In mainland China, anyone can apply to cancel a trademark that has been registered for three years on the grounds that the trademark has not been used for three consecutive years. In Hong Kong, China, there are also revocation procedures based on non-use of a trademark. This article briefly introduces Hong Kong's trademark revocation procedure.
Procedure for revoking a trademark registration in Hong Kong due to non-use for three consecutive years:
Hong Kong adopts a multi-class application system, and revocation applications can target all or part of the classes covered by the registration, or all or part of the goods or services within a class. The calculation of the three-year non-use period starts from the "actual registration date" and must not be less than 3 years. However, this is not the only calculation standard. Hong Kong also stipulates the system of restoration of use without revocation: if, after the three-year period but before the revocation application is filed, the owner or authorized user of the registered trademark has begun to use or resumed the use of the trademark, the registration of the trademark shall not be revoked based on non-use for three consecutive years. However, if the owner of the registered trademark 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 in the future, registration of the trademark shall be revoked based on non-use for three consecutive years.
In general, the revocation procedure includes the following steps:
1. Conducting an investigation and collecting evidence by the applicant;
2. Submitting a revocation application and evidence by the applicant;
3. The trademark owner filing a counter-statement (if any);
4. Filing additional evidence after receiving the copy of the counter-statement (if any);
5. A hearing being scheduled by the Registrar;
6. An adjudication being issued by the Registrar;
7. The dissatisfied party can file an appeal.
Please note that if the trademark owner intends to defend against the revocation, they must submit a counter-statement, evidence of use, or reasons for non-use within 6 months after receiving a copy of the revocation application submitted by the applicant. Failure to submit a counter-statement, evidence of use, or reasons for non-use will be considered by the Registry as not opposing the applicant's revocation application. Additional evidence is not limited to simply responding to the trademark owner's evidence, but such evidence must be submitted to the Registry after receiving the aforementioned documents from the trademark owner. If the trademark owner fails to submit any documents, and if the Registry does not accept the supporting evidence submitted by the applicant during the revocation application stage, the Registry will urge the applicant to submit further evidence within 9 months of submitting the revocation application. If the applicant does not intend to submit further evidence, a statement indicating this intention must be submitted to the Registry within the deadline.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
