The use of trademarks in Hong-Kong and China

Ed Chatterton, Foreign Legal Consultant (England & Wales)DLA Piper Hong Kong

The use of trademarks in Hong-Kong

and China

Introduction

I- Principles

II- Exceptions

III- Cancellation

IV- The case of non-commercial advertisements

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Introduction

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Introduction

Whilst Hong Kong is part of China, for historical reasons it hasa very different system of trade mark laws compared to China.The reason for this is that Hong Kong's legal system wasdeveloped during colonial times and, as a result, is a commonlaw system which is heavily influenced by the English commonlaw system. So many of the hallmarks of the common lawsystem which can be seen in England and the US, such ajudicial precedent, also apply in Hong Kong.

In contrast, China is a civil law jurisdiction which is heavilyinfluenced by German principles. The result of these differentsystems is that, whilst there are many common featuresbetween the two systems relating to trade marks, there arealso some important differences.

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Principles

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I- Principles (1/3)

In HK, a registration may be revoked if the trade mark has notbeen genuinely used in Hong Kong by or with the owner'sconsent, in relation to the goods or services for which it isregistered, for a continuous period of 3 years.

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I- Principles (2/3)

(1) a mark is invulnerable to attack for a period of at least 3years after registration. There is no requirement in Hong Kongto show intent to use mark during the registration process noris there any requirement to show use before a mark is granted;

(2) the use does not have to be by the owner, it can be onbehalf of the owner e.g. a licensee;

(3) the use must be in relation to the goods or services forwhich a mark is registered;

(4) the use must be in Hong Kong. Thus, a mark can bepartially revoked where it has not been used in relation to all ofthe goods and services for which it is registered.

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I- Principles (3/3)

In order to defeat an invalidity attack, the use must be"genuine" use in Hong Kong. A lot of cases have been arguedover whether or not use of mark is genuine use which candefeat a non-use attack. Merely token use, serving solely topreserve the rights conferred by the marks, would notconstitute use.

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Exceptions

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II- Exceptions

There are two main exceptions in HK:

(1) a mark cannot be revoked if there are valid reasons for non-use, suchas, if there were import restrictions on the goods/services protected by thetrademark or governmental requirements for the goods/services protectedby the trademark

(2) there is no requirement to use a mark where the mark has beenregistered as a defensive trade mark.

This rule is for the protection of a registered trade mark that is no exceptionallywell-known in Hong Kong that its use in relation to goods or services other thanthose for which it is registered would be likely to detract from its distinctivecharacter in relation to goods or services for which it has been registered andused. The standard is very high and will apply only to a small number of well-

known marks.

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Cancellation

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III- Cancellation

In HK: Cancellation actions can be made to the Trade Mark Office (TMO) or to the court.

Before making a cancellation action, advisable to place the trade mark owner on notice of yourintention. This buys some time for discussions as any resumption of use within a 3 monthperiod from the date of notice will not count towards use of the mark. Intention is to encouragethe parties to settle disputes without bringing revocation proceedings

In China: A registration may be revoked where the trade mark owner has ceased to use the registered

trademark for a 3 consecutive years.

The cancellation proceedings may be initiated by the TMO or by third parties.

There is no requirement in China to demonstrate intent to use the mark or to demonstrate thatthe mark has in fact been used in order for the mark to be registered.

Cancellation actions are made to the TMO, not the court.

Requirement to show an "explanation of the relevant situation", meaning that an Investigation

must be conducted before a non-use cancellation attack is launched.

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The case of non-commercial

advertisements

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IV- The case of non-commercial

advertisements

Previously, the use requirement could be satisfied by placing asimple advertisement setting out the registration details of aregistered trade mark in a national newspaper approved by theTMO.

Apparent change of policy at the TMO: non-commercialadvertisements do not any longer appear to be sufficient todefend a non-use cancellation attack.

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