What Grounds Are Available For Hong Kong Trade Mark Opposition Proceedings?

Published date25 November 2022
Subject MatterIntellectual Property, Trademark
Law FirmRouse
AuthorMs Theresa Mak

The article highlights the grounds most used in opposition proceedings in Hong Kong in the last two years.

Legal grounds for a trade mark opposition

The Trade Marks Ordinance, Cap. 559 of the laws of Hong Kong ("the Ordinance"), categorises the opposition under absolute grounds and/or relative grounds which can be conferred through Sections 11 and 12 of the Ordinance. Some of the most commonly used grounds are:

1. Deceiving the public

According to Section 11(4)(b) of the Ordinance, if 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 such trade mark is liable to be rejected on the face of it.

2. Bad Faith

According to Section 11(5)(b) of the Ordinance, no applicant is allowed to register any trade mark in bad faith. If any trade mark is filed for registration in bad faith, it is liable to be rejected out rightly.

3. 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.

4. Law of passing off

According to Section 12(5)(a) of the Ordinance, an unregistered trade mark is also protected under the common law action of passing off. Therefore, when an infringement of an unregistered trade mark eventuates, it is the law of passing off that applies to such an infringement.

Apart from the above there are other grounds that are also used frequently. They would include the absolute ground objections such as the mark is descriptive, non-distinctive, contrary to accepted principles of morality etc. However, as per the findings of the Trade mark Registry's opposition decisions of 2020 and 2021, it has been observed that the majority of the oppositions filed, the bad faith ground seems to have the highest chances of success. This opposition ground is followed by the claims of similarity between the marks and/or goods or services and the passing off ground.

To prove bad faith, it becomes immensely important for the opponent to highlight the facts that show the existence of bad faith of the applicant when filing the trade mark application. Some of the features that the Courts have observed in bad faith cases include:

  • the opposed mark is identical or very similar to the opponent's mark;
  • the applicant and opponent had a previous relationship (e.g the...

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