Trademark Opposition

Opposing a Trademark Application

The short answer: if another party's application would erode your earlier rights, you must oppose within the publication period (generally 3 months in Hong Kong). If your own application is opposed, you must file a counter-statement within 3 months of the notice, or the application is treated as abandoned. BKIP acts for both opponents and applicants: we assess the case for free first, then advise whether to oppose, defend or settle, based on how strong the grounds really are.

At a glance

Hong Kong opposition period: within 3 months of publication in the Trade Marks Journal
Hong Kong counter-statement: within 3 months of receiving the notice
Evidence: the opponent files first, the applicant answers, generally 6 months each (varies by jurisdiction)
If you miss the deadline: an opposition cannot be filed late; a late counter-statement usually means the application is abandoned
Key markets: Hong Kong, China, Taiwan, United States, European Union

When is an opposition worth filing?

Not every similar mark is worth the cost of an opposition. Four situations genuinely justify one:

Identical or similar marks on identical or similar goods/services: confusion is likely, which makes this the most direct and strongest ground.
Bad-faith filing: the applicant knew you used the brand first (for example as your agent, customer or partner) and filed ahead of you.
Copying of your well-known mark, company name or product get-up: even without a local registration, reputation and prior use can support an opposition.
The application blocks your own registration or expansion: once the class is taken, your later application is cited against you, and the long-term cost is higher.

Conversely, if the markets do not overlap, the goods are far apart, or the marks differ clearly in appearance, sound and overall impression, an opposition can cost more than it returns. We say so at the assessment stage instead of urging every client to fight.

Opposition periods in key markets

Jurisdiction	Period	Runs from	Practical note
Hong Kong	3 months	Publication in the Trade Marks Journal	No late filing; monitoring is the only safeguard
China	3 months	Preliminary approval publication	Plan opposition and any later invalidation together
Taiwan	3 months	Registration publication	Grounds and evidence must be complete within the period
United States	30 days	Official Gazette publication	A 30-day extension is available, sometimes longer
European Union	3 months	EUTM application publication	The opposition can be filed before grounds and evidence

Missing the period is not necessarily the end. Depending on the facts you may still seek revocation, invalidation, rely on prior use or copyright, or negotiate a licence. Each route has different conditions and costs, so an assessment is worth doing first.

The procedure: from notice to decision

Monitoring and assessment (immediate): search earlier marks, check the goods and services, assess the likelihood of confusion and the strength of the case.
Notice of opposition and grounds (within the period): file with the Registry before the deadline, setting out the grounds and the direction of the evidence; generally 3 months in Hong Kong.
Counter-statement: the applicant must respond within the set time (generally 3 months in Hong Kong); missing it usually means the application is abandoned.
Evidence: the opponent files first, the applicant answers, generally 6 months each (varies by jurisdiction and can be extended).
Hearing and decision: the Registry lists a hearing, or the case ends earlier through a coexistence agreement, a restriction of the specification or withdrawal.

From filing to decision usually takes years, depending on the volume of evidence, whether the parties settle, and listing dates. That is why preparing evidence early matters far more than gathering documents near the deadline.

If your application is opposed

Read the grounds first: similarity, overlapping classes, or a procedural or absolute ground each call for a different defence.
Four options: defend fully, amend or restrict the specification, reach a coexistence agreement, or withdraw and refile.
Gather use evidence: invoices, sales records, advertising and social posts, trade fair material, customer lists — the earlier you start, the more complete it is.
Protect the 3-month deadline: a late counter-statement is normally treated as abandonment, and the filing fees are lost.

Full guide to responding to an opposition ｜ Publication and the opposition period

How fees and timing work

An opposition is contentious work, not a fixed-fee form: the cost depends on the number of grounds, the volume of evidence, how hard the other side fights, and whether the case reaches a hearing. We assess the case for free, estimate the prospects and workload, then set out the fees in writing by stage (notice of opposition, evidence, hearing). No undisclosed items are added later. If settling serves your commercial interest better, we say so.

How BKIP helps

One team for filing and disputes: handled by our trademark solicitors and agents, so the facts and timeline in the registration and the opposition stay consistent.
Agent network in 36 countries and regions: Hong Kong, China, Taiwan, the United States and the EU are handled in step with local agents, so you do not have to instruct lawyers market by market.
Publication monitoring: we watch the official journal for your registered marks and alert you within the opposition period, so the 3-month deadline is not missed.
Teaching experience: our solicitors are regularly invited by the HKTDC, the Hong Kong Productivity Council and trade bodies to teach IP courses, and explain risk on your file with the same practical standard.

Book a free assessment Call 3157 0065

Frequently asked questions

Q1: How long do I have to respond to an opposition?
It depends on the jurisdiction; in Hong Kong the counter-statement is generally due within 3 months of the notice. Missing it means the application is treated as abandoned, and costs may follow.

Q2: Can I handle the opposition myself?
Yes, but the procedure involves legal argument and strict evidence rules, and a defective filing directly affects the outcome. We assess the other side's grounds first, then advise whether to defend or settle.

Q3: If the opposition succeeds, does the other application disappear immediately?
The application is refused, but the other side may still have remedies. The Registry's decision governs the result.

Q4: What does an opposition cost? Can we stop once the other side concedes?
Fees are staged, and many cases settle before the evidence stage through a coexistence agreement or a restriction of goods. The assessment gives you estimates for both routes: fighting to a hearing, and settling early.

Q5: My mark is not registered yet. Can I still oppose?
Yes. An opponent need not hold a registration, but must assert earlier rights such as prior use, a well-known mark, a company name or copyright. Whether that succeeds depends on evidence, which is exactly what the assessment covers.

Q6: Will you also monitor my competitors?
Yes. Monitoring runs against the marks, classes and markets you specify; we alert you to similar applications and advise whether to oppose within the period.