U.K.”) legislation in the United Kingdom, which likeness is, in some part, of course, attributable to the TRIPS Agreement.
Among other things, the 2023 law introduced various and sundry substantive and procedural changes including, but not limited to the following: expanding the legal definition of a trademark; including or broadening protection for certification marks, collective marks, and well-known trade marks; reducing the period of non-use for revocation purpose from five to three years; and simplifying and streamlining procedures for the registration of assignments, and "registrable transactions" such as licenses.
The Filing to Registration Stage of a Hong Kong Trademark
The trademark registration process in Hong Kong is instituted by the submission of an appropriate application to the Trade Mark Registry of the Hong Kong Intellectual Property Department (“HKTR”). As in many other nations around the globe, an application can involve one or more (i.e., multiple) classes of goods and/or services.
As and for the minimal filing requirements for a Hong Kong trademark, an appropriate application, which will suffice in order to obtain a filing date from HKTR, ought to contain the following elements: (a) a request for registration of a trademark with indication of color(s), if any; (b) the Applicant’s detailed identifying information; (c) a graphic representation of the trademark; and (d) a list of goods and/or services.
At the time of this writing, the standard cost for using the services of a Hong Kong-based Trademark Attorney to handle the filing of an application -- for one (1) class -- is HK $4,300 (approx. $548 Dollars (U.S.)). Notably, the lawyer’s fee amount is a sum recommended by the Hong Kong Law Society. The official filing fees levied by the HKTR are HK$2000 (approx. $255 Dollars (U.S.), for the first class, and an additional HK$1000 (approx. $128 Dollars (U.S.)) for each additional class. I pause here to observe that, at certain other phases of the registrational procedures, there will be other fees as well.
For the foreign practitioners to know, there are no Powers of Attorney required in Hong Kong. Notably, the priority document is not required in case of claiming priority. However, the Intellectual Property Department (IPD) of Hong Kong may request its submission. When the priority document is not in Chinese or English, the Applicant is required to provide a Chinese or English translation.
As a threshold matter, the application will be reviewed by an HKTR Examiner for formal shortcomings. After reviewing for such formal (technical) deficiencies, the ensuing phases relate to a substantive examination. During that phase, the principal grounds for objection, if and to the extent applicable, will be raised. Such objections usually fall into two (2) general categories, namely: 1) “absolute grounds” for refusal (e.g., in situations wherein the trademark is inherently unregistrable), and 2) “relative grounds” for refusal (e.g., in situations wherein the trademark appears to be identical or very similar to a mark or marks covered by a prior-in-time application or registration.)
If there are no formal objections, the application will move forward toward registration. Similarly, in the aftermath of any objections that are then overcome, at the proper time, the application will be deemed to be accepted by the HKTR. At that juncture, the mark will be published for opposition purposes.
In Hong Kong, the opposition period last for a full three (3) months. The period is, however, subject to extension. Interested, aggrieved parties may duly object to registration of a mark on various, articulated legal bases.
If no opposition is encountered by the mark application or, in the alternative, if opposition is made but overcome, at the end of the line, a registration certificate will be forthcoming. Generally speaking, the standard chronology to mark registration on an underlying application that evinces few or no issues or complications will be approximately twelve (12) months from start to finish in Hong Kong.
Post-Registration Stage of a Hong Kong Trademark
Once granted, a Hong Kong Trademark Registration will retain its validity for a ten (10) year period (as in the U.S. and the PRC), measured from the date of registration. Similarly, as is the case in the United States, and many other countries (including the PRC), the registration may be extended (renewed) indefinitely every ten (10) years thereafter simply by virtue of payment of the then applicable renewal fee. Renewals may be filed within six (6) months before the expiry date. There is also a six (6) month grace period (after expiry of the registration) during which a renewal can still be applied for, although at the cost of an additional fee.
Under Hong Kong law, there is a legal use requirement. Accordingly, a registration for a trademark in Hong Kong may be subject to revocation by a third party (i.e., a cancellation) in situations wherein the trademark has not been genuinely and continuously used for a period of at least three (3) years, and there are no valid reasons or explanations therefor.
As noted, supra, a trademark registration in Hong Kong does not automatically extend to other jurisdictions, such as mainland China (the PRC).
Trademark Opposition Proceedings in Hong Kong
In Hong Kong, an aggrieved third party can oppose another party’s trademark application within a period of three (3) months of the application’s publication in the Hong Kong Intellectual Property Journal (“HKIPJ”). The three-month opposition period is measured from the date of the publication. The opposition deadline is extendable -- one time only – for a period of two (2) months. The opposition period extension request carries a HK200 fee (approx. $25 Dollars (U.S.)).
Any such trademark opposition must be filed with the HKTR and, to be proper, must include the legal grounds for opposition. The submission process, which currently involves a filing fee of HK800 (approx. $ 102 Dollars (U.S.)) will see the interposition of a Notice of Opposition, perhaps followed up by a response or counterstatement from the trademark applicant. I pause to observe that there is no official fee for the required counterstatement. Subsequently, evidence will be submitted by both sides. In the final stage, a designated Hearing Officer at the HKTR will render a decision on the Opposition Proceeding.
As one might imagine, Oppositions Proceedings may be complicated and/or may endure for a protracted period. For those reasons, to maximize one’s client’s chances of success, it is essential to retain competent IP counsel who has experience handling Hong Kong IP Matters and, additionally, being able to marshal and present relevant and material evidence in support of the client’s case.
At this juncture, it would be more than usually desirable to engage in a dissection of the trademark opposition process in Hong Kong. Allow me to methodically go through the process, in step-by-step fashion.
Publication of the Offending Mark
At some point, the eventually offending mark will secure the Examiner’s nod to steam ahead to registration. The putative mark then is published in the Hong Kong Intellectual Property Journal (for opposition purposes). As discussed, supra, the opposition period is a generous three (3) months, absent extensions.
Conferral with Client
The Hong Kong Trademark Attorney for the putative Opponent ought to discuss the facts and circumstances with the client, conducts electronic searches as needed, or commissions a formal search, as needed, reviews documents and/or physical evidence, and forms an initial opinion of the matter; thereupon, the Attorney ought to devise an appropriate strategy to discuss for the particular case and, then, secure the client’s approval as well as any special instructions related thereto.
Preparation of the Initial Pleading
The attorney prepares the initial pleading, namely, the Notice of Opposition. An address for service on the Opponent (i.e., the Opposer[USA]) must be provided. Needless to say, the Notice of Opposition must state the legal ground(s) underlying the initial pleading.
On what grounds may the HKTRT object or may a third party oppose the trademark application? The possible grounds are set out in sections 11 and 12 of the Trade Marks Ordinance, including cases wherein the trade mark:
is devoid of any distinctive character;
consists exclusively of signs which may serve, in trade or business, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services;
consists exclusively of signs which have become customary in the current language or in the honest and established practices of the trade;
consists exclusively of the shape that results from the nature of the goods themselves, the shape of goods that are necessary to obtain a technical result, or the shape that gives substantial value to the goods;
contrary to accepted principles of morality or likely to deceive the public;
use is prohibited in Hong Kong under or by virtue of any law or the application for registration was made in bad faith;
is identical or similar to an earlier trade mark and the goods or services for which the application for registration is made are similar or identical to those for which the earlier trade mark is protected or of which is prohibited by virtue of the laws of passing off, copyright or registered designs.
Under the trademark laws of Hong Kong, to wit, the Trade Marks Ordinance, Cap. 559 of the laws of Hong Kong (“the Ordinance”), opposition under absolute grounds and/or relative grounds are organized which can be conferred through Sections 11 and 12 of the Ordinance. Some of the most commonly utilized grounds, thus, are the following:
Deceiving the public.
Pursuant to Section 11(4)(b) of the Ordinance, in situations wherein the Applicant’s mark is such that it is likely to deceive the public (by making them believe that the concerned product or service belongs to the Opponent’s brand), then, the trademark is liable to be rejected.
Bad Faith
In accordance with Section 11(5)(b) of the Ordinance, no Applicant is allowed to register any trademark in bad faith. If any trademark is filed for registration in bad faith, then, the mark is liable to be rejected.
Similarities of marks and goods/services and Well-known Trade mark
As per Section 12(3) and/or 12(4), a well-known mark of the Opponent which pre-exists in the market should be protected and any identical or similar mark should be barred from registration.
Law of Passing Off
According to Section 12(5)(a) of the Ordinance, an unregistered trademark is also protected under the common law action of passing off. Therefore, when an infringement of an unregistered trademark takes place, then, the law of passing off applies to any such infringement.
As we have seen, the most common grounds for trademark opposition in Hong Kong are as follows (not listed in any particular order:
Earlier use of a trademark that is similar.
Likelihood of confusion vis-à-vis an extant mark.
The applied-for mark was filed as a matter of bad faith.
The applied-for mark is likely to deceive the consuming-public.
The applied-for mark is identical or similar to a well-known trademark.
Passing off (i.e., utilizing a mark that bears similarity to an unregistered trademark).
The applied-for mark fails to meet the requirements for legal protection.
Quite apart from the foregoing grounds, there are, indeed, other grounds that also are employed in the legal battle against trademark transgressors.
Needless to say, they include the absolute ground objections such as that the mark is descriptive, non-distinctive, contrary to accepted principles of morality, etc. Nevertheless, if one studies the HGTR’s Opposition Proceeding decisions in the years 2020 and 2021, it may be noted that the majority of the prevailing parties were those that pleaded and proved “bad faith.” Behind that, the opposition ground most successful would have been claims of alleged similarity between the Applicant’s mark and the Opponent’s mark and/or their respective goods or services; in third place, was the ground of “passing off.”
In order to demonstrate bad faith, it is paramount that the Opponent – utilizing the facts and circumstances extant -- highlights the existence of bad faith of the Applicant when filing the trademark application. In that vein, the courts in Hong Kong have articulated that, in cases of bad faith, the following types of features:
Applicant and Opponent enjoyed a previous relationship (e.g., Applicant was a distributor for Opponent);
Applicant possessed knowledge of Opponent’s mark;
Applicant would have known of Opponent’s mark due to the Opponent’s fame and/or both Opponent and Applicant are involved in the same industry);
The opposed mark is identical or very similar to Opponent’s mark; and/or
Applicant is a trademark squatter.
Looking across Hong Kong’s legal landscape, in the context of Opposition Proceedings generally, most frequently employed relative ground upon which the parties place their reliance is similarity of the marks and goods and/or services).
Albeit the trademark law of Hong Kong allows an Opponent to raise the ground of “bad faith,” one should not do so indiscriminately. Stated otherwise, just because the Ordinance permits the ground, it should not be raised in situations wherein there is a similarity of marks without more. In that vein, the HKTR is sensitive to concerns for parties’ (including the Applicant’s) reputation. Accordingly, it may fairly be stated that the ground of bad faith ought to be pleaded with due caution in order to maintain an orderly and fair trademarking process.
Interestingly, “bad faith” is not defined in the Ordinance; as for the case precedent, it appears to suggest that “dishonesty” together with some business dealings which fall short of the mark of acceptable business conduct -- as perceived by reasonable and experienced persons in the industry, would be a good clue. Ultimately, the tribunal must wrap its arms around what the Applicant knew about the transaction, when the Applicant knew it, and other pertinent and relevant inquiries. Simply put, in light of the Applicant’s knowledge, how does the conduct of the Applicant measure up; that is to say, is it to be deemed “dishonest,” using the ordinary standards of honest people to conduct the test.
Even in cases wherein the Opponent does not possess a prior Hong Kong trademark registration, it is nevertheless possible to rely on grounds of bad faith, passing off, or that the Opponent’s mark is well-known. It ought to be noted, however, that, for the passing off ground and the ground that the Opponent’s mark is well-known, the Opponent faces a high burden of proof and, therefore, needs to submit a substantial amount of evidence. Whilst for the bad faith ground, the burden is not as high, it must be specially pleaded. It may be noted that, assuming that the Applicant and Opponent were involved in a prior business relationship – or where the marks are identical -- it will be easier to succeed on the ground of bad faith.
One would do well to keep in mind that “bad faith” is a serious allegation that must be pleaded and proved. Moreover, in many situations, it is not a simple task for the Opponent to dredge up any direct evidence of bad faith by the Applicant. That being said, it is, in the final analysis, the Registrar which must consider all of the facts and circumstances extant and, then, make its all-encompassing assessment. Thus, in some cases, depending upon the fact pattern and underlying factors, it may, indeed, be possible to prove one’s “bad faith” case by means of circumstantial evidence. The bottom line, of course, will be fact-specific and each case will pivot on its own facts.
The importance of evidence, irrespective of which ground upon which an opposition proceeding in Hong King may be predicated, cannot be understated. Put another way, in order to maximize one’s chances to prevail in an opposition proceeding, as an Opponent, one must properly plead all of the material allegations that are required to satisfy the pertinent criteria and to submit competent, admissible, supporting evidence in support thereof.
At this juncture, it may be constructive to provide some concrete examples. How can we illustrate the relative import of the submission of relevant and proper evidence in the context of an opposition proceeding (including the possible use of circumstantial evidence in appropriate cases)?
Set forth herein below are some ideas about the types of evidence that may be constructively and gainfully employed in the context, and in support of an Opponent’s Hong Kong Opposition Proceeding. The ensuing examples have been culled from some of the pertinent case law decisions.
Relative overall comparison of the two (2) marks
Relative analysis and comparison of the number of words, letters, characters, etc. in each mark.
Relative analysis and comparison of any design or visual elements.
Relative analysis of overall impression of marks.
Relative analysis of phonetic and/or translatable portions of marks.
Relative analysis of visual, verbal, and aural elements of mark (in the U.S., we would say, ”sight, sound, and meaning”).
Whether any acronyms come into play with either mark.
Whether any portion of the marks are merely descriptive in nature.
Whether any portion of the marks are generic in nature.
The degree of competition between Opponent and Applicant.
Whether Applicant knew the Opponent and/or the existence of Opponent’s mark.
The history of each company.
The varied details of use of the marks in Hong King.
The details of any use of the marks outside Hong Kong.
Yearly advertising and marketing figures for a significant period of time, with proofs (e.g., advertisements, newspaper ads and articles, magazine ads and articles, tv ads, radio ads, ads on mass transit [trains, buses, taxis], online ads, social media platform ads (Facebook, Linked In, Yahoo, Google), digital banners, posters, marketing events, POS signage and materials, digital banners, and direct marketing proofs.
Yearly sales figures for a significant period of time, with proof.
Representative Invoices or Statements.
Selected sample advertising materials.
Information about, and lists, of distributors and wholesalers.
Information about retailers who buy and sell the goods.
Schedule of foreign trademark applications and/or Registrations for each mark.
Proofs of sample products showing clearly the marks at issue.
Details regarding Applicant’s mark’s origin, that is to say, the conception and creation of its mark.
There are several additional and quite important takeaways. Depending upon the nuances and subtleties of a case including, but not limited to, the extent and gravity of the evidence submitted by the adversary, one’s strategy must always be custom-tailored to the matter at hand. To be sure, having more evidence is not always the correct answer; it is quality, not quantity. The key is to try to correctly estimate what would be more relevant and, more crucially, perhaps, more persuasive to the HKTR.
Submission of Pleading to Tribunal
In order to oppose a pending trademark application in Hong Kong, the aggrieved party, i.e., the Opponent must file a certain form, Form T6, with the HKTR. At that time, the prescribed fee therefor (see above) must be paid.
Response by the Applicant
By law, the Applicant is permitted to file a Response or counterstatement in response to the Notice of Opposition (“N/O/OPP”). The deadline for any such response is three (3) months after the Applicant’s receipt of the N/O/OPP (or later if an extension has been granted). The Response document is filed on a special form, Form T7. The HKTR does not charge for the filing of a Response.
The response period can be extended, a single time, for a period of two (2) months. The extension request is submitted by virtue of a special form, Form T13, and there is an official charge therefor. (HK$200, or about $25 Dollars (U.S.)).
In cases wherein a Response (sometimes referred to as a “Counterstatement) is filed, the case will, in due course, proceed to the evidence submission phase; see discussion, infra.
Failure to Respond
In the event that the Applicant fails to respond, unlike U.S. practice, which is not the cause for the automatic issuance of a Default Judgment in favor of the Opponent. Rather, the Applicant’s trademark application is deemed to be withdrawn. That event serves to arrest the trademark registration process and, in so doing, dashes any chances of the Applicant getting the mark registered.
Evidentiary Submission Stage
Assuming, arguendo, that the Applicant has filed a Response (Counter Statement), the Opponent then is allowed a rather generous six (6) months within which to submit its evidence in support of the opposition.
Subsequently, the Applicant is afforded a mirror-image 6 months to file its evidence in response; the deadline is calculated by the date that the Applicant received the Opponent’s evidentiary submission.
In this legal see-saw battle, the Opponent then has yet another six (6) months, the Reply Period, within which it may file any reply evidence. Once again, the deadline date is measured by the date of receipt of evidence from the party on the other side.
Submission of Case
The case will go before a Hearing Officer after the evidentiary stage has been finished. If requested, a hearing will be scheduled. In that event, both sides can attend the hearing (either in person or through an official representative). In due course, the Hearing Officer will duly consider the matter and, thereafter, render a decision for the opposition proceeding. Typically, costs are awarded to the prevailing party.
Hong Kong Trademark Oppositions (the Appellate Process)
There is a multi-tiered appellate process available with respect to trademark opposition proceedings in Hong Kong. Any applicable time limitations, it should be noted, must be strictly observed.
Needless to say, the Registrar of Trademarks (HKTR) is accorded the right to make an appearance and is afforded an opportunity to be heard on appeals in its bid to support the underlying HKTR decision. It is noteworthy that new evidence may be admitted on appeal if leave is granted to do so by the court. Importantly, the filing of an appeal, without more, does not act to stay the proceedings at the HKTR, absent an applicable order of the court or by the Registrar.
Upon rendering the initial decision, the Registrar of Trade Marks at the Hong Kong Intellectual Property Department will issue a formal, written decision on the trademark opposition. From that decision, either side can take an appeal to the Court of First Instance. That appeal must be taken within a period of twenty-eight (28) days of the decision or the date a statement of reasons for the decision is sent by the HKTR.
In turn, the decision of the Court of First Instance can be further appealed to the intermediate appellate court, namely, the Court of Appeal. In appropriate cases, and only by leave of the Court of Final Appeal, the case can be appealed to that higher court.
Practitioner Tips
As with all commercial matters, there may be one or more opportunities to alternatively resolve the inchoate trademark dispute between your client and the Applicant presenting the offending mark. That is to say, there is a chance that the controversy can be laid to rest through non-agency means.
For example, so long as the opposition period has not yet expired (and will not soon expire), in some circumstances, you may be able to have your Hong Counsel attempt to communicate with the Applicant (or Applicant’s counsel, if represented) in a notice to the Applicant about your client’s mark, coupled with a request for the Applicant to withdraw its trademark application. Sometimes, for example, the Applicant is from Mainland China and does not wish to invest much money in the process; the mere idea of future proceedings at HKTR may persuade the Applicant to throw up the white flag.
Doubtless, there will be Applicants which do not respond to such informal requests. Once your client pulls the trigger on the Opposition, thus carrying through on the threat of commencing proceedings, a new day will dawn. The Applicant may then, depending upon its inclination and the attendant circumstances, choose to default by not answering the opposition pleading lodged on behalf of your client.
In still other cases, the Applicant may, at least initially, put up a fight. This may be a calculated bluff to check your client’s commitment and resolve. If you and your HK counsel sense weakness, lack of interest, or desperation, on the part of the Applicant (or its counsel, if represented), it may be possible to start settlement negotiations while the Opposition Proceeding is pending but before you get mired too deeply in the administrative agency muck.
In some countries, because of the way the trademark law is set up, and the manner in which the trademark office works, you can have more than one mark owner with the same (or highly similar) mark in the same class, but on different goods. In the U.S., the holder of a Class 25 mark on clothing goods can enforce its mark against other Class 25 goods without question or real limit, but not so in China or Hong Kong. It is possible for 2 or more holders of a mark to have the mark for different goods in the same class (e.g., Holder “A” in Class 25 for clothing, hats, sweaters shirts, trousers and Holder “B,” for belts, ties, and scarves in Class 25). In another example, one party might be making Class 25 goods only for adults, or only for children. While that would not fly in the U.S., it very well could abroad.
Such a split of goods can be arrived at by allowing Trademark Opposition to run its course and the HKTR (or CNIPA) might allow the Applicant to register on some goods and not register on other goods even if in the very same class.
Alternatively, your client could strike an accord with the Applicant to arrange such a split by settlement agreement. The Applicant would then amend its application to withdraw the offending goods and only be able to achieve a registration on goods that will not affect or offend your client.
Conclusion
Hong Kong has a comprehensive IP legal framework. As our borders re-open post-pandemic, it is important to remain vigilant and proactive in protecting your rights, monitoring potential infringements, and utilizing available enforcement mechanisms.
Representation by a trademark attorney to perform the trademark prosecution in Hong Kong, foreign applicants should appoint an agent who carries on business activities on the premises at the address in Hong Kong, or a Hong Kong resident.
