Registry updates Work Manual on Absolute Grounds for Refusal

On March 20 2015 the Hong Kong Trademarks Registry updated the Work Manual on Absolute Grounds in relation to objections based on bad faith (Section 11(5)(b) of the Trademarks Ordinance, Cap 559).

During the examination stage, where it was appropriate for examiners "to raise a question on their own initiative if the application has information or omissions that raise questions about the applicant’s honest intention", it is now appropriate for "the Registry to raise an objection if the circumstances of the application give raise to a reasonable suspicion of the applicant’s entitlement to the mark or the honesty of his intention". For example, where previously an examiner could "ask the applicant to provide material" to show that it was entitled to apply for registration (eg, a written endorsement from the owner of the relevant trademark), he or she can now "raise an objection on the ground that the application is made in bad faith and the applicant may overcome the objection by providing material" showing entitlement to apply for registration in the following cases:

• if an applied-for mark is generally known to be the trademark of a particular company;
• if the applicant simultaneously files a number of applications for different marks, one of which is generally known to be the trademark of a particular company, and the applicant has not submitted information proving a relationship between the applicant and the owner of the mark; or
• the mark incorporates the name or image of a well-known person without that person's agreement.

Where the circumstances of the application give rise to a reasonable suspicion of the applicant’s entitlement to the mark or the honesty of its intention, examiners have a duty to raise an objection based on bad faith. Examiners are no longer left simply to raise a question on their own initiative if the application contains information or makes omissions as to the applicant’s honest intention.