The use of trademarks in Hong-Kong and China. Ed Chatterton, Foreign Legal Consultant (England & Wales) DLA Piper Hong Kong

Transcription

1 The use of trademarks in Hong-Kong and China Ed Chatterton, Foreign Legal Consultant (England & Wales) DLA Piper Hong Kong

2 The use of trademarks in Hong-Kong and China Introduction I- Principles II- Exceptions III- Cancellation IV- The case of non-commercial advertisements Insert filename here Date of presentation 2

3 Introduction Insert filename here 3 Date of presentation

4 Introduction Whilst Hong Kong is part of China, for historical reasons it has a very different system of trade mark laws compared to China. The reason for this is that Hong Kong's legal system was developed during colonial times and, as a result, is a common law system which is heavily influenced by the English common law system. So many of the hallmarks of the common law system which can be seen in England and the US, such a judicial precedent, also apply in Hong Kong. In contrast, China is a civil law jurisdiction which is heavily influenced by German principles. The result of these different systems is that, whilst there are many common features between the two systems relating to trade marks, there are also some important differences. Insert filename here Date of presentation 4

5 Principles Insert filename here 5 Date of presentation

6 I- Principles (1/3) In HK, a registration may be revoked if the trade mark has not been genuinely used in Hong Kong by or with the owner's consent, in relation to the goods or services for which it is registered, for a continuous period of 3 years. Insert filename here Date of presentation 6

7 I- Principles (2/3) (1) a mark is invulnerable to attack for a period of at least 3 years after registration. There is no requirement in Hong Kong to show intent to use mark during the registration process nor is 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 on behalf of the owner e.g. a licensee; (3) the use must be in relation to the goods or services for which a mark is registered; (4) the use must be in Hong Kong. Thus, a mark can be partially revoked where it has not been used in relation to all of the goods and services for which it is registered. Insert filename here Date of presentation 7

8 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 argued over whether or not use of mark is genuine use which can defeat a non-use attack. Merely token use, serving solely to preserve the rights conferred by the marks, would not constitute use. Insert filename here Date of presentation 8

9 Exceptions Insert filename here 9 Date of presentation

10 II- Exceptions There are two main exceptions in HK: (1) a mark cannot be revoked if there are valid reasons for non-use, such as, if there were import restrictions on the goods/services protected by the trademark or governmental requirements for the goods/services protected by the trademark (2) there is no requirement to use a mark where the mark has been registered as a defensive trade mark. This rule is for the protection of a registered trade mark that is no exceptionally well-known in Hong Kong that its use in relation to goods or services other than those for which it is registered would be likely to detract from its distinctive character in relation to goods or services for which it has been registered and used. The standard is very high and will apply only to a small number of wellknown marks. Insert filename here Date of presentation 10

11 Cancellation Insert filename here 11 Date of presentation

12 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 your intention. This buys some time for discussions as any resumption of use within a 3 month period from the date of notice will not count towards use of the mark. Intention is to encourage the partiesto settle disputeswithout 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 that the 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. Insert filename here Date of presentation 12

13 The case of noncommercial advertisements Insert filename here 13 Date of presentation

14 IV- The case of non-commercial advertisements Previously, the use requirement could be satisfied by placing a simple advertisement setting out the registration details of a registered trade mark in a national newspaper approved by the TMO. Apparent change of policy at the TMO: non-commercial advertisements do not any longer appear to be sufficient to defend a non-use cancellation attack. Insert filename here Date of presentation 14