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28.11.2019 | China : Distinctions between registration of black and white trademark, and colour trademark

Distinctions between registration of black and white trademark, and colour trademark Many companies add colours to the design when registering trademark. Companies which make trademark application for the first time may be even more concerned about the problem with the colouring of trademark. “What colour should we use for the trademark?” I, as the editor, feel their anxiety when they are struggling with the problem of colouring of the trademark. Today, let’s talk about the issue – whether it is... MORE

30.09.2019 | PRC Trademark Opposition Procedures

How a PRC trademark opposition is commenced Oppositions should be filed within 3 months from the date of publication in the Chinese Trademark Gazette (if an application is published on 13 March, the deadline to oppose will fall on 13 June). The deadline is non-extendable. Typical steps in PRC trademark opposition A Notice of Opposition with the Opposition Grounds and evidence of opposition must be filed within 3 months of the Gazette After the opposition is admitted, the Opponent may... MORE

30.08.2019 | The Trademark Classification System

The Trademark Classification System Before registering a trademark, you must first define the goods and/or services that will be used for the trademark. Your application must include a list of all goods and services that you want to use to register your trademark. You must list the products and services in the category to which they belong. It should also state the number of classes to which it belongs. The 11th edition of the World Intellectual Property Organization (WIPO) Nice... MORE

30.07.2019 | SKECHERS succeed trademark infringement in China

SKECHERS succeed trademark infringement in China The internationally renowned footwear company, Skechers USA Inc. (Skechers), has won landmark trademark infringement in China in 2018. Skechers has registered, inter alia, a series of “S” device trademarks under Class 25 in China. Besides trademark registrations, Skechers has enjoyed substantial reputation and popularity globally in respect of its “D’Lites” series shoes, including but not limited to China. In late 2015, Skechers has discovered two Chinese footwear companies, namely Spieth & Wensky Sporting Goods... MORE

30.06.2019 | Appeal against the decision of Trademarks Registry

Appeal against the decision of Trademarks Registry Appealable decisions Any registrar’s decision or order made under the Trade Marks Ordinance may be appealed to the High Court. The specific definition of “decision” includes any act done by the Registrar in the exercise of this Ordinance or the discretion granted to him under this Ordinance. This actually means that any challenge to the registrar’s decision or order, whether based on statutory terms or in the exercise of discretion, shall be appealed... MORE

28.05.2019 | Color Marks

Color Marks Theoretically, a mark consisting of a single color, or a combination of colors, is registrable as a trademark provided that it has satisfied the required capacity to distinguish one source of origin from the others. However, in practice, a single color, or a combination of colors normally lacks the capacity to distinguish one undertaking from another because consumers are not accustomed to assume the origin of goods/services on their color or the color of their packaging in the... MORE

30.04.2019 | ‘Relative Grounds’ for Refusal of a EUTM Application

‘Relative Grounds’ for Refusal of a EUTM Application EUTM publication Once the EUTM application is approved on the absolute grounds, it will be published in the EUTM Bulletin for opposition for a period of 3 months. ‘Relative Grounds’ for refusal Opposition to the EUTM application shall rely on the relative grounds for refusal. Article 8 of European Union trade mark Rules (“EUTMR”) stipulates the relative grounds for refusal as follows:- 1. Upon opposition by the proprietor of earlier trade marks... MORE

30.03.2019 | Non-compliance to RHC in Trademark Appeal Cases may result in deadly consequence

Non-compliance to RHC in Trademark Appeal Cases may result in deadly consequence In a recent Trademark Invalidation appeal case decided by the High Court in early 2018, it was held that non-compliance to RHC may result in deadly consequence. The brief background of the case is that the Appellant, GEOK ENG COMPANY LIMITED, commenced the appeal to court via a Notice of Motion dated 17 August 2016 to appeal against the decisions of the Trademarks Registry of 20 July 2016.... MORE

28.02.2019 | Division of Trademark Applications

Division of Trademark Applications During the examination stage of trademark application, an application can be divided for certain reasons. There are generally two types of trademark application divisions. Division of Specification An applicant may choose to file a divisional application for the following reasons:- – If the goods/services of the original trademark application are in conflict with certain prior trademark registration(s) and have attracted a ground for rejection from the Trademarks Registry, the applicant may decide to divide the conflicting... MORE

31.01.2019 | Consent and Honest Concurrent Use

Consent and Honest Concurrent Use Relative grounds for refusal The registration of a trademark can be refused on a relative basis compared to earlier trademarks in considering to the following: – The trademark is similar to the previous trademark; – The classification on which the application for registration is filed is the same as or similar to the classification in which the earlier mark is protected; and – The use of trademarks related to this classification may cause public confusion.... MORE

Benny Kong & Tsai, Solicitors

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