Consent and Honest Concurrent Use

01.31.2019

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.

Consent and honest concurrent use can be used to overcome an objection by the Trademarks Registry in Hong Kong on the relative grounds.

Letter of Consent
Factors to be considered when examining application for registration with a letter of consent of the earlier trademark owner include the following:-
1. Whether the earlier trademark owner has given consent to the registration of the subsequent trademark application for the goods or services stated in the specification of application.
2. Whether the consent is given in writing and signed by the earlier trademark owner.
3. Whether the reference to the application number of the subsequent applied for trademark in Hong Kong is provided in the letter of consent.
4. Whether the consent is given unconditionally.

Honest-Concurrent Use
A two-stage analysis is adopted in Hong Kong in determining whether trademark registration should be allowed on the grounds of honest concurrent use.

Firstly, whether there has been an honest concurrent use of the applied-for trademark in parallel with the earlier mark.

Secondly, if the answer to (the above) is in the positive, whether after considering all relevant circumstances, including public interest, the discretion of the Registrar should be exercised to accept the application for registration of the trademark, despite the fact that the use of the subsequent mark in Hong Kong in relation to the goods or services in question is likely to cause confusion on the part of the public.