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Cancellation of Trade Mark Registration

Cancellation of Trade Mark Registration

In Hong Kong, cancellation proceedings can be commenced either before the Registrar of Trade Marks or through the High Court. If proceedings are taken before the Registrar, the steps involved are similar to those relating to a trade mark opposition. Each side has the opportunity to submit evidence in support of their case, the matter then going to formal hearing before a senior Registrar of the Registry who will finally issue a written decision to both parties. Alternatively, if action is taken in the High Court, the person seeking to cancellation has to file a “Notice of Originating Motion” to which the registered proprietor may respond by filing a brief defence outlining the case in support of refusing the request to cancel the registered trade mark. Prior to the hearing to decide the case, evidence is exchanged between each party, upon which it is considered in detail by the High Court.

Proceedings before the Registrar are relatively inexpensive, but the major disadvantage is that the proceedings can take several years to complete in view of the time schedules laid down by the Trade Marks Rules and the availability of extensions of time for filing supporting evidence. Proceedings in the High Court do not suffer from this disadvantage and can usually be completed within a short time, i.e. 6-12 months, while the costs involved are considerably higher, and may be as much as four or five times of the costs of proceedings before the Registrar. For this reason, many applications to cancel trade mark registrations are filed with the Registrar, despite the considerable inconvenience for both parties to wait several years before a decision is finally issued.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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