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What should I do when I encounter an examination Opinion from the Trademark Office? (Simple Opinion)

Updated: Jun 9

The Trademark Office will conduct a preliminary examination of the trademark application to check the deficiencies of the application


Important: When filing a T2 form, we must know that there are 3 main points that will affect the filing date:-


1) Applicant's name

A name is required to be submitted


Tips: The applicant can submit the applicant's name in Chinese and English while the trademark office will not generally check. However, the applicant must ensure that the name is the same as the company register.


2) A trademark description of goods or services


3) A representation of the trademark

The representation must be clear so that the trademark examiner can make a clear examination.


Tips: In particular, if you need to meet the deadline (such as priority within 6 months), you should pay attention to these points.


The Trademark Office will review trademark applications, and some can overcome the examiner's review opinion with a simple change:-


And the following, we share the situation that our clients have encountered. They need us to assist them to handle their trademark applications:-


I) The Trademark Office requires the Trademark Agent to have a contact address in Hong Kong


The applicant does not necessarily have an address in Hong Kong, however, the applicant needs to find an agent to process their trademark application. For the agents, they need to have a service address in Hong Kong.


Important: P.O. Boxes are not acceptable


Tips: Since the Hong Kong Intellectual Property Department may issue a letter or certificate to the applicant or its agent, a valid contact address is required for communication with the Hong Kong Intellectual Property Department.



II) Wrong choice of the certification mark, collective mark, defensive mark


In order to apply for a certification mark, collective mark, or defensive mark, applicants must comply with Rules 99-101 of the Trademark Rules. In other words, not all trademarks can also submit certification marks, collective marks, and defensive marks.


Applicants must comply with the relevant rules to submit their applications. If not, applicants could only apply for an ordinary trademark.


Tips: Submit a T5A form to clarify that the trademark application was changed from the special trademark to an ordinary trademark.


III) Separate Goods or Services


Types of separate applications

(a) i) based on the goods or services


Class 1: A, B

Class 2: C


become


Category 1: A

Category 2: B, C


(a) ii) by Classes


Original application: Class 1 and Class 2


become


Separate two independent application

Class 1 and Class 2


Important: The above separations cannot separate a series of marks on the same form.


Tips: If applicants want to separate the original class/goods or service descriptions (trademarks with the same application number), applicants can use T3 to apply for separation.


However, if the applicant wants to change the description of the goods or services, they will need to submit Form T5A.


(b) a series of trademarks

Separate series of marks


A series of trademarks originally composed of A, B, and C, for example, can become independent A, B, and C applications, or freely combine independent applications


We could use the above simple response to tackle examination opinions I - III.


admin@patentanddesignltd.com or WhatsApp/ Wechat: 852 6149 6293

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