What should I do when I encounter an examination Opinion from the Trademark Office? (Simple Opinion)
Updated: Nov 25, 2022
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/organization 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: 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 in handling 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. The agents, 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) the Wrong choice of the certification mark, collective mark, or 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 a particular 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
Category 1: A
Category 2: B, C
(a) ii) by Classes
Original application: Class 1 and Class 2
Separate two independent application
Class 1 and Class 2
Important: The above separations cannot separate a series of marks in 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 the T3 form to apply for separation.
However, if the applicant wants to change the description of the goods or services, they will need to submit a T5A form.
(b) a series of trademarks
Separate series of marks
A series of trademarks composed initially 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.
All in all, first of all, the applicant needs to submit the application to avoid the wrong submission, which will affect the items on the application date. 1) the applicant's name, 2) a trademark description of goods or services, 3) a representation of the trademark. Afterward, you can submit a reply to the Trademark Office for deficiencies, such as separating trademarks or commodities, so as to protect the applicant's application efficiency.
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