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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))

  2. 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.

    3. Cooling-off period (Rule 17)

  3. 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.

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

  4. 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)

  2. 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.

    3. DECISION OF REGISTRAR (PART XI)

    Notice of decision (rule 84)

  3. 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".

      2. 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)

  2. 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.)

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

  3. 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