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The Advantages of Filing Hong Kong Trademark Opposition in the First Place

The Advantages of Filing Hong Kong Trademark Opposition in the First Place:

Trademark Protection System
The system for protecting trademark rights in Hong Kong is based on use of marks and registration of marks. While an entity is not required to register its trademark in order to protect it, it is always recommended to do so, so as to save the time and effort in enforcing and protecting the trademark rights.

Trademark Opposition System
On the other hand, it is generally understood that it is better to prevent acquisition of rights rather than to bestow rights only later to extinguish them, Hong Kong law requires the Hong Kong Intellectual Property Department (HKIPD) to provide an opportunity for the affected party to raise opposition to the registration of a trade mark. The mechanism is known as the opposition proceeding. If you have observed the publication of a trademark application that is copy of / closely similar to your own trademark, opposition proceeding is a useful weapon for preventing the acquisition of the trademark rights.

There are a number of advantages in filing an opposition against a trademark application in the first place. They are mainly:-

 Lower cost. The costs to be involved in prosecuting an opposition via the HKIPD proceedings are much lower than those to be involved in cancelling / revoking a trademark registration via the court proceedings.

 Systematic and predictable procedures.
1. A Notice of Opposition with the Opposition Grounds of opposition;
2. After the opposition is admitted, the Applicant will file Counter-Statement within time allowed. Otherwise, the application is deemed to be abandoned by the Applicant.
3. If the Applicant has filed Counter-Statement, the proceedings would enter Evidence session;
4. After the Evidence session is completed, the Opposition proceedings will be set down for a formal hearing.

 Quicker pace. If the Applicant fails to file Counter-Statement within time allowed, application is deemed to be abandoned by the Applicant.

 High pressure on the applicant to make him more tend to give in. Due to the considerable time and costs to be involved in defending the opposition, many trademark applicants would choose to abandon their trademark applications or agree to a settlement arrangement with the authentic trademark owner.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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