Trademark protection is essential for businesses to safeguard their brand identity. However, maintaining a trademark registration requires active use of the trademark. In Hong Kong, China, there are established procedures for revoking a trademark registration if it has not been used for three consecutive years. This article provides an overview of the steps involved in revoking a trademark registration in Hong Kong due to non-use.
Grounds for Revocation
In both mainland China and Hong Kong, trademarks can be revoked on the grounds of non-use. In mainland China, anyone can apply to cancel a trademark that has not been used for three consecutive years. Similarly, in Hong Kong, there are specific revocation procedures targeting non-use for three consecutive years.
Calculation of Non-Use Period
The three-year non-use period in Hong Kong is calculated from the “actual registration date” of the trademark. It is important to note that this period must be at least three years. However, if the trademark owner or an authorized user resumes use of the trademark after the three-year period but before a revocation application is filed, the trademark registration will not be revoked. Additionally, if the owner begins preparations to use or resumes use within three months after the “three consecutive years of non-use” period, upon becoming aware that a revocation application may be filed, the registration can still be revoked based on non-use.
Revocation Procedure
The procedure for revoking a trademark registration in Hong Kong due to non-use involves several steps:
- Conducting an Investigation and Collecting Evidence
- The applicant must first investigate and gather evidence demonstrating that the trademark has not been used for three consecutive years.
- Submitting a Revocation Application and Evidence
- The applicant files a revocation application with the Registry, accompanied by the collected evidence of non-use.
- Trademark Owner Filing a Counter-Statement (if any)
- Upon receiving the revocation application, the trademark owner has six months to submit a counter-statement, evidence of use, or reasons for non-use.
- Filing Additional Evidence
- After receiving the counter-statement, the applicant may file additional evidence to support their case. This additional evidence should respond to the trademark owner’s submissions.
- Hearing Scheduled by the Registrar
- The Registrar schedules a hearing to review the evidence and arguments presented by both parties.
- Adjudication by the Registrar
- The Registrar issues a decision based on the hearing and the submitted evidence.
- Appeal Process
- If either party is dissatisfied with the Registrar’s decision, they can file an appeal.
Defense Against Revocation
Trademark owners intending to defend against a revocation application must submit a counter-statement, evidence of use, or reasons for non-use within the stipulated six-month period. Failure to do so will result in the Registry considering the revocation application uncontested, potentially leading to the revocation of the trademark.
Additional Evidence
If the trademark owner submits documents, the applicant may need to file additional evidence to counter the trademark owner’s claims. If the trademark owner fails to submit any documents and the Registry does not accept the applicant’s initial evidence, the Registry will prompt the applicant to submit further evidence within nine months of the revocation application. If the applicant decides not to submit additional evidence, they must inform the Registry of this decision within the specified timeframe.
Revoking a trademark registration in Hong Kong due to non-use involves a detailed and structured procedure, ensuring that both the applicant and the trademark owner have the opportunity to present their case. Understanding this process is crucial for businesses seeking to maintain or challenge trademark registrations based on usage. Proper adherence to the procedural requirements can effectively protect or revoke trademark rights, depending on the circumstances.
