Trademark Non-Use Cancellation (NUC) in Hong Kong Guide

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.