It was an ordinary afternoon when Owen, one of my longstanding clients, walked into my office. His expression was a mix of concern and urgency, a far cry from his usual laid-back demeanor. He wasted no time and jumped straight to the point.
“How’s the progress on the ‘Tactic’ trademark application now?” he asked, his voice slightly strained.
I was taken aback. We had filed the trademark for his stationery business just a week ago. Trademark processes are notorious for their lengthy timelines. Even in Hong Kong, a city famous for its efficiency, it often takes 5 to 8 months to complete the trademark processes. It was highly unusual for a client to inquire so soon, especially someone as seasoned in business as Owen. My instincts told me something was off.
“Owen, it’s only been a week,” I replied carefully. “These things take time. You’re looking at several months before we hear anything significant. But don’t worry, we’ll keep you promptly informed of any updates.” I paused, searching his face. “Is there something specific on your mind? Any changes to your trademark plans?”
Owen let out a deep breath, and then, almost as if he couldn’t help himself, a small, strained smile tugged at the corners of his mouth. “You know me too well,” he said, running a hand through his hair. “Jim and Frank—my partners—they noticed something when I showed them the trademark filing report. It’s a mistake, but… it’s not yours.”
He paused, and I felt a small knot form in my stomach. What could possibly have gone wrong?
“They pointed out that we filed for ‘Tactic’ when we were supposed to file for ‘Tactics.’ Just one little ‘s,’ but it’s turned into a big problem. At first, I was furious, with you. How could such a mistake happen? But then I looked through our correspondence, and there it was, in black and white. I told you to file ‘Tactic.’ No ‘s.’ It was my mistake.”
The room seemed to shrink around us as the reality of the situation sank in. I understood now why Owen was here, so soon after the filing. He needed to know if there was any way to fix this—if that one missing letter could be added back into the trademark application.
I had to break the bad news. I could see the hope in Owen’s eyes, and it pained me to be the one to extinguish it. But he needed to know the truth.
“Owen, I’m sorry,” I began, choosing my words carefully. “Unfortunately, once a trademark is filed, it’s set in stone. The representation of the trademark, along with the classes and specifications, are all crystallized at the time of filing. They determine the scope of protection for your brand. Whether or not a later trademark is considered confusingly similar to yours will largely depend on two factors: the similarity between the marks and the similarity between the goods or services associated with those marks.”
Owen was listening intently, his brow furrowed. I continued, “If we were allowed to change ‘Tactic’ to ‘Tactics’ now, it could affect the registrability of other trademarks down the line. Even though the likelihood of a conflict is slim, the rules are strict to ensure fairness to third parties. This is why alterations aren’t allowed after filing.”
I could see the frustration mounting in Owen’s eyes. He clenched his fists, knuckles turning white. “So, what does this mean? Do we have to start all over again? I’ll have to pay twice, and Jim and Frank are going to kill me for wasting money on this.”
The pressure was palpable, but I knew I had to stay calm for his sake. “Owen, let’s take a breath. There’s still a way forward. First, let’s deal with the bad news, before also the good news.”
“Give it to me straight,” he said, bracing himself.
“Yes, we will need to file the trademark application again, which means incurring additional costs. But considering the circumstances, I’m willing to offer you a 30% discount on my service fees. However, time is of the essence. The trademark rights for ‘Tactics’ will only be crystallized once we file, and if someone else files a similar trademark in the meantime, it could complicate matters significantly.”
Owen exhaled slowly, processing the information. “I appreciate the discount, but it’s still going to be hard to explain this to Jim and Frank. They’re already stressed about the budget as it is.” His frustration was evident, but so was his determination. “What about the good news? You mentioned good news.”
I allowed myself a small smile. “Yes, there is some good news. Since we filed the original trademark application just a few days ago, we might be able to recover some of the costs. I can help you draft a letter to the Hong Kong Trade Marks Registry explaining the situation. We’ll make the case that a clerical error led to the wrong trademark being filed and request a refund of the official fees for the original application.”
For the first time since he entered my office, I saw a flicker of hope in Owen’s eyes. “You think they’ll go for it?”
“It’s not guaranteed,” I admitted, “but with a well-crafted explanation and a bit of luck, there’s a good chance. And even if we only get a partial refund, it will help offset the costs of filing the new application.”
We worked together to draft the letter, carefully outlining the circumstances and emphasizing that it was an honest mistake. The days that followed were tense, with Owen checking in frequently as we awaited a response from the Registry. I could sense his anxiety; this wasn’t just about the money—this was about proving to his partners that he could handle the situation and make things right.
Then, finally, the news came. The Hong Kong Trade Marks Registry agreed to refund the official fees for the withdrawn original “Tactic” application. Owen was relieved, and I could see the weight lift off his shoulders. Although the filing date of the new “Tactics” trademark was now later than originally planned, the combination of the refunded official fees and the discounted service fees meant that the financial impact was minimized.
As we wrapped up our discussion, Owen looked at me with gratitude. “Thank you for helping me navigate this mess. I know it could have been much worse.”
“You handled it well,” I replied. “This was a good reminder for both of us about the importance of getting every detail right before filing. You were lucky this time, Owen. Others haven’t been so fortunate.”
Owen’s story is a cautionary tale, underscoring the critical importance of accuracy in trademark filings. A single letter can make all the difference. In our next article, we’ll discuss an even more complex scenario where mistakes in trademark applications have led to significant consequences. Stay tuned.
Origin is a boutique IP service provider in Hong Kong with Fortune 500 clients. Please do not hesitate to contact Origin at tsminfo@originbc.com for any trade mark matters. Please also visit our website https://www.originbc.com.
