Trade Marks Rules (3rd Draft)


 

TRADE MARKS RULES (3RD DRAFT)



Oppositions (Part III)

The Bar remains firmly of the view that the approach
to oppositions in Part III of the third draft is wrong in principle
and will lead to injustice. The Bar believes that the object and effect
of opposition proceedings should be to provide a speedy but fair means
of reaching a decision. In our view this would be best achieved by
prescribing short periods for compliance with the rules, subject to
there being a discretion to extend periods in exceptional circumstances.
The present proposals in Part III mean that even a basic compliance
with the time limits (i.e. using the full periods allowed but having
no extensions) will result in a 2-year period between the filing of
the notice of opposition and the completion of the evidence. When
one takes into account the additional time taken between initial application
and advertisement and between conclusion of the evidence and a decision,
the position in our view is quite unacceptable. The Bar have the following
comments : -



Filing of Notice of Opposition (Rule 15(1))

  1. The Bar believes it to be wrong and contrary to justice not to
    allow an extension of time for filing a notice of opposition in
    any circumstances (this is excluded from the discretion to extend
    time by rule 87(2)(c)). There may sometimes be compelling reasons
    for allowing an extension (for example death or illness of a client
    or adviser). In our view, there should be a 2 month period for filing
    oppositions with a discretion to extend it in exceptional circumstances.


  2. Filing of Counter-statement (Rule 16(1))

  3. The counter-statement is in effect the applicant’s defence and
    we see no justice in denying an extension of time under any circumstances
    (rule 87 (2)(d) denies any discretion). As with the notice of opposition
    we believe that the filing time for the counter-statement should
    be 2 months with a discretion to extend the period in exceptional
    circumstances.


  4. Cooling-off period (Rule 17)

  5. The Bar does not believe that this provision will serve a useful
    purpose. Opposition proceedings, like any other proceedings, can
    be settled at any time. The Bar sees no reason why the filing of
    a basic pleading should be held up.


  6. Filing of evidence (Rules 18, 19 and 20)

  7. The Bar regards a period of 18 months for filing evidence (without
    taking into account any extensions which might be granted) as unnecessary,
    unwarranted and contrary to the speedy administration of justice.
    The Bar believes that a 3-month period for filing evidence in support
    of an opposition (rule 18) and in support of an application (rule
    19) would be more than generous. The Bar believes that a 2-month
    period for filing evidence in reply (rule 20) would be appropriate.
    Even on this timetable the filing of evidence would still take 8
    months (again without taking extensions into account), which is
    a long time compared to other proceedings.



PROCEEDINGS TO REVOKE ETC. (PART VI)

  1. The Bar have the same comments on Part VI as we have in relation
    to oppositions under Part III. The Bar believes therefore that the
    period for filing the counter-statement (rule 38) should be 2 months,
    but with a discretion to extend the period in exceptional circumstances
    (rule 87(2)(b) forbids any extension). The Bar considers that the
    period for filing evidence in support of the application (rule 39(1))
    should be 3 months and that the period for filing evidence in reply
    (rule 41(1)) 2 months. (For reasons unknown to us, the period in
    rule 40 for filing evidence in support is already 3 months, with
    which we agree.)


  2. ALTERATION ETC. (PART VII)

  3. For the same reasons as with respect to notices of opposition,
    the Bar believes that the time for filing notice of objection under
    rule 51(4) should be 2 months, but that there should be a discretion
    to extend the period in exceptional circumstances (rule 87(2)(i)
    forbids an extension). The Bar have the same comments with regard
    to rule 51(6) (wrongly printed as 51(3)) as stated earlier with
    respect to the time periods in Part III.


  4. DECISION OF REGISTRAR (PART XI)

    Notice of decision (rule 84)

  5. The Bar believes that rule 84(3) should provide specifically for
    requests for statements of reasons and for the statements of reasons
    themselves to be notified to each of the parties to the proceedings.
    The Bar therefore suggests that rule 84(3) should be amended as
    follows :-

      1. Before "request the Registrar" in the third line,
        add the following words :
      2. "upon written notice to each of the other
        parties to the proceedings".

      3. Delete "that party" in the fifth line and add the
        following words in substitution :






"each party to the proceedings".









AMENDMENT OF REGULATIONS ETC. (PART XIII)

  1. The Bar believes that the period of notice of opposition in rule
    93(3) should be subject to a discretion to extend in exceptional
    circumstances (rule 87(2)(l) forbids an extension). The Bar makes
    the same comments as to the periods in rule 93(6) as we have already
    made with regard to the opposition periods in Part III.


  2. PENDING APPLICATIONS FOR REGISTRATION (PART XVIII)

  3. In accord with our earlier comments on filing of notices of opposition,
    the Bar believes that the period in section 113 should be 2 months
    with a discretion to extend. (This of course is the same as under
    the existing law.)


  4. EXTENSION AND ALTERATION OF TIME LIMITS (PART XII)

  5. In section 87(4), the words "(other than subsection (2))"
    should be added after the reference to section 69. (Section 87(2)
    would of course also have to be changed to remove those provisions
    in respect of which we consider that there should be a discretion
    to extend.)

 

Dated 9th July 2001

Hong Kong Bar Association