Trademarks Ordinance implemented after three-year delay

Hong Kong

The Trademarks Ordinance, which was enacted in 2000, has been implemented today after a series of technical set-backs. The last hurdle was removed when the government conceded to amend Rule 13 of the Trademarks Rules implementing the ordinance. Trademark professionals and owners associations had expressed strong objections to the rule's original draft, which they considered too rigid.

The draft provided that, without exception, an applicant would have a maximum of nine months to satisfy the registrar that its mark meets the registration requirements. In contrast, the amended version allows extensions if the applicant needs time to:

  • prepare evidence of use;

  • take assignment of the cited mark;

  • obtain consent from the owner of the cited mark;

  • await disposal of proceedings to invalidate or revoke the cited mark; or

  • if other exceptional circumstances exist to justify a grant of extension of time.

However, sticking to the ordinance's goal of speeding up and simplifying the trademark registration procedures, the Trademarks Rules expressly exclude the registrar's discretion to extend the deadline for, among other things, the following:

  • responding to a notice of deficiency in formality;

  • filing a notice of opposition and counterstatement (beyond one term of extension);

  • filing a counterstatement and evidence of use in defence of a cancellation action on the grounds of non-use;

  • filing a counterstatement in defence of an invalidity action;

  • filing a notice of objection to alteration of a registered mark; and

  • converting an existing application for examination under the new Trademarks Ordinance.

For a background discussion on the ordinance and its implementing rules, see Hong Kong introduces new Trademarks Ordinance and Implementation of Trademarks Ordinance put on hold.

Rebecca Lo, Linklaters, Hong Kong

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