Invalidation of Trademark Registration in Bad Faith

Trademark squatting has been phenomenal in many countries and

regions and Hong Kong is no exception.

Fortunately, there are provisions in the Trademark Laws in Hong

Kong which stipulate the situations at which a declaration of

invalidity can be sought to cancel a trademark registration made in

bad faith.

In particular, section 11(5)(b) of the Trademarks Ordinance

“A trade mark shall not be registered if, or to the extent that –… the

application for registration of the trade mark is made in bad faith.”

However, the Ordinance has provided no definition as to the term

“bad faith”. Very often, this has created much difficulties for the

authentic trademark owner to prove the “bad faith” on the part of

the delinquent trademark squatters. As a matter of fact, the term

“bad faith” suggests a mental state that being extremely abstract

and subjective.

There are nevertheless useful circumstantial evidence that can

assist in proving the “bad faith” on the part of the delinquent

trademark squatters.

Foreign registrations

Evidences of prior foreign trademark registrations of the authentic

trademark owner can induce the inference that the defendant has

copied the foreign registered trademark of the authentic trademark

owner.

Prior use of authentic trademark owner

Evidences of prior use of trademark in Hong Kong of the authentic

trademark owner can substantiate their prior rights over their

trademarks in Hong Kong, and also assist in drawing the inference

that the defendant has copied in bad faith the trademark of the

authentic trademark owner.

Identical industries

Very often, the delinquent trademark squatters and the authentic

trademark owners are operating in the same industries. Evidences

of co-existence in the identical industries would induce the inference

that the defendant has been aware of the existence of the authentic

trademark owners and their trademarks, as well as the copying of

trademarks in bad faith.

Failure to provide explanation

Whereas the authentic trademark owner has explicitly accused bad

faith on the part of the Registered Owner in registering the subject

marks in Hong Kong. In face of such serious allegations of bad faith,

if the Registered Owner choose not to file any evidence or offer any

explanation as to how it devised the subject marks, or did not even

file a counter-statement and the invalidation application would be

treated as unopposed. Such indifferent attitude of the Registered

Owner would assist in drawing the inference that the defendant has

registered the trademark in bad faith.