Trademark
Opposition Procedure in Hong Kong
Trademark
opposition proceeding in Hong Kong is operated much like a court trial.
Although there is no stipulation for cooling-off period, trademark applicant
and opponent may negotiate for settlement during the opposition proceeding.
If no settlement reached, the losing party has to compensate the other
party for the cost incurred.
The major steps for opposition procedure are set out as follows:
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Notice
of opposition (within 3 months)
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Counter-statement
(within 3 months)
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Evidence
in support of opposition (within 6 months)
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Evidence
in support of trademark application (within 6 months)
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Evidence
in reply (within 6 months)
(strictly confined to matters in reply to the applicant's
evidence)
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Section
44 of the Hong Kong Trademark Ordinance provides that any person may
submit an opposition notice to the Registrar against registration of
a published trademark application. The notice must be submitted in writing
within 3 months counted from the date of publication of the mark. An
extension of 2 months can be obtained, if a request for extension is
filed within the aforesaid prescribed period.
Upon receiving an opposition notice, the trademark applicant may submit
a counter-statement within 3 months. This time period is also extendible
by 2 months. If the applicant fails to submit a counter-statement with
the time limit, his application for registration shall be deemed to
have been withdrawn.
The opponent has to submit evidence in support of his opposition request.
Such evidence should be submitted in the form of statutory declaration
or an affidavit. If the opponent fails to submit such evidence within
6 months after receiving a copy of the counter-statement, his opposition
request shall be deemed not to have been submitted. The six-month time
limit is not extendible, unless agreed by the other party.
In reply to the evidence submitted by the opponent, the trademark applicant
may submit his evidence. Such evidence must be submitted within 6 months
or any agreed extended period.
Either party may at any time ask the Registrar leave for submitting
additional evidence. If such a leave is granted, the other party usually
will be allowed to submit additional evidence. After evidence submission,
the Registrar will fix time and place for a hearing and notify each
party accordingly.
Any party who intends to appear at the hearing shall, within 14 days
after receiving the notice, file a notice of his intention with the
Registrar. If any party fails to attend the hearing, the Registrar may
make a decision without hearing. The hearing is open to the public.
The opposition decision made by the Registrar can be appealed to the
Court of First Instance by either party, decision of which may in turn
be appealed to the Court of Appeal. The decision of the Court of Appeal
may optionally be examined by the Court of Final Appeal.
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