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The article highlights the grounds which were mostly utilized in opposition proceedings in Hong Kong over the previous two years.
Authorized Grounds for Trademark Opposition
Commerce Marks Ordinance, Cap. 559 of the Legal guidelines of Hong Kong (“ordinance”), classifies the opposition below absolute grounds and/or relative grounds which can be supplied by way of sections 11 and 12 of the Ordinance. Among the mostly used grounds are:
1. Dishonest the general public
As per part 11(4)(b) of the Ordinance, if the mark of the applicant is such that it’s more likely to deceive the general public into believing that the services or products involved is said to the rival’s model, then such commerce mark is liable to to be rejected within the face.
2. Unhealthy religion
As per Part 11(5)(b) of the Ordinance, no applicant is permitted to register any commerce mark in dangerous religion. If a commerce mark is filed for registration in dangerous religion, it could be rejected outright.
3. Similarity of the marks and the products/companies and the well-known commerce mark
As per part 12(3) and/or 12(4), a widely known mark of a rival which is already in existence available in the market is to be protected and any an identical or related mark is to be barred from registration.
4. Passing of Regulation
As per Part 12(5)(a) of the Ordinance, an unregistered commerce mark is protected even below the frequent regulation motion of passing off. Due to this fact, when an unregistered commerce mark is infringed, it’s the regulation of passing off which applies to such infringement.
Other than the above there are different bases which are sometimes used. They would come with full floor objections comparable to whether or not the mark is descriptive, non-specific, opposite to accepted ideas of ethics. Nonetheless, as per the findings of the 2020 and 2021 opposition choices of the Commerce Marks Registry, it’s noticed that many of the opponents filed, have probably the most possibilities of success within the floor of dangerous religion. On the premise of this opposition follows the claims of similarity between the marks and/or the products or companies and the passing of the bottom.
So as to show dangerous religion, it turns into extraordinarily vital for the opponent to spotlight info which present the existence of dangerous religion of the applicant on the time of submitting the commerce mark utility. Among the options that the courts have regarded for in dangerous religion instances embrace:
- the opposing mark is an identical or similar to the opponent’s mark;
- the applicant and the opponent had a earlier relationship (for instance, the applicant is or was a distributor);
- the applicant had information of the rival’s mark or was conscious of the rival’s mark (eg the repute of the rival and/or the applicant and the rival are in the identical trade); And
- The Applicant is a commerce mark squatter.
In most oppositions, relative grounds (i.e. similarity of marks and items/companies) are probably the most relied upon within the opposition. If the opponent doesn’t have an earlier commerce mark registration in Hong Kong, it’s potential to depend on passing of floor, on the premise of dangerous religion and on the premise that the opponent’s mark is a widely known mark. For the passing of floor and the bottom that the opponent’s mark is a widely known one, the opponent bears a heavy burden of proof and is required to submit a considerable quantity of proof. For grounds of malice, the burden will not be as excessive as for passing off and well-known mark grounds however should be particularly pleaded. If there was a pre-existing relationship between the applicant and the other occasion or the marks are the identical, it could be straightforward to succeed on the bottom of malice.
dealing with dangerous religion protests
Whereas the Ordinance has given opponents the facility to boost opposition on the bottom of dangerous religion, it doesn’t point out that it ought to be raised in each case, even supposing it’s in battle with the alleged similarity between the sooner mark and Nothing a lot. query mark. This raises considerations regarding equity to the repute of the applicant. Nonetheless, in a current choice of the Commerce Marks Registry of INFINITUS INTELLECTUAL PROPERTY LTD Vs LKK HEALTHCARE PRODUCTS GROUP LTDIt’s clarified that in an effort to keep self-discipline and equity in all the technique of registration, the bottom of mala fide must be taken care of rigorously and never carelessly.
The idea of dangerous religion has not been outlined within the Ordinance, however when it comes to regulation, it has been interpreted to imply ‘dishonesty’ and in addition sure practices that are acceptable enterprise follow noticed by males of sound and expertise in a specific discipline. are under the requirements. Checked. The subjective component of the take a look at implies that the tribunal should discover out what the respondent knew concerning the transaction or different issues. It should then be determined whether or not within the gentle of that information the defendant’s conduct is to be judged by the odd requirements of trustworthy folks.
Listed below are the success charges for numerous opposition grounds in 2020 and 2021 upon evaluate of opposition choices by the Hong Kong Commerce Marks Registry:
The info reveals that the premise of dangerous religion had the very best proportion of success, adopted by the premise of marks and similarity of products/companies.
The above perception will not be surprising on the assorted grounds of opposition. Amongst all of the opposition grounds, one should word that for the enforceability of the identical, all of the checkboxes of the situations have to be supported by the opposing proof. There isn’t a doubt that the above grounds are mostly utilized in Hong Kong, however the genuineness of such allegations ought to be given essential consideration. Failure to adjust to this can outcome within the accused being thrown below the bus even earlier than it makes its strategy to the leisure of the tribunal. Due to this fact, for a profitable opposition, the opponent should make allegations that meet all the factors with strong proof.
The content material of this text is meant to offer a common information to the subject material. Specialist recommendation ought to be sought about your particular circumstances.
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