Hong Kong Team Achievement: 100% Success Rate in HK Contentious Cases Last Year



We are so happy about our team's amazing accomplishment that we can barely contain our joy and cannot wait to share such great news – we achieved 100% success rate in contentious cases (Opposition and Cancellation cases) we represented last year!

Taking this opportunity, we would like to briefly introduce the opposition proceedings in Hong Kong. Let’s unveil the mystery and see how to best enforce your trademark rights in such important opposition stage in Hong Kong.

Firstly, an opposition to a trademark application can be filed within 3 months as of the date of publication of the trademark. “Any” person may issue a notice of opposition to the registrar regarding the registration of the trademark. Oppositions can be based on absolute and relative grounds.

Secondly, after the opposition being filed, the opposed party is entitled to file a counter-statement within 3 months after receipt of the copy of notice of opposition. It’s special practice in Hong Kong that in the event that the opposed party does not file a counter-statement within the prescribed period, its application will be automatically withdrawn. Due to the relatively expensive legal costs in opposition proceedings in Hong Kong, an individual or a micro business seldom responds to a notice of opposition. Therefore, in some situations, even if the success chances may not be highly promising, the opposition may still be worth a try depending on the importance of the mark and the background of the opposed party.

If the opposed party does file a counter-statement, the opposition will then move into the complicated evidential exchange and hearing stages. There is also a similar special practice in the evidential exchange stage that it’s the opponent that should file the evidence in the form of Statutory Declaration or Affidavit in the first round of evidential exchange. If the opponent does not file the evidence in the first round, it will be deemed as abandoning its opposition. 

All in all, due to the complexities and lots of special practices involved in the HK opposition proceedings, attorneys with rich experience could do a lot in heling their clients enhancing the success chances of opposition in Hong Kong – the process is like a strategic game. 

Chang Tsi's Hong Kong Team boasts rich experience in contentious trademark matters in Hong Kong. Should any assistance be required in this jurisdiction, please always feel free to contact Lihan, the leader of HK team, and our HongKongTeam at HKteam@changtsi.com. The Team will be your valuable legal partner and provide you with best legal service as always!

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