Since the movement of people between the Mainland and Hong Kong had been blocked with the outbreak of the COVID-19 epidemic, cross-border economic activities unprecedentedly come to a standstill over the past three years. A number of Hong Kong trademarks registered in the Mainland were recently faced by cancellation proceedings as some people or entities with ulterior motives filed petitions to the National Trademark Office to revoke their registered trademarks on the ground of “non-use for three consecutive years”. The BDC pointed out that taking advantage of special circumstances arising from COVID-19 pandemic to sue maliciously will not only cause nuisance to the Hong Kong industries, but also bring unnecessary workload to the related Mainland authorities. The Council thus put forward the following recommendations:
First, the difficulties encountered by Hong Kong enterprises in using their trademarks in the Mainland due to the COVID-19 pandemic could be classified as an incidence of “force majeure”. The Mainland authorities might, as an exceptional arrangement under extra-ordinary circumstances, relax the requirements on evidence that Hong Kong defendants must submit. Inter alia, on the principle of “One Country”, using the same trademark in Hong Kong in the past three years should be regarded as an equivalent of genuine use in the Mainland or as an important supporting evidence.
Second, the recent cases have once again pointed to the imperativeness of trademark cooperation between the Mainland and Hong Kong. It is suggested that the trademark authorities of both places might consider inviting representatives from the business and legal circles of the other party to serve as advisor or member of their respective reviewing committees, so as to be more attentive to the business environments of the counterparts and the real situation of cross-border business operation when handing the trademark registration and related issues.
Last but not the least, Hong Kong and the Mainland should pursue mutual recognition in regard to trademark registration procedures and work together towards the establishment of a well-coordinated unified intellectual property regime in the long run, by drawing on the experience of “Madrid Agreement” and “Regional Trademark” of the European Union. The two places should also step up efforts to improve cross-border settlement mechanism for intellectual property disputes, through, for example, jointly review of cases involving cross-border use of trademarks, promoting non-litigation resolutions like arbitration and mediation, and joining forces in cracking down on malicious trademark registration.
