In mainland China, if a trademark is rejected for not meeting the relevant provisions of the trademark law, the applicant can file a trademark review of refusal with theNational Intellectual Property Administration, PRC within 15 days of receiving the refusal notification. It is important to note that the submission deadline for trademark review of refusal cases in mainland China cannot be extended, meaning the applicant must submit the review application within the deadline, otherwise it will be considered as not submitted. However, unlike mainland China, in Hong Kong, China, the trademark applicant is explicitly allowed to apply for an extension in case their trademark application is rejected, giving them additional time to prepare review reasons or take other measures to resolve prior rights obstacles and other disputes.
If a trademark registration application in Hong Kong is officially rejected, the trademark applicant has 6 months to respond to the rejection. The examiner also clearly indicates the deadline for filing the review of refusal in the rejection notice. To seek additional time for negotiations with the prior trademark owner for coexistence, taking actions against the prior trademark, preparing evidence, etc., the applicant can choose to apply for an extension based on the following provisions.
Trademark Rules, Article 13:Failure to meet requirements for registration
(2)The applicant may, at any time during the period beginning on the date of the notice and ending 6 months after that date, do either or both of the following—
(a)file written representations to establish that the requirements for registration are met; or
(b)file a request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24).
(3)The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (2), extend the time for filing the written representations or request referred to in that subrule for one further period of 3 months.
(4)If—
(a)the applicant files written representations or a request for amendment under subrule (2) within the period specified in that subrule or, where the Registrar has granted an extension of time under subrule (3), within the period as so extended; and
(b)it appears to the Registrar, after considering the representations or request for amendment, that the application, or the application as amended or proposed to be amended, does not meet the requirements for registration,
the Registrar shall inform the applicant of his opinion by notice in writing.
(5)Where a notice is sent to the applicant under subrule (4), the applicant may, at any time during the period beginning on the date of the notice and ending 3 months after that date, do any or all of the following—
(a)file written representations or further written representations to establish that the requirements for registration are met;
(b)file a request or a further request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24); or
(c)file a request for a hearing.
(6)The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (5) or, where the Registrar has previously granted an extension of time under this subrule, within the period as so extended, extend the time for filing written representations or a request under subrule (5) for such period or periods, not exceeding 3 months at any one time, and on such terms, if any, as he may direct, if he is satisfied that—
(a)where the notice sent to the applicant under subrule (4) raises an objection to the registration of the trade mark on any of the grounds mentioned in section 12(1), (2) or (3) of the Ordinance (relative grounds for refusal of registration)—
(i)the applicant needs additional time to obtain the consent of the owner of a relevant earlier trade mark;
(ii)the applicant needs additional time to obtain an assignment of a relevant earlier trade mark; or
(iii)proceedings for the invalidation or revocation of a relevant earlier trade mark are pending and time should be extended to allow for the proceedings to be disposed of;
(b)the applicant needs additional time to prepare evidence of use to be filed in support of the application; or
(c)other exceptional circumstances exist to justify the granting of an extension of time.
The Registrar may, at the request of the applicant within the deadline specified in paragraph (5) or within the extended deadline (if the Registrar has previously granted an extension), using the prescribed form, extend the deadline for submitting the written statement or request stated in paragraph (5) according to the terms indicated by the Registrar (if any), for a period not exceeding 3 months.
1. Applying for an extension based on Rule 13(3) of the Hong Kong Trademark Rules
According to the provisions of Rule 13(3) of the Hong Kong Trademark Rules, within the initial deadline for responding to the rejection, the trademark applicant can apply for a one-time extension of the review of refusal for 3 months. The applicant can apply for an extension based on this rule without any reasons, and it is generally approved by the authorities immediately. However, based on this rule, the applicant cannot apply for another 3-month extension, meaning the applicant can only apply for an extension once under this rule.
2. Applying for an extension based on Rule 13(6) of the Hong Kong Trademark Rules
After applying for an extension based on Rule 13(3) of the Hong Kong Trademark Rules, the applicant is generally not allowed to apply for another extension. However, considering certain special reasons, the applicant can apply for a second extension after the initial extension, with the need to state the reasons for the extension (reasons listed below). The Intellectual Property Department of Hong Kong will issue an extension approval notice based on the reasons provided and inform the new deadline for filing the review of refusal. It is important to note that if the applicant's trademark is rejected due to absolute grounds, they only have one opportunity to apply for an extension based on Rule 13(3) of the Hong Kong Trademark Rules, and cannot apply for another extension.
Reasons for which an extension can be applied include:
(1) The applicant needs to extend the deadline to prepare reasons and gather evidence;
(2) The applicant needs to extend the deadline to reach a coexistence agreement with the prior trademark owner;
(3) The applicant needs to extend the deadline to complete the transfer process with the prior trademark;
(4) The prior trademark is undergoing invalidation or revocation proceedings that have not been concluded;
(5) Other special circumstances.
The applicant can apply for multiple extensions based on Rule 13(6) of the Trademark Rules, but each extension period cannot exceed 3 months.
Based on the reasons mentioned above, it is evident that the trademark review process in Hong Kong aligns with that of mainland China, overcoming prior rights obstacles can result in the registration of the trademark. Additionally, the Intellectual Property Department of Hong Kong fully accepts the coexistence of trademarks. If the trademark applicant and the prior trademark owner reach an agreement to coexist and jointly register their trademarks in the market, the Intellectual Property Department of Hong Kong will approve the registration based on the fact that both parties have agreed to coexist.
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.