When Can You File a Trademark Cancellation on the Grounds of Non-Use?

Legal Basis & Timeline: A trademark cancellation on the grounds of non-use can be filed if a registered trademark has not been put to genuine use in Hong Kong for a continuous three-year period without valid justification.

Investigation Practice: To support such an action, it is standard practice to engage ACCOLADE Search Team to conduct a probe into the genuine use of the mark in Hong Kong.

How Long Is the Processing Time?

Standard Timeline: On average, a non-use cancellation action is expected to take 1.5 years or longer to complete.

Streamlined Procedures: Under streamlined procedures where a formal hearing is waived by both parties, the processing timeline may be shorter than 1.5 years.

Fee Structure & Associated Costs

1. Non-use Investigation in HK (by ACCOLADE, notarization fee included):
   • First Class: HK$4,500
   • Per Additional Class: HK$1,500

2. Filing a Notice of Cancellation on the Grounds of Non-use:
   • Government & Official Filing Fee: HK$7,800

3. Extension of Time (Pending outcome):

Office Action Extensions: Pending the outcome of the non-use proceeding, it may be necessary to seek extension(s) for filing responses to office actions issued for an associated new trademark application (Filing extension per round: HK$500).

Procedure for Non-Use Cancellation

Stage 1: Filing Application: The Applicant files a non-use application by submitting the required Form accompanied by (1) Statement of Grounds on which the non-use application is made, and (2) Evidence to support the claim (e.g., non-use investigation report).

Stage 2: Counter-Statement by Owner: Within 6 months of receiving a copy of the non-use application and applicant's evidence, the Trademark Owner may file a counter-statement on the required Form with either: (1) Evidence of genuine use of the trademark, or (2) Statement giving valid reasons for non-use.

Stage 3: Applicant's Response Evidence: Whether or not the Trademark Owner has taken action, the Applicant may, within 6 months of receiving a copy of the counter-statement and evidence of use, file further evidence via: (1) Statutory Declaration, or (2) Affidavit in support of the application.

Stage 4: Hearing & Ruling: When the evidence rounds are complete, the Registrar will fix a date and time for a hearing and issue a formal notice to both parties.

What is the Enterprise Innovation Scheme (EIS)?

What is EIS? The Enterprise Innovation Scheme (EIS) is a Singapore tax incentive scheme administered by the Inland Revenue Authority of Singapore (IRAS) to encourage businesses to invest in innovation and intellectual property (IP).

Enhanced Incentive: Save more when protecting your innovations and building your IP assets. Eligible businesses can claim enhanced tax deductions on qualifying IP registration costs incurred from Year of Assessment (YA) 2024 to YA 2028.

How Your Business Benefits

Up to 400% Tax Deduction: Claim up to 400% tax deduction on the first SGD 400,000 of qualifying IP registration expenditure incurred per Year of Assessment.

Standard 100% Tax Deduction: Qualifying expenditure exceeding the annual cap of SGD 400,000 continues to enjoy the standard 100% tax deduction.

Eligibility Requirements

Active Local Operations: The business must conduct active business operations in Singapore.

IP Ownership: The Singapore entity must hold both the legal and economic ownership of the intellectual property.

Minimum Ownership Period: Ownership of the registered IP (or pending application) should generally be retained for at least one year.

Covered IP Types & Qualifying Costs

Covered IP Types: The EIS covers official and professional fees for registering Patents, Trade Marks, Registered Designs, and Plant Varieties.

Qualifying IP Costs Covered:

• Official Filing Fees, Search Fees, Examination Fees, and Registration & Grant Fees.
• Professional Fees: IP Agent Fees, Specification Drafting, Application Preparation, Prior Art Searches, and Translation Costs.

Regardless of Application Outcome: Qualifying registration expenses may remain eligible for enhanced tax deductions even if the IP application is ultimately unsuccessful, subject to applicable IRAS requirements.

End-to-End Enforcement & Evidence Preservation Service

1. DETECT: Identify infringing websites, unauthorized online sellers, social media accounts, and illicit counterfeit product listings across global digital platforms.
2. REMOVE: Take swift and decisive takedown actions to remove infringing content from websites, e-commerce marketplaces, online trading platforms, and social media channels.
3. PURCHASE (China / Philippines): Conduct controlled, legally sound test purchases of suspected counterfeit products to capture direct proof of transaction and physical evidence.
4. PRESERVE: Securely preserve purchased physical counterfeit items and digital metadata/records to strictly maintain evidence integrity and an unbroken chain of custody.
5. ENFORCE (China / Philippines): Prepare notarized records and comprehensive evidence packages suitable for civil litigation, administrative customs actions, and official legal enforcement proceedings.

Key Benefits & Advantages

Core Promise: STRONGER EVIDENCE. STRONGER CASE. STRONGER BRAND.

• Court-admissible evidence:
• Supports full-scale litigation, administrative enforcement, customs border protection, and UDRP domain name dispute proceedings.
• Preserves both physical product sample and digital electronic evidence.
• Maintains an unbroken and fully documented legal chain of custody.

Global Reach & Local Expertise: Combining seamless international protection capabilities with localized legal enforcement expertise across key Asian markets.