Intellectual Property | Dec 2022
Opposition to Trade Mark Registration Application in HK
Opposition to Trade Mark Registration Application in HK
Under section 44 of the Trade Marks Ordinance (Cap. 559), “any” person may give notice to the Registrar of Trade Marks to oppose a trade mark registration.
The Opposition Notice has to be in prescribed form (Form T6), and must be submitted to the Registrar of Trade Marks within 3 months beginning on the publication date of the trade mark application together with the prescribed filing fees.
The Opposition Notice (Form T6) should state the grounds of opposition. A usual ground of opposition is that the trade mark applied for is confusingly similar to an earlier mark for similar goods or services.
Upon receipt of the Opposition Notice (Form T6), applicant of the trade mark can consider :
1) To withdraw the trade mark application; Or
2) To defend the opposition by filing a Counter-Statement in prescribed form (Form T7) (No prescribed filing fees) within 3 months after the receipt of Form T6 from the opponent; Or
3) To divide the trade mark application where the opposition is made only in respect of some of the goods or services
For withdrawal of trade mark application by the applicant after the filing of Opposition Notice (Form T6), the applicant may have to pay the opponent’s costs. Costs may not be payable if the applicant can prove that the opponent has started the proceedings without giving any prior notice or warning.
For defending the opposition, the applicant may be ordered to bear the opponent’s costs if the applicant loses the proceedings.
Both the opponent and the applicant will have the opportunity to file evidence in support of their respective stances by way of Statutory Declaration or Affidavit within a specified time frame.
After the Trade Mark Registrar have received all evidence from the respective parties, a hearing will be fixed to decide whether the opposition can be substantiated, and make an order on the award of costs of the opposition proceedings. The general rule is that the successful party will be awarded costs of the proceedings.
For legal advice or services on IP disputes or IP infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799 Email: cac@ccsn.hk]
www.ccsn.hk
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