Introduction
Whilst trade mark infringement and passing-off are common areas of dispute in the courts in Hong Kong these days, contentious matters arising from or in connection with trade mark registration, such as opposition to registration, request for a declaration of invalidity in respect of a registered trade mark which did not qualify for registration and should have been refused in the first place, or request for revocation of a registered trade mark, etc., appear to be increasingly popular.
In view of the above, this newsletter highlights the common major procedural issues in relation to conducting a hearing at the Trade Marks Registry (the “TMR”) which should not be overlooked.
Lodging an application
Taking registration of a trade mark as an example, once the TMR receives an application for registration and after the necessary examination process is completed, the subject trade mark will be published on the Hong Kong Intellectual Property Journal, which is an official journal about intellectual property updates publicly available on the website of the Intellectual Property Department. The general public is therefore able to freely access and consider the subject trade mark on the internet anytime.
Any party who intends to oppose an application for registration of trade mark may consider filing an opposition notice within 3 months after the date of its publication. Upon receiving an opposition, the applicant may choose to either withdraw the application or respond to the opposition by filing a counter-statement. The parties are further allowed to lodge with the Registrar their respective evidence in support, which should be in the form of a statutory declaration or an affidavit. Thereafter, the hearing officer of the TMR will fix the date, time and place for a hearing and give notice of the same to the parties.
Appearance at the hearing
A hearing held by the TMR is open to the public. Procedurally, any party who intends to appear at the hearing is required to file a notice of his intention to appear within 14 days after the date of the notice having been sent. If the applicant intends to appear at the hearing and make oral submissions to dispute the opposition, he must file notice of his intention to appear. In the event that the applicant is not available to attend the hearing originally fixed by the Registrar, he must set out in the notice his proposed date, time and place for holding the adjourned hearing. Nevertheless, the Registrar would only appoint a new date for the hearing if he considers the adjournment request to be reasonable.
To facilitate the conduct of the hearing, upon receipt of the parties’ notices of intention to appear, the Registrar may order the parties to participate in a “pre-hearing review” whereby the Registrar would give directions. In this regard, it is important to note that whilst evidence in support of the parties’ respective case should be lodged by way of statutory declaration and/or affidavit, any party who would like to adduce oral evidence in addition to or to cross-examine any person who has filed his statutory declaration should notify the Registrar and the other side as soon as possible after the hearing date is notified. It however remains at the Registrar’s discretion whether oral evidence and/or cross-examination would be allowed at the hearing.
Before the hearing, each party would have to file with the TMR and serve to the other side written skeleton submissions and a bundle of authorities at least three clear days before the hearing. There is no restriction on the right of audience for main and/or interlocutory hearings before the hearing officer acting on behalf of the Registrar. In another word, each party may make submissions on their own or send their legal representatives to attend the hearings.
In respect of the conduct at the hearing, whilst the ultimate burden of proving that a particular trade mark should be accepted for registration lies with the applicant, the burden of proof in opposing a trade mark to be registered would in turn lie on the opponent. As such, it is for the opposing party to demonstrate why the trade mark should not be registered. In terms of the sequences of making legal submissions, it would therefore start with the opponent, followed by the applicant who would be allowed to address the matters raised by the opponent. Nevertheless, similar to civil actions in court, the opposing party would have the last word by way of reply. At the end of the hearing, the hearing officer usually reserves his/her decision and parties should expect to wait for a few months to receive a written decision from the TMR.
It is also possible to have an opposition decide without an oral hearing, for example neither party files any notice of intention to appear at a hearing. In these circumstances, the hearing officer will decide the matter based on the evidence that is on file, including any written submissions, and will issue a written decision to both parties.
For members of public who are interested to attend any of the hearing listed in the schedule of main hearings / interlocutory hearings by the TMR, it is worth noted that they are required to call the registry hotline (852) 2961 6901 to register the number of proposed attendees at least five days before the date of the hearing.
Decision and appeal
After the Registrar has made his decision, a notice would be sent to each party informing them of the same. An award of costs will generally be made in favour of the successful party. Interestingly, whilst a statement of the reasons for the decision is not an item that must be incorporated in the decision, it now becomes a practice for hearing officer handing down written decisions setting out their reasons in opposition cases before the Registrar. If reasons for the decision are not given to the parties, each party requiring the same may need to make a request to the Registrar.
In the event that a party intends to appeal against the Registrar’s decision to the Court of First Instance of the High Court, a notice of appeal should be filed within 28 days from the date of the decision.
Remarks
Whilst the procedural rules concerning a hearing held by the TMR are not less complicated compared to a civil action at the High Court, it is worth mentioning that raising opposition to trade mark registration is obviously much more cost efficient than making an application to obtain relief against the same at the court should the latter matures to registration. Nevertheless, it is crucial to comply with the relevant prescribed time period for making the relevant submissions and filing the notice with the Registrar, as failing to do so may render a challenge made at the TMR being out of time. As such, persons who intend to or are required to participate in a hearing held by the TMR concerning contentious matters arising from trade mark registration should bear in mind that legal advice should be sought to ensure both the procedural rules and the substantive legal issues are properly handled without delay.
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This article was originally published on ONC Lawyers.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.