[HK] Opposition to Hong Kong Trademark Application

July 19, 2018

A gavel | Opposition to Hong Kong Trademark Application

Oppositions should be filed within 3 months beginning from the date of publication of the trademark application in the Hong Kong Trademark Official Journal (if an application is published on 1 March, the deadline to oppose will fall on 31 May). The deadline is extendable once only for 2 months subject to the discretion of the authority.

The grounds on which opposition can be lodged
An application may be opposed to “absolute grounds” or “relative grounds”. The relevant provisions are provided below.-

Absolute grounds

Applications may be opposed on absolute grounds as follows:-
The sign is not one which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically
Trademarks which are devoid of any distinctive character;
· Trademarks which consist 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; and

· Trademarks which consist exclusively of signs which have become customary in the current language or the honest and established practices of the trade.

· A sign shall not be registered as a trademark in relation to goods if it consists exclusively of-
(a) the shape that results from the nature of the goods themselves;
(b) the shape of goods that is necessary to obtain a technical result; or
(c) the shape that gives substantial value to the goods.
· A trademark shall not be registered if it is-
(a) contrary to accepted principles of morality; or
(b) likely to deceive the public.

· A trademark shall not be registered if, or to the extent that-
(a) its use is prohibited in Hong Kong under or by virtue of any law; or
(b) the application for registration of the trademark is made in bad faith.
· A trademark shall not be registered if, or to the extent that, it consists of or contains
(a) the national flag or its design;
(b) the national emblem or its design;
(c) the regional flag or its design; or
(d) the regional emblem or its design.
The trademark contains flags, armorial bearings, state emblems etc of a Paris Convention country or WTO member or certain international organization which are protected under the Paris Convention or World Trade Organization Agreement

Relative grounds

Applications may be opposed on relative grounds as follows:-

· A trademark shall not be registered if-
(a) the trademark is identical to an earlier trademark; and
(b) the goods or services for which the application for registration is made are identical to those for which the earlier trademark is protected.

· A trademark shall not be registered if-
(a) the trademark is identical to an earlier trademark;
(b) the goods or services for which the application for registration is made are similar to those for which the earlier trademark is protected; and
(c) the use of the trademark in relation to those goods or services is likely to confuse the part of the public.

· A trademark shall not be registered if-
(a) the trademark is similar to an earlier trademark;
(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trademark is protected; and
(c) the use of the trademark in relation to those goods or services is likely to cause confusion on the part of the public.

· A trademark which is-
(a) identical or similar to an earlier trademark; and
(b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trademark is protected,
shall not be registered if, or to the extent that, the earlier trademark is entitled to protection under the Paris Convention as a well-known trademark and the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.

· A trademark shall not be registered if, or to the extent that, its use in Hong Kong is liable to be prevented-
(a) by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of
trade or business (in particular, by virtue of the law of passing off); or
(b) by virtue of an earlier right other than those referred to hereinabove (in particular, by virtue of the law of copyright or registered designs)

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