TRADE MARKS ORDINANCE
TRADE MARKS ORDINANCE
(CHAPTER 43)
CONTENTS
Section
1. Short title
2. Interpretation
REGISTER OF TRADE MARKS
3. Register of trade marks
4. Division of register into 2 parts
5. Trust not to be entered in register
6. Inspection of register
7. Copies and extracts from register
REGISTRABLE TRADE MARKS
8. Trade mark must be for particular goods or services
9. Trade marks registrable in Part A
10. Trade marks registrable in Part B
11. Coloured trade marks
12. Restriction on registration
REGISTRATION OF TRADE MARKS
13. Application for registration
13A. Priority for application made in Convention country
14. Advertisement of application
15. Opposition to registration
16. Registration subject to disclaimer
17. Registration, and failure to complete
18. Application for registration of mark not to be used by applicant but
to be assigned to corporation to be constituted or to be used by
registered user
19. Jointly owned trade marks relating to goods
19A. Jointly owned trade marks relating to services
19B. Registration of joint proprietors
IDE
NTICAL TRADE MARKS
20. Prohibition of registration of identical and resembling trade marks
21. Applications for registration of identical or resembling trade marks
22. Concurrent use
23. Protection of marks registered in country of origin
ASSOCIATED TRADE MARKS
24. Associated trade marks
25. Combined trade marks
26. Series of trade marks
EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT
27. Right given by registration in Part A in respect of goods, and
infringement thereof
27A. Right given by registration in Part A in respect of services, and
infringement thereof
28. Right given by registration in Part B in respect of goods, and
infringement thereof
28A. Right given by registration in Part B in respct of services, and
infringement thereof
29. Registration to be prima facie evidence of validity
30. Registration in Part A to be conclusive as to validity after 7 years
31. Equities in respect of trade marks
32. Infringement by breach of certain restrictions
33. Saving for vested rights
34. Saving for use of name, address or description of goods or services
35. No action for infringement of unregistered trade mark
36. "Passing off" action
USE AND NON-USE OF TRADE MARKS
37. Removal from register and imposition of limitations on ground of non-
use
38. Use of one of associated trade marks equivalent to use of another
39. Use of trade mark in relation to exports or to services outside Hong
Kong
40. Use of trade mark after change in form of trade connexion
ASSIGNMENT AND TRANSMISSION
41. Powers of, and restrictions on, assignment and transmission of trade
marks relating to goods
41A. Assignment and transmission of trade marks relating to services
42. Power of registered proprietor to assign, and give receipts
43. Registration of assignments and transmissions
44. Assignments and transmissions of associated trade marks
RENEWAL OF REGISTRATION
45. Renewal of registration
46. Procedure on expiry of period of registration
47. Status of unrenewed trade mark
RECTIFICATION AND CORRECTION OF REGISTER
48. General power to rectify entries in register
49. Power to expunge or vary registration for breach of condition
50. Correction of register
51. Alteration of registered trade mark
52. Words used as name or description of an article or substance
52A. Words used as name or description of an activity
53. Removal of trade mark from register on proof of prior registration in
country of origin
54. Adaptation of entries in register to amended or substituted
classification of goods
DEFENSIVE TRADE MARKS
55. Defensive registration of trade marks relating to goods
55A. Defensive registration of trade marks relating to services
56. Defensive trade marks to be registered as associated trade marks
57. Removal of defensive trade marks from the register
REGISTERED USERS
58. Registration as a registered user. Meaning of "permitted use"
59. Proceedings for infringement
60. Variation or cancellation of registration as a registered user
61. Notification of registration as registered user and of application for
variation or cancellation of such registration
62. Registrar's decision subject to appeal to Court
63. Right to use not assignable or transmissible
CERTIFICATION TRADE MARKS
64. Marks registrable as certification trade marks
65. Application for registration as certification trade mark
66. Advertisement of application. Opposition to registration
67. Right given by registration in respect of goods, and infringement
thereof
67A. Right given by registration in respect of services, and infringment
thereof
68. Alteration of deposited regulations, or expunging or varying of entry
in register relating to certification trade mark
69. Certification trade mark assignable or transmissible only with
Registrar's consent
70. Registrar not empowered to award costs on appeals to him
71. Provisions not applicable to certification trade marks
72. Trade mark registered under section 59 of Trade Marks Ordinance 1909,
to be deemed registered as a certification trade mark under this
Ordinance.
POWERS AND DUTIES OF REGISTRAR
73. Preliminary advice by Registrar as to distinctiveness
74. Hearing before exercise of discretionary power of Registrar
LEGAL PROCEEDINGS AND APPEALS
75. Certificate of validity
76. Trade usage, etc., to be considered
77. Registrar's appearance in proceedings involving rectification
78. Appeal from Registrar
79. Appeal to Court of Appeal. Discretion of Court in appeals
80. Procedure in case of option to apply to Court or Registrar
COSTS
81. Costs of proceedings before the Court
82. Costs of proceedings before the Registrar
EVIDENCE
83. Mode of giving evidence
84. Evidence of entries in Hong Kong or United Kingdom Register
85. Evidence of entries made or of things done by Registrar, or
Comptroller-General of U. K. Patent Office.
OFFENCES, AND RESTRAINT OF USE OF ROYAL ARMS
86. Falsification of entries in register
87. Falsely representing a trade mark as registered, etc.
88. Restraint of use of Royal Arms
AGENTS
89. Recognition of agents
RULES
90. Power of Governor in Council to make rules
90A. Hours of business and excluded days
TRANSITIONAL PROVISIONS
91. Validity of registrations under previous enactments
Schedule List of Countries (excluding the United Kingdom) adhering to the
Paris Convention for the Protection of Industrial Property 1883, as
revised from time to time.
To amend and consolidate the law relating to the registration of trade
marks. [1 January 1955] G. N. A. 143 of 1954
WHOLE DOCUMENT
1. Short title
This Ordinance may be cited as the Trade Marks Ordinance.
[cf. 1938 c. 22 s. 71 U. K.]
2. Interpretation
(1) In this Ordinance, unless the context otherwise requires-"assignment"
means assignment by act of the parties concerned; "certification trade
mark" means a mark registered or deemed to have been registered under
section 64; (Added 44 of 1991 s. 2)
"defensive trade mark" means a mark registered under section 55 or 55A;
(Added 44 of 1991 s. 2)
"limitations" means any limitations of the exclusive right to the use of a
trade mark given by the registration of a person as proprietor of the
trade mark, including limitations of that right as to mode of use or as to
use, -
(a) in the case of a trade mark relating to goods, in relation to-
(i) goods to be sold, or otherwise traded in, within Hong Kong; or
(ii) goods to be exported to any market outside Hong Kong; and
(b) in the case of a trade mark relating to services, in relation to-
(i) services for use or available for acceptance within Hong Kong; or
(ii) services for use in any place outside Hong Kong; (Replaced 44 of 1991
s. 2) "mark" includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, or any combination thereof;
"permitted use" has the meaning assigned to it by section 58 (1);
"prescribed" means, in relation to proceedings before the Court or
preliminary thereto or connected therewith, prescribed by this Ordinance
or by the rules made thereunder or by rules of court and, in other cases,
prescribed by this Ordinance or by the rules made thereunder; "provision",
in relation to services, means their provision, whether or not for money
or money's worth; (Added 44 of 1991 s. 2)
"register" means the register of trade marks kept under this Ordinance;
"registrable trade mark" means a trade mark which is capable of
registration under the provisions of this Ordinance;
"registered trade mark" means a trade mark which is actually on the
register; "registered user" means a person who is for the time being
registered as such under section 58;
"Registrar" means the Registrar of Trade Marks appointed by the Governor;
(Replaced 35 of 1990 s. 10)
"seal" means the seal of the Registrar kept in the Trade Marks Registry
Hong Kong, having a device and impression of the Royal Arms with a label
surrounding the same and the inscription "Registrar of Trade Marks, Hong
Kong", and hitherto used by the Registrar of Trade Marks since 10 December
1909;
"trade mark" means (except in the expressions "trade mark relating to
goods", "trade mark relating to services", "defensive trade mark" and
"certification trade mark") a trade mark relating to goods or a trade mark
relating to services; (Replaced 44 of 1991 s. 2)
"trade mark relating to goods" means a mark used or proposed to be used in
relation to goods for the purpose of indicating, or so as to indicate, a
connection in the course of trade between the goods and some person having
the right either as proprietor or as registered user to use the mark,
whether with or without any indication of the identity of that person;
(Added 44 of 1991 s. 2)
"trade mark relating to services" means a mark used or proposed to be used
in relation to services for the purpose of indicating, or so as to
indicate, that a particular person is connected, in the course of
business, with the provision of those services, whether with or without
any indication of the identity of that person; (Added 44 of 1991 s. 2)
"transmission" means transmission by operation of law, devolution on the
personal representative of a deceased person, and any other mode of
transfer not being assignment;
"tribunal" means the Court or the Registrar.
(2) References in this Ordinance to-
(a) the use of a mark shall be construed as references to the use of a
printed or other visual representation of the mark;
(b) the use of a mark in relation to goods shall be construed as
references to the use of the mark upon, or in physical or other relation
to, goods; and
(c) the use of a mark in relation to services shall be construed as
references to the use of the mark as or as part of any statement about the
availability or performance of services or otherwise in relation to
services. (Replaced 44 of 1991 s. 2)
(3) For the purposes of this Ordinance, goods and services are associated
with each other if it is likely that those goods might be sold or
otherwise traded in and those services might be provided by the same
business, and a description of goods and a description of services are
associated with each other if it is likely that the description of goods
might be sold or otherwise traded in and the description of services might
be provided by the same business.
(Added 44 of 1991 s. 2)
(4) References in this Ordinance to a near resemblance of marks are
references to a resemblance so near as to be likely to deceive or cause
confusion. (Added 44 of 1991 s. 2)
(5) For the purposes of this Ordinance, a person who provides services
that are ancillary to a trade or business of that person may be regarded
as being connected, in the course of business, with the provision of those
services. (Added 44 of 1991 s. 2) [cf. 1938 c. 22 s. 68 U. K.]
REGISTER OF TRADE MARKS
3. Register of trade marks
(1) The Registrar shall for the purposes of this Ordinance keep a record
called the register of trade marks, wherein shall be entered all
registered trade marks, with the dates of their registration, the names
and addresses of their proprietors, notifications of assignments and
transmissions, the names and addresses of all registered users,
disclaimers, conditions, limitations, and such other matters relating to
such registered trade marks as may be prescribed. (Amended 44 of 1991 s.
3) [cf. 1938 c. 22 s. 1 (1) & (4) U. K.]
(2) The Registrar need not keep the register in documentary form. (Added
44 of 1991 s. 3)
4. Division of register into 2 parts
(1) The register shall be divided into 2 parts, called Part A and Part B.
[cf. 1938 c. 22 s. 1 (2) U. K.]
(2) Part A of the register shall comprise all trade marks entered in the
register of trade marks at the commencement of this Ordinance and all
trade marks which after the commencement of this Ordinance shall be
registered in that Part under the provisions of this Ordinance.
(3) Part B shall comprise all trade marks registered in that Part under
the provisions of this Ordinance.
[cf. 1919 c. 79 s. 1 U. K.]
5. Trust not to be entered in register
There shall not be entered in the register any notice of any trust
express, implied or constructive, nor shall any such notice be receivable
by the Registrar. [cf. 1938 c. 22 s. 64 (1) U. K.]
6. Inspection of register
(1) The register shall at all convenient times be open to the inspection
of the public, subject to such rules as may be prescribed. (Amended 44 of
1991 s. 4) [cf. 1938 c. 22 s. 1 (3) U. K.]
(2) In relation to any portion of the register kept otherwise than in
documentary form, the right of inspection conferred by subsection (1) is a
right to inspect the material on the register. (Added 44 of 1991 s. 4)
7. Copies and extracts from register
(1) Any person who applies for a certified copy of an entry in the
register or a certified extract from the register shall be entitled to
obtain such a copy or extract on payment of the prescribed fee; and rules
under section 90 may provide that any person who applies for an
uncertified copy or extract shall be entitled to such a copy or extract on
payment of the prescribed fee.
(2) In relation to any portion of the register kept otherwise than in
documentary form, the right to a copy or extract conferred by subsection
(1) or rules under section 90 is a right to a copy or extract in a form in
which it can be taken away and in which it is visible and legible.
(3) In this section, "certified copy" and "certified extract" mean a copy
and extract certified by the Registrar and sealed with the seal of the
Registrar. (Replaced 44 of 1991 s. 5)
[cf. 1938 c. 22 s. 1 (5), (7) & (11) U. K.]
REGISTRABLE TRADE MARKS
8. Trade mark must be for particular goods or services
(1) A trade mark relating to goods must be registered in respect of
particular goods or classes of goods. (Amended 44 of 1991 s. 53)
(1A) A trade mark relating to services must be registered in respect of
particular services or classes of services. (Added 44 of 1991 s. 6)
(2) Any question arising as to the class within which any goods or
services fall shall be determined by the Registrar, whose decision shall
be final. (Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 3 U. K.]
9. Trade marks registrable in Part A
(1) A trade mark (other than a certification trade mark) to be registrable
in Part A of the register shall contain or consist of at least one of the
following essential particulars-
(a) the name of a company, individual, or firm, represented in a special
or particular manner;
(b) the signature (in other than Chinese characters) of the applicant for
registration or of some predecessor in his business;
(c) an invented word or invented words;
(d) a word or words having no direct reference to the character or quality
of the goods or services, as the case may be, and not being according to
its ordinary signification a geographical name or a surname; (Amended 44
of 1991 s. 7)
(e) any other distinctive mark, but a name, signature, or word or words,
other than such as fall within the descriptions in paragraphs (a), (b),
(c) and (d), shall not be registrable under the provisions of this
paragraph except upon evidence of its distinctiveness.
(2) For the purposes of this section, "distinctive" means-
(a) in the case of a trade mark relating to goods, adapted in relation to
the goods in respect of which the trade mark is registered or proposed to
be registered, to distinguish goods with which the proprietor of the trade
mark is or may be connected, in the course of trade, from goods in the
case of which no such connection subsists; or
(b) in the case of a trade mark relating to services, adapted in relation
to the services in respect of which the trade mark is registered or
proposed to be registered, to distinguish services with the provision of
which the proprietor is or may be connected, in the course of business,
from services with the provision of which he is not so connected,
either generally or, where the trade mark is registered or proposed to be
registered subject to limitations, in relation to use within the extent of
the registration. (Replaced 44 of 1991 s. 7)
(3) In determining whether a trade mark is adapted to distinguish as
aforesaid the tribunal may have regard to the extent to which-
(a) the trade mark is inherently adapted to distinguish as aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances,
the trade mark is in fact adapted to distinguish as aforesaid.
[cf. 1938 c. 22 s. 9 U. K.]
10. Trade marks registrable in Part B
(1) A trade mark relating to goods to be registrable in Part B of the
register must be capable, in relation to the goods in respect of which it
is registered or proposed to be registered, of distinguishing goods with
which the proprietor of the trade mark is or may be connected in the
course of trade from goods in the case of which no such connexion
subsists, either generally or, where the trade mark is registered or
proposed to be registered subject to limitations, in relation to the use
within the extent of the registration. (Amended 44 of 1991 s. 53)
(1A) A trade mark relating to services to be registrable in Part B of the
register must be capable, in relation to the services in respect of which
it is registered or proposed to be registered, of distinguishing services
with the provision of which the proprietor of the mark is or may be
connected in the course of business from services with the provision of
which he is not so connected either generally or, where the trade mark is
registered or proposed to be registered subject to limitations, in
relation to use within the extent of the registration. (Added 44 of 1991
s. 8)
(2) In determining whether a trade mark is capable of distinguishing as
aforesaid the tribunal may have regard to the extent to which-
(a) the trade mark is inherently capable of distinguishing as aforesaid;
and (Amended 44 of 1991 s. 8)
(b) by reason of the use of the trade mark or of any other circumstances,
the trade mark is in fact capable of distinguishing as aforesaid.
(3) A trade mark may be registered in Part B notwithstanding any
registration in Part A in the name of the same proprietor of the same
trade mark or any part or parts thereof. (Replaced 3 of 1985 s. 2)
[cf. 1938 c. 22 s. 10 U. K.]
11. Coloured trade marks
(1) A trade mark may be limited in whole or in part to one or more
specified colours, and in any such case the fact that it is so limited
shall be taken into consideration by any tribunal having to decide on the
distinctive character of the trade mark.
(2) If and so far as a trade mark is registered without limitation of
colour, it shall be deemed to be registered for all colours.
[cf. 1938 c. 22 s. 16 U. K.]
12. Restriction on registration
(1) It shall not be lawful to register as a trade mark or part of a trade
mark any matter the use of which would be likely to deceive or would be
disentitled to protection in a court of justice or would be contrary to
law or morality, or any scandalous design. [cf. 1938 c. 22 s. 11 U. K.]
(2) No word which is the commonly used and accepted name of any single
chemical element or single chemical compound, as distinguished from a
mixture, shall be registered as a trade mark relating to goods in respect
of a chemical substance or preparation, and any such registration in force
at the commencement of this Ordinance or thereafter shall, notwithstanding
anything in section 30, be deemed for the purposes of section 48 to be an
entry made in the register without sufficient cause, or an entry wrongly
remaining on the register, as the circumstances may require: (Amended 44
of 1991 s. 53) Provided that the foregoing provisions of this subsection
shall not have effect in relation to a word which is used to denote only a
brand or make of the element or compound as made by the proprietor or a
registered user of the trade mark, as distinguished from the element or
compound as made by others, and in association with a suitable name or
description open to the public use. [cf. 1938 c. 22 s. 15 (3) U. K.]
REGISTRATION OF TRADE MARKS
13. Application for registration
(1) Any person claiming to be entitled to be registered as the proprietor
of a trade mark used or proposed to be used by him who is desirous of
registering it must apply in writing to the Registrar in the prescribed
manner for registration either in Part A or Part B of the register.
(2) Subject to the provisions of this Ordinance, the Registrar may refuse
the application, or accept it absolutely or subject to such conditions,
amendments, modifications, or limitations, if any, as he may think right.
(3) In the case of an application for registration of a trade mark (other
than a certification trade mark) in Part A of the register, the Registrar
may, if the applicant is willing, instead of refusing the application,
treat it as an application for registration in Part B and deal with the
application accordingly.
(4) In the case of a refusal or conditional acceptance, the Registrar
shall, if required by the applicant, state in writing the grounds of his
decision and the materials used by him in arriving thereat, and the
decision shall be subject to appeal to the Court.
(5) An appeal under this section shall be made in the prescribed manner,
and on such appeal the Court shall, if required, hear the applicant and
the Registrar, and shall make an order determining whether, and subject to
what amendments, modifications, conditions or limitations, if any, the
application is to be accepted.
(6) Appeals under this section shall be heard on the materials stated as
aforesaid by the Registrar to have been used by him in arriving at his
decision, and no further grounds of objection to the acceptance of the
application shall be allowed to be taken by the Registrar, other than
those so stated as aforesaid by him, except by leave of the Court. Where
any further grounds of objection are taken, the applicant shall be
entitled to withdraw his application without payment of costs on giving
notice as prescribed.
(7) The Registrar or the Court, as the case may be, may at any time,
whether before or after acceptance, correct any error in or in connexion
with the application, or may permit the applicant to amend his application
upon such terms as the Registrar or the Court may think
fit.
[cf. 1938 c. 22 s. 17 U. K.]
13A. Priority for application made in Convention country
(1) Subject to subsection (2), any person who has applied for protection
for any trade mark in a Convention country, or his legal representative or
assignee, shall be entitled to registration of his trade mark under this
Ordinance in priority to other applicants and, subject to subsection (2A),
the registration shall have the same date as the date of the application
in the Convention country. (Amended 44 of 1991 s. 9)
(2) For the purposes of obtaining priority under subsection (1), the
application for registration of the trade mark under this Ordinance must
be made within 6 months from-
(a) the date of application for protection in the Convention country; or
(b) where more than one such application for protection has been made,
from the date of the first application.
(2A) Where an application for protection for a trade mark relating to
services was made in a Convention country before the date on which the
Trade Marks (Amendment) Ordinance 1991 (44 of 1991) came into force, a
trade mark relating to services registered on an application under this
section made within the period specified in subsection (2) shall be
registered as of that date. (Added 44 of 1991 s. 9)
(3) Nothing in subsection (1) shall entitle the proprietor of a trade mark
to recover damages for any infringement happening prior to the actual date
on which his trade mark is registered under this Ordinance.
(4) An application for the registration of a trade mark under this section
shall, subject to such further requirements as may be prescribed-
(a) be made in the same manner as an ordinary application under this
Ordinance; and
(b) specify-
(i) the Convention country in which the application for protection, or the
first such application, was made; and
(ii) the date on which such application for protection was made.
(5) Where a person has applied for protection for any trade mark by an
application which-
(a) in accordance with the terms of a treaty subsisting between any 2 or
more Convention countries, is equivalent to an application duly made in
any one of those Convention countries; or
(b) in accordance with the law of any Convention country, is equivalent to
an application duly made in that Convention country,
he shall be deemed for the purposes of this section to have applied in
that Convention country.
(6) In this section "Convention country" means-
(a) the United Kingdom;
(b) any country (including any colony, protectorate or territory subject
to the authority or under the suzerainty of another country, or territory
administered by another country) for the time being specified in the
Schedule.
(7) The Governor may be order published in the Gazette-
(a) add to the Schedule-
(i) the name of any country which has acceded to the Paris Convention for
the Protection of Industrial Property 1883, as revised at Brussels in
1900, at Washington in 1911, at the Hague in 1925, at London in 1934, at
Lisbon in 1958 and at Stockholm in 1967, and as the same may be revised
from time to time;
(ii) the name of any colony, protectorate or territory subject to the
authority or under the suzerainty of another country (other than the
United Kingdom), or territory administered by another country (other than
the United Kingdom), on behalf of which such other country has acceded to
the said Convention;
(b) delete from the Schedule the name of any country which has denounced
the said Convention, or the name of any colony, protectorate or territory
on behalf of which the said Convention has been denounced;
(c) otherwise amend the Schedule.
(Added 55 of 1977 s. 2)
[cf. 1907 c. 29. s. 91 U. K.]
14. Advertisement of application
When an application for registration of a trade mark has been accepted,
whether absolutely or subject to conditions or limitations, the Registrar
shall require the applicant to advertise it, as accepted, in the
prescribed manner. The advertisement shall set forth all conditions and
limitations subject to which the application has been accepted:
Provided that the Registrar may require an application for registration of
a trade mark to be advertised by the applicant before acceptance-
(a) if it be made under section 9 (1) (e); or
(b) in any other case where it appears to him that it is expedient by
reason of any exceptional circumstances so to do,
and where an application has been so advertised the Registrar may, if he
thinks fit, require the applicant to advertise it again when it has been
accepted but shall not be bound so to do.
[cf. 1938 c. 22 s. 18 (1) U. K.]
15. Opposition to registration
(1) Any person may, within the prescribed time from the date of the
advertisement of an application, give notice to the Registrar of
opposition to the registration.
(2) The notice shall be given in writing in the prescribed manner, and
shall include a statement of the grounds of opposition.
(3) The Registrar shall send a copy of the notice to the applicant, and,
within the prescribed time after the receipt thereof, the applicant shall
send to the Registrar, in the prescribed manner, a counter-statement of
the grounds on which he relies for his application, and if he does not do
so he shall be deemed to have abandoned his application.
(4) If the applicant sends such a counter-statement, the Registrar shall
furnish a copy thereof to the person giving notice of opposition, and
shall, after hearing the parties, if so required, and considering the
evidence, decide whether, and subject to what conditions or limitations,
if any, registration is to be permitted.
(5) The decision of the Registrar shall be subject to appeal to the Court.
(6) An appeal under this section shall be made in the prescribed manner,
and on the appeal the Court shall, if required, hear the parties and the
Registrar, and shall make an order determining whether, and subject to
what conditions or limitations, if any, registration is to be permitted.
(7) On the hearing of an appeal under this section any party may, either
in the prescribed manner or by special leave of the Court, bring forward
further material for the consideration of the Court.
(8) On an appeal under this section no further grounds of objection to the
registration of a trade mark shall be allowed to be taken by the opponent
or the Registrar other than those stated by the opponent as hereinbefore
provided, except by leave of the Court. Where any further grounds of
objection are taken the applicant shall be entitled to withdraw his
application without payment of the costs of the opponent on giving notice
as prescribed.
(9) On an appeal under this section the Court may, after hearing the
Registrar, permit the trade mark proposed to be registered to be modified
in any manner not substantially affecting the identity thereof, but in any
such case the trade mark as so modified shall be advertised in the
prescribed manner before being registered.
(10) If a person giving notice of opposition or an applicant sending a
counter-statement after receipt of a copy of the notice, or an appellant,
neither resides nor carries on business in Hong Kong, the tribunal may
require him to give security for costs of the proceedings before it
relative to the opposition or to the appeal, as the case may be, and in
default of such security being duly given may treat the opposition or
application, or the appeal, as the case may be, as abandoned. (Amended 44
of 1991 s. 54) [cf. 1938 c. 22 s. 18 (2) - (11) U. K.]
16. Registration subject to disclaimer
(1) If a trade mark contains any part not separately registered by the
proprietor as a trade mark or if-
(a) in the case of a trade mark relating to goods it contains matter
common to the trade or otherwise of a non-distinctive character; or
(b) in the case of a trade mark relating to services it contains matter
common to the provision of services of that description or otherwise of a
non-distinctive character,
the Registrar or the Court, in deciding whether such trade mark shall be
entered or shall remain on the register, may require, as a condition of
its being on the register-
(i) that the proprietor shall disclaim any right to the exclusive use of
any part of the trade mark, or of all or any portion of any such matter,
to the exclusive use of which the tribunal holds him not to be entitled;
or
(ii) that he shall make such other disclaimer as the tribunal may consider
necessary for the purpose of defining his rights under such registration.
(2) No disclaimer on the register shall affect any rights of the
proprietor of a trade mark except such as arise out of the registration of
the trade mark in respect of which the disclaimer is made.
(Replaced 44 of 1991 s. 10)
17. Registration, and failure to complete
(1) When an application for registration of a trade mark in Part A or in
Part B of the register has been accepted and has not been opposed and the
time for notice of opposition has expired, or having been opposed the
opposition has been decided in favour of the applicant, the Registrar
shall, unless the application has been accepted in error or unless the
Governor otherwise directs, register the trade mark in Part A or Part B,
as the case may be, and the trade mark when registered shall be registered
as of the date of the application for registration, and such date shall be
deemed for the purposes of this Ordinance to be the date of registration:
(Amended 55 of 1977 s. 3) Provided that, in relation to the date as of
which a trade mark shall be registered and to the date to be deemed the
date of registration, this subsection shall, as respects an application to
which section 13A applies, have effect subject to that section. (Added 55
of 1977 s. 3) [cf. 1938 c. 22 s. 19 (1) U. K.]
(2) The registration of a trade mark shall be for a period of 7 years, but
may be renewed according to the provisions of section 45:
Provided that, in relation to a registration as of a date before the
commencement of this Ordinance, this subsection shall have effect with the
substitution of a period of 14 years for the said period of 7 years. [cf.
1938 c. 22 s. 20 (1) U. K.]
(3) On the registration of a trade mark the Registrar shall issue to the
applicant a certificate in the prescribed form of the registration thereof
under the hand and seal of the Registrar.
[cf. 1938 c. 22 s. 19 (2) U. K.]
(4) When the registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the part
of the applicant, the Registrar may, after giving notice of the non-
completion to the applicant in writing in the prescribed manner, treat the
application as abandoned unless it is completed within the time specified
in that behalf in the notice. [cf. 1938 c. 22 s. 19 (3) U. K.]
18. Application for registration of mark not to be used by applicant but
to be assigned to corporation to be constituted or to be used by
registered user
(1) An application for the registration of a trade mark in respect of any
goods or services shall not be refused, nor shall permission for such
registration be withheld, on the ground only that it appears that the
applicant does not use or propose to use the trade mark-
(a) if the Registrar is satisfied that a body corporate is about to be
constituted, and that applicant intends to assign the trade mark to the
corporation with a view to the use thereof in relation to those goods or
services by the corporation; or
(b) if the application is accompanied by an application for the
registration of a person as a registered user of the trade mark, and the
Registrar is satisfied that the proprietor intends it to be used by that
person in relation to those goods or services and the Registrar is also
satisfied that that person will be registered as a registered user thereof
immediately after the registration of the trade mark.
(2) The Registrar may, as a condition of the exercise of the power
conferred by subsection (1) in favour of an applicant who relies on
intention to assign to a corporation as aforesaid, require him to give
security for the costs of any proceedings relative to any opposition, and
in default of such security being duly given may treat the application as
abandoned.
(3) Where a trade mark is registered in respect of any goods or services
under the power conferred by subsection (1) in the name of an applicant
who relies on intention to assign to a corporation as aforesaid, then,
unless within such period as may be prescribed, or within such further
period not exceeding 6 months as the Registrar may on application being
made to him in the prescribed manner allow, the corporation has been
registered as the proprietor of the trade mark in respect of those goods
or services, the registration shall cease to have effect in respect
thereof at the expiration of that period, and the Registrar shall amend
the register accordingly. (Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 29 U. K.]
19. Jointly owned trade marks relating to goods
Where the relations between 2 or more persons interested in a trade mark
relating to goods are such that no one of them is entitled as between
himself and the other or others of them to use it except-
(a) on behalf of both or all of them; or
(b) in relation to an article with which both or all of them are connected
in the course of trade, those persons may be registered as joint
proprietors of the trade mark, and this Ordinance shall have effect in
relation to any rights to the use of the trade mark vested in those
persons as if those rights had been vested in a single person. (Amended
44 of 1991 ss. 11 & 53)
[cf. 1938 c. 22 s. 63 U. K.]
19A. Jointly owned trade marks relating to services
Where the relations between 2 or more persons interested in a trade mark
relating to services are such that no one of them is entitled as between
himself and the other or others of them to use it except-
(a) on behalf of both or all of them; or
(b) in relation to services with the provision of which both or all of
them are connected in the course of business,
those persons may be registered as joint proprietors of the trade mark,
and this Ordinance shall have effect in relation to any rights to the use
of the trade mark vested in those persons as if those rights had been
vested in a single person. (Added 44 of 1991 s. 12)
19B. Registration of joint proprietors
Subject to sections 19 and 19A, nothing in this Ordinance shall authorize
the registration of 2 or more persons who use a trade mark independently,
or propose so to use it, as joint proprietors of the trade mark.
(Added 44 of 1991 s. 12)
IDENTICAL TRADE MARKS
20. Prohibition of registration of identical and resembling trade marks
(1) Except as provided by section 22, no trade mark relating to goods
shall be registered in respect of any goods or description of goods that
is identical with or nearly resembles a trade mark belonging to a
different proprietor and already on the register in respect of-
(a) the same goods;
(b) the same description of goods; or
(c) services or a description of services which are associated with those
goods or goods of that description.
(2) Except as provided by section 22, no trade mark relating to services
shall be registered in respect of any services or description of services
that is identical with or nearly resembles a trade mark belonging to a
different proprietor and already on the register in respect of-
(a) the same services;
(b) the same description of services; or
(c) goods or a description of goods which are associated with those
services or services of that description.
[Replaced 44 of 1991 s. 13)
21. Applications for registration of identical or resembling trade marks
Where separate applications are made by different persons to be registered
as proprietors respectively of trade marks that are identical or nearly
resemble each other, in respect of-
(a) the same goods or services;
(b) the same description of goods or services; or
(c) goods and services or descriptions of goods and services which are
associated with each other, the Registrar may refuse to register any of
them until their rights have been determined by the Court, or have been
settled by agreement in a manner approved by him or, on an appeal, by the
Court.
(Replaced 44 of 1991 s. 13)
22. Concurrent use
In case of honest concurrent use, or of other special circumstances which
in the opinion of the Court or of the Registrar make it proper to do so,
the Court or the Registrar may permit the registration by more than one
proprietor, in respect of-
(a) the same goods or services;
(b) the same description of goods or services; or
(c) goods and services or descriptions of goods and services which are
associated with each other, of trade marks that are identical or nearly
resemble each other, subject to such conditions and limitations, if any,
as the Court or the Registrar, as the case may be, may think it right to
impose.
(Replaced 44 of 1991 s. 13)
23. Protection of marks registered in country of origin
(1) Subject to subsection (3), the Registrar may refuse to register any
trade mark relating to goods in respect of any goods or description of
goods if it is proved to his satisfaction by the person opposing the
application for registration that such mark is identical with or nearly
resembles a trade mark which is already registered in respect of-
(a) the same goods;
(b) the same description of goods; or
(c) services or a description of services which are associated with those
goods or goods of that description,
in a country or place from which such goods originate.
(2) Subject to subsection (3), the Registrar may refuse to register any
trade mark relating to services in respect of any services or description
of services if it is proved to his satisfaction by the person opposing the
application for registration that such mark is identical with or nearly
resembles a trade mark which is already registered in respect of-
(a) the same services;
(b) the same description of services; or
(c) goods or a description of goods which are associated with those
services or services of that description,
in a country or place from which such services originate.
(3) No application to register shall be refused under this section-
(a) if the applicant proves that he or his predecessors in business have
in Hong Kong, in relation to such goods or services, continuously used the
trade mark for the registration of which he has made application from a
date anterior to the date of the registration of the other mark in such
country or place of origin; or
(b) if the opponent does not give an undertaking to the satisfaction of
the Registrar that he will, within 3 months from the giving of the notice
of opposition, apply for registration in Hong Kong of the trade mark so
registered in the country or place of origin, and will take all necessary
steps to complete such registration. (Replaced 44 of 1991 s. 14)
ASSOCIATED TRADE MARKS
24. Associated trade marks
(1) Where a trade mark relating to goods that is registered, or is the
subject of an application for registration, in respect of any goods is
identical with another trade mark that is registered, or is the subject of
an application for registration, in the name of the same proprietor in
respect of-
(a) the same goods or description of goods; or
(b) services that are associated with those goods or goods of that
description, or so nearly resembles it as to be likely to deceive or cause
confusion if used by a person other than the proprietor, the Registrar may
at any time require that the trade marks shall be entered on the register
as associated trade marks. (Replaced 44 of 1991 s. 14)
(1A) Where a trade mark relating to services that is registered, or is the
subject of an application for registration, in respect of any services is
identical with another trade mark that is registered, or is the subject of
an application for registration, in the name of the same proprietor in
respect of-
(a) the same services or description of services; or
(b) goods that are associated with those services or services of that
description, or so nearly resembles it as to be likely to deceive or cause
confusion if used by a person other than the proprietor, the Registrar may
at any time require that the trade marks shall be entered on the register
as associated trade marks. (Added 44 of 1991 s. 14)
(2) On application made in the prescribed manner by the registered
proprietor of 2 or more trade marks registered as associated trade marks,
the Registrar may dissolve the association as respects any of them if he
is satisfied that there would be no likelihood of deception or confusion
being caused if that trade mark were used by another person in relation to
any of the goods or services in respect of which it is registered, and he
may amend the register accordingly. (Amended 44 of 1991 s. 52) [cf. 1938
c. 22 s. 23 (5) U. K.]
(3) Any decision of the Registrar under the provisions of subsections (1),
(1A) and (2) shall be subject to appeal to the Court. (Amended 44 of 1991
s. 15)
25. Combined trade marks
(1) If the proprietor of a trade mark claims to be entitled to the
exclusive use of any portion of such trade mark separately, he may apply
to register the whole and any such part as separate trade marks. Each such
separate trade mark must satisfy all the conditions of an independent
trade mark and shall, subject to the provisions of subsection (2) hereof
and section 38 (2), have all the incidents of an independent trade mark.
[cf. 1938 c. 22 s. 21 (1) U. K.]
(2) Where a trade mark and any part or parts thereof are thus registered
as separate trade marks in the name of the same proprietor, they shall be
deemed to be, and shall be registered as, associated trade marks. [cf.
1938 c. 22 s. 23 (3) U. K.]
26. Series of trade marks
(1) Where a person claiming to be the proprietor of several trade marks,
in respect of the same goods or services or the same description of goods
or services, seeks to register those trade marks and the trade marks,
while resembling each other in the material particulars thereof, differ in
respect of-
(a) statements of the goods or services in relation to which they are
respectively used or proposed to be used; or
(b) statements of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not
substantially affect the identity of the trade mark; or
(d) colour,
the trade marks may be registered as a series in one registration.
(Replaced 44 of 1991 s. 16)
(2) All trade marks so registered shall be deemed to be, and shall be
registered as, associated trade marks. [cf. 1938 c. 22 s. 23 (4) U. K.]
EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT
27. Right given by registration in Part A in respect of goods, and
infringement thereof
(1) Subject to the provisions of subsections (2) to (4) hereof, and of
sections 33 and 34, the registration (whether before or after the
commencement of this Ordinance) of a person in Part A of the register as
proprietor of a trade mark (other than a certification trade mark) in
respect of any goods shall, if valid, give or be deemed to have given to
that person the exclusive right to the use of the trade mark in relation
to those goods and, without prejudice to the generality of the foregoing
words, that right shall be deemed to be infringed by any person who, not
being the proprietor of the trade mark or a registered user thereof using
by way of the permitted use, uses in the course of trade a mark identical
with or nearly resembling it, in relation to any goods in respect of which
it is registered, and in such manner as to render the use of the mark
likely to be taken either- (Amended 44 of 1991 s. 17)
(a) as being use as a trade mark relating to goods; or (Amended 44 of 1991
s. 53)
(b) in a case in which the use is use upon the goods or in physical
relation thereto or in an advertising circular or other advertisement
issued to the public, as importing a reference to some person having the
right either as proprietor or as registered user to use the trade mark or
to goods with which such a person as aforesaid is connected in the course
of trade.
(2) The right to the use of a trade mark given by registration as
aforesaid shall be subject to any conditions or limitations entered on the
register, and shall not be deemed to be infringed by the use of any such
mark as aforesaid in any mode, in relation to goods to be sold or
otherwise traded in any place, in relation to goods to be exported to any
market, or in any other circumstances, to which, having regard to any such
limitations, the registration does not extend.
(3) The right to the use of a trade mark given by registration as
aforesaid shall not be deemed to be infringed by the use of any such mark
as aforesaid by any person-
(a) in relation to goods connected in the course of trade with the
proprietor or a registered user of the trade mark if, as to those goods or
a bulk of which they form part, the proprietor or the registered user
conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or
impliedly consented to the use of the trade mark; or
(b) in relation to goods adapted to form part of, or to be accessory to,
other goods in relation to which the trade mark has been used without
infringement of the right given as aforesaid or might for the time being
be so used, if the use of the mark is reasonably necessary in order to
indicate that the goods are so adapted and neither the purpose nor the
effect of the use of the mark is to indicate otherwise than in accordance
with the fact a connexion in the course of trade between any person and
the goods.
(4) The use of a registered trade mark relating to goods, being one of 2
or more registered trade marks relating to goods which are identical or
nearly resemble each other, in exercise of the right to the use of that
trade mark given by registration as aforesaid, shall not be deemed to be
an infringement of the right so given to the use of any other of those
trade marks. Each registered proprietor of such a trade mark shall
otherwise have the same rights as if he were the sole registered
proprietor thereof. (Amended 44 of 1991 s. 17 & 53)
[cf. 1938 c. 22 s. 4 U. K.]
27A. Right given by registration in Part A in respect of services, and
infringement thereof
(1) Subject to the provisions of subsections (2) to (4), and of sections
33 and 34, the registration, after the commencement of the Trade Marks
(Amendment) Ordinance 1991 (44 of 1991), of a person in Part A of the
register as proprietor of a trade mark (other than a certification trade
mark) in respect of any services shall, if valid, give to that person the
exclusive right to the use of the trade mark in relation to those services
and, without prejudice to the generality of the foregoing words, that
right shall be deemed to be infringed by any person who, not being the
proprietor of the trade mark or a registered user thereof using by way of
the permitted use, uses in connection with the provision of any services a
mark identical with or nearly resembling it in relation to any services in
respect of which it is registered, and in such manner as to render the use
of the mark likely to be taken either-
(a) as being use as a trade mark relating to services; or
(b) in a case in which the use is use at or near the place where the
services are available for acceptance or performed or in an advertising
circular or other advertisement issued to the public, as importing a
reference to some person having the right either as proprietor or as
registered user to use the mark or to services with the provision of which
such a person as aforesaid is connected in the course of business.
(2) The right to the use of a trade mark given by registration as
aforesaid shall be subject to any conditions or limitations entered on the
register, and shall not be deemed to be infringed by the use of any such
mark as aforesaid in any mode, in relation to services for use or
available for acceptance in any place, country or territory, or in any
other circumstances, to which, having regard to any such limitations, the
registration does not extend.
(3) The right to the use of a trade mark given by registration as
aforesaid shall not be deemed to be infringed by the use of any such mark
as a fore-said by any person-
(a) in relation to services to which the proprietor of the mark or a
registered user conforming to the permitted use has applied the mark,
where the purpose and effect of the use of the mark is to indicate, in
accordance with the fact, that those services have been performed by the
proprietor or a registered user of the mark; or
(b) in relation to services the provision of which is connected in the
course of business with the proprietor or a registered user of the mark,
where the proprietor or registered user has at any time expressly or
impliedly consented to the use of the mark; or
(c) in relation to services available for use with other services in
relation to which the mark has been used without infringement of the right
given by registration or might for the time being be so used, if-
(i) the use of the mark is reasonably necessary in order to indicate that
the services are available for such use; and
(ii) neither the purpose nor the effect of the use of the mark is to
indicate otherwise than in accordance with the fact a connection in the
course of business between any person and the provision of those services.
(4) The use of a registered trade mark relating to services, being one of
two or more registered trade marks relating to services that are identical
or nearly resemble each other, in exercise of the right to the use of that
trade mark given by registration as aforesaid, shall not be deemed to be
an infringement of the right so given to the use of any other of those
trade marks. Each registered proprietor of such a trade mark shall
otherwise have the same rights as if he were the sole registered
proprietor of that trade mark.
(Added 44 of 1991 s. 18)
28. Right given by registration in Part B in respect of goods, and
infringement thereof
(1) Except as provided by subsection (2), the registration of a person in
Part B of the register as proprietor of a trade mark in respect of any
goods shall, if valid, give or be deemed to have given to that person the
like right in relation to those goods as if the registration had been in
Part A of the register, and the provisions of section 27 shall have effect
in like manner in relation to a trade mark registered in respect of any
goods in Part B of the register as they have effect in relation to a trade
mark registered in Part A of the register.
(Amended 44 of 1991 s. 19)
(2) In any action for infringement of the right to the use of a trade mark
given by registration as aforesaid in Part B of the register, otherwise
than by an act that is deemed to be an infringement by virtue of section
32, no injunction or other relief shall be granted to the plaintiff if the
defendant establishes to the satisfaction of the Court that the use of
which the plaintiff complains is not likely to deceive or cause confusion
or to be taken as indicating a connexion in the course of trade between
the goods and some person having the right either as proprietor or as
registered user to use the trade mark.
[cf. 1938 c. 22 s. 5 U. K.]
28A. Right given by registration in Part B in respect of services, and
infringement thereof
(1) Except as provided by subsection (2), the registration after the
commencement of the Trade Marks (Amendment) Ordinance 1991 (44 of 1991) of
a person in Part B of the register as proprietor of a trade mark in
respect of any services shall, if valid, give to that person the like
right in relation to those services as if the registration had been in
Part A of the register, and the provisions of section 27A shall have
effect in like manner in relation to a trade mark registered in respect of
services in Part B of the register as they have effect in relation to a
trade mark registered in Part A of the register.
(2) In any action for infringement of the right to the use of a trade mark
given by registration as aforesaid in Part B of the register, no
injunction or other relief shall be granted to the plaintiff if the
defendant establishes to the satisfaction of the Court that the use of
which the plaintiff complains is not likely to deceive or cause confusion
or to be taken as indicating that a person having the right either as
proprietor or as registered user to use the mark is connected in the
course of business with the provision of the services.
(Added 44 of 1991 s. 20)
29. Registration to be prima facie evidence of validity
In all legal proceedings relating to a registered trade mark (including
applications under section 48) the fact that a person is registered as
proprietor of such trade mark shall be prima facie evidence of the
validity of the original registration of such trade mark and of all
subsequent assignments and transmissions thereof.
[cf. 1938 c. 22 s. 46 U. K.]
30. Registration in Part A to be conclusive as to validity after 7 years
(1) In all legal proceedings relating to a trade mark registered in Part A
of the register (including applications under section 48) the original
registration of the trade mark in Part A of the register shall, after the
expiration of 7 years from the date of that registration, be taken to be
valid in all respects, unless-
(a) that registration was obtained by fraud; or
(b) the trade mark offends against the provisions of section 12 (1).
(2) Nothing in section 28 (1) or 28A (1) shall be construed as making
applicable to a trade mark registered in Part B of the register the
provisions of subsection (1) relating to a trade mark registered in Part A
of the register. (Amended 44 of 1991 s. 21) [cf. 1938 c. 22 s. 13 U. K.]
31. Equities in respect of trade marks
Subject to the provisions of this Ordinance, equities in respect of a
trade mark may be enforced in like manner as in respect of any other
personal property. [cf. 1938 c. 22 s. 64 (2) U. K.]
32. Infringement by breach of certain restrictions
(1) Where, by a contract in writing made with the proprietor or a
registered user of a registered trade mark relating to goods, a purchaser
or owner of goods enters into an obligation to the effect that he will not
do, in relation to the goods, an act to which this section applies, any
person who, being the owner for the time being of the goods and having
notice of the obligation, does that act, or authorizes it to be done, in
relation to the goods, in the course of trade or with a view to any
dealing therewith in the course of trade, shall be deemed thereby to
infringe the right to the use of the trade mark given by the registration
thereof, unless that person became the owner of the goods by purchase for
money or money's worth in good faith before receiving notice of the
obligation or by virtue of a title derived through another who so became
the owner thereof. (Amended 44 of 1991 s. 53)
(2) The acts to which this section applies are-
(a) the application of the trade mark upon the goods after they have
suffered alteration in any manner specified in the contract as respects
their state or condition, get-up or packing;
(b) in a case in which the trade mark is upon the goods, the alteration,
part removal or part obliteration thereof;
(c) in a case in which the trade mark is upon the goods, and there is also
there on other matter, being matter indicating a connexion in the course
of trade between the proprietor or registered user and the goods, the
removal or obliteration, whether wholly or partly, of the trade mark
unless that other matter is wholly removed or obliterated;
(d) in a case in which the trade mark is upon the goods, the application
of any other trade mark to the goods;
(e) in a case in which the trade mark is upon the goods, the addition to
the goods of any other matter in writing that is likely to injure the
reputation of the trade mark.
(3) In this section references in relation to any goods to the proprietor,
to registered user, and to the registration, of a trade mark shall be
construed, respectively, as references to the proprietor in whose name the
trade mark is registered, to a registered user who is registered, and to
the registration of the trade mark, in respect of those goods, and the
expression "upon" includes in elation to any goods a reference to physical
relation thereto.
[cf. 1938 c. 22 s. 6 U. K.]
33. Saving for vested rights
(1) Nothing in this Ordinance shall entitle the proprietor or a registered
aser of a registered trade mark to interfere with or restrain the use by
any person of a trade mark identical with or nearly resembling it in
relation to goods in relation to which that person or a predecessor in
title of his has continuously used that trade mark from a date anterior-
(a) to the use of the first mentioned trade mark in relation to those
goods or services by the proprietor or a predecessor in title of his; or
(b) to the registration of the first-mentioned trade mark in respect of
those goods or services in the name of the proprietor or a predecessor in
title of his, whichever is the earlier, or to object (on such use being
proved) to that person being put on the register for that identical or
nearly resembling trade mark in respect of those goods or services under
section 22. (Amended 44 of 1991 ss. 22 & 52) [cf. 1938 c. 22 s. 7 U. K.]
(2) The references in subsection (1) to the use of a trade mark by a
person's predecessor in title shall, as respects use in relation to
services before the commencement of the Trade Marks (Amendment) Ordinance
1991 (44 of 1991), be construed as references to use by any predecessor of
his in business. (Added 44 of 1991 s. 22)
34. Saving for use of name, address or description of goods or services No
registration of a trade mark shall interfere with-
(a) any bona fide use by a person of his own name or of the name of his
place of business, or of the name, or of the name of the place of
business, of any of his predecessors in business;
(b) the use by any person of any bona fide description of the character or
quality of his goods, not being as description that would be likely to be
taken as importing any such reference as is mentioned in section 27 (1)
(b) or in section 67 (1) (b); or
(c) the use by any person of any bona fide description of the character or
quality of his services, not being a description that would be likely to
be taken as importing any such reference as is mentioned in section 27A
(1) (b) or in section 67A (1)
(b). (Added 44 of 1991 s. 23)
(Amended 44 of 1991 s. 23)
[cf. 1938 c. 22 s. 8 U. K.]
35. No action for infringement of unregistered trade mark
No person shall be entitled to institute any proceeding to prevent, or to
recover damages for, the infringement of an unregistered trade mark. [cf.
1938 c. 22 s. 2 U. K. ]
36. "Passing off" action
Nothing in this Ordinance contained shall be deemed to affect rights of
action against any person for passing off or the remedies in respect
thereof.
(Amended 44 of 1991 s. 24)
[cf. 1938 c. 22 s. 2 U. K.]
USE AND NON-USE OF TRADE MARKS
37. Removal from register and imposition of limitations on ground of non-
use
(1) Subject to the provisions of sections 55 (1), 55A (1) and 57 (1), a
registered trade mark may be taken off the register in respect of any of
the goods or services in respect of which it is registered on application
by any person aggrieved to the Court, or, at the option of the applicant
and subject to the provisions of section 80, to the Registrar, on the
ground either-
(a) that the trade mark was registered without any bona fide intention on
the part of the applicant for registration that it should be used in
relation to those goods or services by him or, if it was registered under
section 18 (1), by the corporation or registered user concerned, and that
there has in fact been no bona fide use of the trade mark in relation to
those goods or services by any proprietor thereof for the time being up to
the date one month before the date of the application; or
(b) that up to the date one month before the date of the application a
continuous period of 5 years or longer elapsed during which the trade mark
was a registered trade mark and during which there was no bona fide use
thereof in relation to those goods or services by any proprietor thereof
for the time being. (Amended 44 of 1991 ss. 25 & 52)
(1A) Subject to subsection (1C), the tribunal may refuse an application
made under subsection (1) (a) or (b) in relation to any goods if it is
shown that there has been, before the relevant date or during the relevant
period, as the case may be, bona fide use of the trade mark by the
proprietor thereof for the time being in relation to-
(a) goods of the same description; or
(b) services associated with those goods or goods of that description,
being goods or, as the case may be, services in respect of which the trade
mark is registered. (Added 44 of 1991 s. 25)
(1B) Subject to subsection (1C), the tribunal may refuse an application
made under subsection (1) (a) or (b) in relation to any services if it is
shown that there has been, before the relevant date or during the relevant
period, as the case may be, bona fide use of the trade mark by the
proprietor thereof for the time being in relation to-
(a) services of the same description; or
(b) goods associated with those services or services of that description,
being services or, as the case may be, goods in respect of which the trade
mark is registered. (Added 44 of 1991 s. 25)
(1C) Subsections (1A) and (1B) do not apply where the applicant has been
permitted under section 22 to register an identical or nearly resembling
trade mark in respect of the goods or services in question or where the
tribunal is of the opinion that he might properly be permitted so to
register such a trade mark. (Added 44 of 1991 s. 25)
(2) Where in relation to any goods in respect of which a trade mark is
registered-
(a) the matters referred to in subsection (1) (b) are shown so far as
regard non- use of the trade mark in relation to goods to be sold, or
otherwise traded in, in Hong Kong (otherwise than for export from Hong
Kong), or in relation to goods to be exported to a particular market
outside Hong Kong; and
(b) a person has been permitted under section 22 to register an identical
or nearly resembling trade mark in respect of those goods under a
registration extending to use in relation to goods to be sold, or
otherwise traded in, in Hong Kong (otherwise than for export from Hong
Kong), or in relation to goods to be exported to that market, or the
tribunal is of opinion that he might properly be permitted so to register
such a trade mark,
on application by that person to the Court or, at the option of the
applicant and subject to the provisions of section 80, to the Registrar,
the tribunal may impose on the registration of the first-mentioned trade
mark such limitations as the tribunal thinks proper for securing that
registration shall cease to extend to such use as last aforesaid. (Amended
44 of 1991 s. 54)
(2A) Where in relation to any services in respect of which a trade mark is
registered-
(a) the matters referred to in subsection (1) (b) are shown so far as
regards non-use of the trade mark in relation to services for use or
available for acceptance in Hong Kong, or for use in a country or
territory outside Hong Kong; and
(b) a person has been permitted under section 22 to register an identical
or nearly resembling trade mark in respect of those services under a
registration extending to use in relation to services for use or available
for acceptance in Hong Kong or for use in that country or territory, or
the tribunal is of opinion that he might properly be permitted so to
register such a trade mark,
on application by that person to the Court or, at the option of the
applicant and subject to section 80, to the Registrar, the tribunal may
impose on the registration of the first-mentioned trade mark such
limitations as the tribunal thinks proper for securing that the
registration shall cease to extend to such use as last aforesaid. (Added
44 of 1991 s. 25)
(3) An applicant shall not be entitled to rely for the purposes of
subsection (1) (b), (2) or (2A) on any non-use of a trade mark-
(a) in relation to particular goods that is shown to have been due to
special circumstances in the trade; or
(b) in relation to particular services that is shown to have been due to
special circumstances affecting the provision of those services, and not
to any intention not to use or to abandon the trade mark in relation to
the goods or services to which the application relates. (Replaced 44 of
1991 s. 25)
[cf. 1938 c. 22 s. 26 U. K.]
38. Use of one of associated trade marks equivalent to use of another
(1) Where under the provisions of this Ordinance use of a registered trade
mark is required to be proved for any purpose, the tribunal may, if and so
far as the tribunal thinks right, accept use of an associated registered
trade mark, or of the trade mark with additions or alterations not
substantially affecting its identity, as an equivalent for the use
required to be proved.
(2) The use of the whole of a registered trade mark shall for the purposes
of this Ordinance be deemed to be also use of any registered trade mark,
being a part thereof, registered in the name of the same proprietor by
virtue of section 25 (1). [cf. 1938 c. 22 s. 30 U. K.]
39. Use of trade mark in relation to exports or to services outside Hong
Kong
(1) The application in Hong Kong of a trade mark to goods to be exported
from Hong Kong, and any other act done in Hong Kong in relation to goods
to be so exported which, if done in relation to goods to be sold or
otherwise traded in within Hong Kong, would constitute use of a trade mark
therein, shall be deemed to constitute use of the trade mark in relation
to those goods for any purpose for which such use is material under this
Ordinance or at common law. (Amended 44 of 1991 s. 54) [cf. 1938 c. 22 s.
31 U. K.]
(1A) Any act done in Hong Kong in relation to services for use outside
Hong Kong which, if done in relation to services provided within Hong Kong
for use there, would constitute use of a trade mark in Hong Kong, shall be
deemed to constitute use of the trade mark in relation to those services
for any purpose for which such use is material under this Ordinance or at
common law. (Added 44 of 1991 s. 26)
(2) Subsection (1) shall be deemed to have effect in relation to an act
done before, as it has effect in relation to an act done after, the
commencement of this Ordinance. [cf. 1938 c. 22 Third Schedule Para. 6 U.
K.]
40. Use of trade mark after change in form of trade connexion
(1) The use of a registered trade mark in relation to goods between which
and the person using it any form of connexion in the course of trade
subsists shall not be deemed to be likely to cause deception or confusion
on the ground only that the trade mark has been, or is, used in relation
to goods between which and that person or a predecessor in title of his a
different form of connexion in the course of trade subsisted or subsists.
(Amended 44 of 1991 s. 27) [cf. 1938 c. 22 s. 62 U. K.]
(2) The use of a registered trade mark in relation to services between the
provision of which and the person using it any form of connection in the
course of business subsists shall not be deemed to be likely to cause
deception or confusion on the ground only that the trade mark has been, or
is, used in relation to services between the provision of which and that
person or a predecessor in title of his a different form of connection in
the course of business subsisted or subsists. (Added 44 of 1991 s. 27)
ASSIGNMENT AND TRANSMISSION
41. Powers of, and restrictions on, assignment and transmission of trade
marks relating to goods
(1) Notwithstanding any rule of law or equity to the contrary, a
registered trade mark relating to goods shall be, and shall be deemed
always to have been, assignable and transmissible either in connexion with
the goodwill of a business or not.
(2) A registered trade mark relating to goods shall be, and shall be
deemed always to have been, assignable and transmissible in respect either
of all the goods in respect of which it is registered, or was registered,
as the case may be, or of some (but not all) of those goods.
(3) The provisions of subsections (1) and (2) shall have effect in the
case of an unregistered trade mark used in relation to any goods as they
have effect in the case of a registered trade mark registered in respect
of any goods, if at the time of the assignment or transmission of the
unregistered trade mark it is or was used in the same business as a
registered trade mark, and if it is or was assigned or transmitted at the
same time and to the same person as that registered trade mark and in
respect of goods all of which are goods in relation to which the
unregistered trade mark is or was used in that business and in respect of
which that registered trade mark is or was assigned or transmitted.
(4) Notwithstanding anything in subsections (1), (2) and (3), a trade mark
shall not be, or be deemed to have been, assignable or transmissible in a
case in which as a result of an assignment or transmission there would in
the circumstances subsist, or have subsisted, whether under the common law
or by registration, exclusive rights in more than one of the persons
concerned to the use, in relation to-
(a) the same goods;
(b) the same description of goods; or
(c) goods and services or descriptions of goods and services which are
associated with each other, of trade marks nearly resembling each other or
of identical trade marks, if, having regard to the similarity of the goods
or the association of the goods and services or descriptions of goods and
services, and to the similarity of the trade marks, the use of the trade
marks in exercise of those rights would be, or have been, likely to
deceive or cause confusion:
Provided that, where a trade mark is, or has been, assigned or transmitted
in such a case as aforesaid, the assignment or transmission shall not be
deemed to be, or to have been, invalid under this subsection if the
exclusive rights subsisting as a result thereof in the persons concerned
respectively are, or were, having regard to limitations imposed thereon,
such as not to be exercisable by two or more of those persons in relation
to goods to be sold, or otherwise traded in, within Hong Kong (otherwise
than for export therefrom), or in relation to goods to be exported to the
same market outside Hong Kong.
(5) The proprietor of a registered trade mark who proposes to assign it in
respect of any goods in respect of which it is registered may submit to
the Registrar in the prescribed manner a statement of case setting out the
circumstances, and the Registrar may issue to him a certificate stating
whether, having regard to the similarity of the goods or the association
of the goods and services or descriptions of goods and services and to the
similarity of the trade marks referred to in the case, the proposed
assignment of the first-mentioned trade mark would or would not be invalid
under subsection (4), and a certificate so issued shall, subject to the
provisions of this section as to appeal and unless it is shown that the
certificate was obtained by fraud or misrepresentation, be conclusive as
to the validity or invalidity under subsection (4) of the assignment in so
far as such validity or invalidity depends upon the facts set out in the
case, but, as regards a certificate in favour of validity, only if
application for the registration under section 43 of the title of the
person becoming entitled is made within 6 months from the date on which
the certificate is issued.
(6) Where an assignment in respect of any goods of a trade mark that is at
the time of the assignment used in a business in those goods is made on or
after the commencement of this Ordinance otherwise than in connexion with
the goodwill of that business, the assignment shall not take effect until
the following requirements have been satisfied, that is to say, the
assignee must, not later than the expiration of 6 months from the date on
which the assignment is made or within such extended period, if any, as
the Registrar may allow, apply to him for directions with respect to the
advertisement of the assignment, and must advertise it in such form and
manner and within such period as the Registrar may direct.
(7) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(Amended 44 of 1991 ss. 28, 53 & 54)
[cf. 1938 c. 22 s. 22 U. K.]
41A. Assignment and transmission of trade marks relating to services
(1) A registered trade mark relating to services shall be assignable and
transmissible either in connection with the goodwill of a business or not.
(2) A registered trade mark relating to services shall be assignable and
transmissible in respect either of all the services in respect of which it
is registered, or of some (but not all) of those services.
(3) The provisions of subsections (1) and (2) shall have effect in the
case of an unregistered trade mark used in relation to any services as
they have effect in the case of a registered trade mark registered in
respect of any services, if at the time of the assignment or transmission
of the unregistered trade mark it is used in the same business as a
registered trade mark, and if it is assigned or transmitted at the same
time and to the same person as that registered trade mark and in respect
of services all of which are services in relation to which the
unregistered trade mark is or was used in that business and in respect of
which that registered trade mark is or was assigned or transmitted.
(4) Notwithstanding anything in subsections (1), (2) and (3), a trade mark
shall not be assignable or transmissible in a case in which as a result of
an assignment or transmission there would in the circumstances subsist,
whether under the common law or by registration, exclusive rights in more
than one of the persons concerned to the use, in relation to-
(a) the same services;
(b) the same description of services; or
(c) services and goods or descriptions of services and goods which are
associated with each other,
of trade marks nearly resembling each other or of identical trade marks,
if, having regard to the similarity of the services or the association of
the goods and services or descriptions of goods and services, and to the
similarity of the trade marks, the use of the trade marks in exercise of
those rights would be likely to deceive or cause confusion:
Provided that, where a trade mark is assigned or transmitted in such a
case, the assignment or transmission shall not be deemed to be invalid
under this subsection if the exclusive rights subsisting as a result
thereof in the persons concerned respectively are, having regard to
limitations imposed on them, such as not to be exercisable by two or more
of those persons in relation to services for use in Hong Kong, in relation
to services for use in the same country or territory outside Hong Kong or
in relation to services available for acceptance in Hong Kong (wherever
they are to be used).
(5) The proprietor of a registered trade mark who proposes to assign it in
respect of any of the services in respect of which it is registered may
submit to the Registrar in the prescribed manner a statement of case
setting out the circumstances, and the Registrar may issue to him a
certificate stating whether, having regard to the similarity of the
services or the association of the services and goods or descriptions of
services and goods and to the similarity of the trade marks referred to in
the case, the proposed assignment of the first-mentioned trade mark would
or would not be invalid under subsection (4), and a certificate so issued
shall, subject to the provisions of this section as to appeal and unless
it is shown that the certificate was obtained by fraud or
misrepresentation, be conclusive as to the validity or invalidity under
subsection (4) of the assignment in so far as such validity or invalidity
depends upon the facts set out in the case, but, as regards a certificate
in favour of validity, only if application for the registration under
section 43 of the title of the person becoming entitled is made within 6
months from the date on which the certificate is issued.
(6) Where an assignment in respect of any services of a trade mark that is
at the time of the assignment used in a business of providing those
services is made otherwise than in connection with the goodwill of that
business, the assignment shall not take effect until the following
requirements have been satisfied, that is to say, the assignee must, not
later than the expiration of 6 months from the date on which the
assignment is made or within such extended period, if any, as the
Registrar may allow, apply to him for directions with respect to the
advertisement of the assignment, and must advertise it in such form and
manner and within such period as the Registrar may direct.
(7) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(Added 44 of 1991 s. 29)
42. Power of registered proprietor to assign, and give receipts
Subject to the provisions of this Ordinance, the person for the time being
entered in the register as proprietor of a trade mark shall, subject to
any rights appearing from the register to be vested in any other person,
have power to assign the trade mark, and to give effectual receipts for
any consideration for an assignment.
[cf. 1938 c. 22 s. 24 U. K.]
43. Registration of assignments and transmissions
(1) Where a person becomes entitled by assignment or transmission to a
registered trade mark, he shall make application to the Registrar to
register his title, and the Registrar shall, on receipt of such
application and on proof of title to his satisfaction, register him as the
proprietor of the trade mark in respect of the goods or services in
respect of which the assignment or transmission has effect, and shall
cause particulars of the assignment or transmission to be entered on the
register. (Amended 44 of 1991 s. 52)
(2) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(3) Except for the purposes of an appeal under this section or of an
application under section 48, a document or instrument in respect of which
no entry has been made in the register in accordance with the provisions
of subsection (1) shall not be admitted in evidence in any Court in proof
of the title to a trade mark unless the Court otherwise directs.
[cf. 1938 c. 22 s. 25 U. K.]
44. Assignments and transmissions of associated trade marks
Trade marks that are registered as, or that are deemed by virtue of this
Ordinance to be, associated trade marks shall be assignable and
transmissible only as a whole and not separately, but they shall for all
other purposes be deemed to have been registered as separate trade marks.
[cf. 1938 c. 22 s. 23 (1) U. K.]
RENEWAL OF REGISTRATION
45. Renewal of registration
The Registrar shall, on application made by the registered proprietor of a
trade mark in the prescribed manner and within the prescribed period,
renew the registration of such trade mark for a period of 14 years from
the date of expiration of the original registration as stated in section
17 (2) or of the last renewal of registration, as the case may be, which
date is hereinafter referred to as "the expiration of the last
registration".
[cf. 1938 c. 22 s. 20 (2) U. K.]
46. Procedure on expiry of period of registration
At the prescribed time before the expiration of the last registration of a
trade mark, the Registrar shall send notice in the prescribed manner to
the registered proprietor of the date at which the existing registration
will expire and the conditions as to payment of fees and otherwise upon
which a renewal of registration may be obtained, and, if at the expiration
of the time prescribed in that behalf those conditions have not been duly
complied with, the Registrar may remove such trade mark from the register,
subject to such conditions, if any, as to its restoration to the register
as may be prescribed. [cf. 1938 c. 22 s. 20 (3) U. K.]
47. Status of unrenewed trade mark
Where a trade mark has been removed from the register for non-payment of
the fee for renewal, it shall, nevertheless, for the purpose of any
application for registration of a trade mark during one year next after
the date of such removal, be deemed to be a trade mark that is already on
the register:
Provided that the foregoing provisions of this section shall not have
effect when the Registrar is satisfied either-
(a) that, in the case of a trade mark that was before removal registered
in respect of goods, there has been no bona fide trade use of the trade
mark during the 2 years immediately preceding its removal; or (Replaced 44
of 1991 s. 30)
(b) that, in the case of a trade mark that was before removal registered
in respect of services, there has been no bona fide business use of the
trade mark during the 2 years immediately preceding its removal; or
(Replaced 44 of 1991 s. 30)
(c) that no deception or confusion would be likely to arise from the use
of the trade mark that is the subject of the application for registration
by reason of any previous use of the trade mark that has been removed.
(Added 44 of 1991 s. 30) [cf. 1938 c. 22 s. 20 (4) U. K.]
RECTIFICATION AND CORRECTION OF REGISTER
48. General power to rectify entries in register
(1) Subject to the provisions of this Ordinance-
(a) any person aggrieved by the non-insertion in or omission from the
register of any entry, or by any entry made in the register without
sufficient cause, or by any entry wrongly remaining on the register, or by
any error or defect in any entry in the register, may apply in the
prescribed manner to the Court or, at the option of the applicant and
subject to the provisions of section 80, to the Registrar, and the
tribunal may make such order for making, expunging or varying the entry as
the tribunal may think fit;
(b) the tribunal may in any proceeding under this section decide any
question that it may be necessary or expedient to decide in connexion with
the rectification of the register;
(c) in case of fraud in the registration, assignment or transmission of a
registered trade mark, the Registrar may himself apply to the Court under
the provisions of this section;
(d) any order of the Court rectifying the register shall direct that
notice of the rectification shall be served in the prescribed manner on
the Registrar, and the Registrar shall on receipt of the notice rectify
the register accordingly.
(2) The power to rectify the register conferred by this section shall
include power to remove a registration in Part A of the register to Part
B.
[cf. 1938 c. 22 s. 32 U. K.]
49. Power to expunge or vary registration for breach of condition
On application by any person aggrieved to the Court, or, at the option of
the applicant and subject to the provisions of section 80, to the
Registrar, or on application by the Registrar to the Court, the tribunal
may make such order as the tribunal may think fit for expunging or varying
the registration of a trade mark on the ground of any contravention of, or
failure to observe, a condition entered on the register in relation
thereto.
[cf. 1938 c. 22 s. 33 U. K.]
50. Correction of register
(1) The Registrar may, on request made in the prescribed manner by the
registered proprietor-
(a) correct any error in the name and address of the registered proprietor
of a trade mark; or
(b) enter any change in the name and address of the person who is
registered as proprietor of a trade mark; or
(c) cancel the entry of a trade mark on the register; or
(d) strike out any goods or services or classes of goods or services from
those in respect of which a trade mark is registered; or (Amended 44 of
1991 s. 52)
(e) enter a disclaimer or memorandum relating to a trade mark which does
not in any way extend the rights given by the existing registration of
such trade mark.
(2) The Registrar may, on request made in the prescribed manner by a
registered user of a trade mark, correct any error, or enter any change,
in the name and address of the registered user.
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(Amended 44 of 1991 s. 31)
[cf. 1938 c. 22 s. 34 U. K.]
51. Alteration of registered trade mark
(1) The registered proprietor of a trade mark may apply in the prescribed
manner to the Registrar for leave to add to or alter the trade mark in any
manner not substantially affecting the identity thereof, and the Registrar
may refuse such leave or may grant it on such terms and subject to such
limitations as he may think fit.
(2) The Registrar may cause an application under this section to be
advertised in the prescribed manner in any case where it appears to him
that it is expedient so to do, and where he does so, if within the
prescribed time from the date of the advertisement any person gives notice
to the Registrar in the prescribed manner of opposition to the
application, the Registrar shall, after hearing the parties if so
required, decide the matter.
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(4) Where leave as aforesaid is granted, the trade mark as altered shall
be advertised in the prescribed manner, unless it has already been
advertised, in the form to which it has been altered, in an advertisement
under subsection (2).
[cf. 1938 c. 22 s. 35 U. K.]
52. Words used as name or description of an article or substance
(1) The registration of a trade mark relating to goods shall not be deemed
to have become invalid by reason only of any use, after the date of the
registration, of a word or words which the trade mark contains, or of
which it consists, as the name or description of an article or substance:
(Amended 44 of 1991 s. 53) Provided that, if it is proved either-
(a) that there is a well-known and established use of the word or words as
the name or description of the article or substance by a person or persons
carrying on a trade therein, not being use in relation to goods connected
in the course of trade with the proprietor or a registered user of the
trade mark or (in the case of a certification trade mark) goods certified
by the proprietor; or
(b) that the article or substance was formerly manufactured under a
patent, that a period of 2 years or more after the cesser of the patent
has elapsed, and that the word or words is or are the only practicable
name or description of the article or substance, the provisions of
subsection (2) shall have effect.
(2) Where the facts mentioned in paragraph (a) or (b) of the proviso to
subsection (1) are proved with respect to any word or words, then-
(a) if the trade mark consists solely of that word or those words, the
registration of the trade mark, so far as regards registration in respect
of the article or substance in question or of any goods of the same
description, shall be deemed for the purposes of section 48 to be an entry
wrongly remaining on the register;
(b) if the trade mark contains that word or those words and other matter,
the Court or the Registrar, in deciding whether the trade mark shall
remain on the register, so far as regards registration in respect of the
article or substance in question and of any goods of the same description,
may, in case of a decision in favour of its remaining on the register,
require as a condition thereof that the proprietor shall disclaim any
right to the exclusive use in relation to that article or substance and
any goods of the same description of that word or those words, so,
however, that no disclaimer on the register shall affect any rights of the
proprietor of a trade mark except such as arise out of the registration of
the trade mark in respect of which the disclaimer is made; and
(c) for the purposes of any other legal proceedings relating to the trade
mark-
(i) if the trade mark consists solely of that word or those words, all
rights of the proprietor, whether under the common law or by registration,
to the exclusive use of the trade mark in relation to the article or
substance in question or to any goods of the same description; or (Amended
44 of 1991 s. 32)
(ii) if the trade mark contains that word or those words and other matter,
all such rights of the proprietor to the exclusive use of that word or
those words in such relation as aforesaid,
shall be deemed to have ceased on the date at which the use mentioned in
paragraph (a) of the proviso to subsection (1) first became well-known and
established, or at the expiration of 2 years mentioned in paragraph (b) of
that proviso.
[cf. 1938 c. 22 s. 15 (1) & (2) U. K.]
52A. Words used as name or description of an activity
(1) The registration of a trade mark relating to services shall not be
deemed to have become invalid by reason only of any use, after the date of
registration, of a word or words which the trade mark contains, or of
which it consists, as the name or description of some activity:
Provided that, if it is proved that there is a well-known and established
use of the word or words as the name or description of some activity by a
person or persons providing services which include that activity, not
being use in relation to services with the provision of which the
proprietor or a registered user of the trade mark is connected in the
course of business, the provisions of subsection (2) shall have effect.
(2) Where the facts mentioned in the proviso to subsection (1) are proved
with respect to any word or words, then-
(a) if the trade mark consists solely of that word or those words, the
registration of the trade mark, so far as regards registration in respect
of the activity in question, shall be deemed for the purposes of section
48 to be an entry wrongly remaining on the register;
(b) if the trade mark contains that word or those words and other matter,
the Court or the Registrar, in deciding whether the trade mark shall
remain on the register, so far as regards registration in respect of the
activity in question, may, in case of a decision in favour of its
remaining on the register, require as a condition thereof that the
proprietor shall disclaim any right to the exclusive use in relation to
that activity of that word or those words, so, however, that no disclaimer
on the register shall affect any rights of the proprietor of a trade mark
except such as arise out of the registration of the trade mark in respect
of which the disclaimer is made; and
(c) for the purposes of any other legal proceedings relating to the trade
mark-
(i) if the trade mark consists solely of that word or those words, all
rights of the proprietor, whether under the common law or by registration,
to the exclusive use of the trade mark in relation to the activity in
question; or
(ii) if the trade mark contains that word or those words and other matter,
all such rights of the proprietor to the exclusive use of that word or
those words in such relation as aforesaid, shall be deemed to have ceased
on the date at which the use mentioned in the proviso to subsection (1)
first became well-known and established. (Added 44 of 1991 s. 33)
53. Removal of trade mark from register on proof of prior registration in
country of origin
(1) Subject to subsection (3), the Court may, on application in writing
within 7 years from the registration in Hong Kong of a trade mark relating
to goods by any person aggrieved by such registration, remove such trade
mark from the register if it is proved to the satisfaction of the Court
that such trade mark is identical with or nearly resembles a trade mark
which was, prior to the registration in Hong Kong of the first-mentioned
trade mark, registered in respect of-
(a) the same goods;
(b) the same description of goods; or
(c) services or a description of services which are associated with those
goods or goods of that description,
in a country or place from which such goods originate.
(2) Subject to subsection (3), the Court may, on application in writing
made within 7 years from the registration in Hong Kong of a trade mark
relating to services by any person aggrieved by such registration, remove
such trade mark from the register if it is proved to the satisfaction of
the Court that such trade mark is identical with or nearly resembles a
trade mark which was, prior to the registration in Hong Kong of the first-
mentioned trade mark, registered in respect of-
(a) the same services;
(b) the same description of services; or
(c) goods or a description of goods which are associated with those
services or services of that description,
in a country or place from which such services originate.
(3) No trade mark shall be removed from the register under this section in
the following cases-
(a) if the proprietor of the other trade mark consented to the
registration in Hong Kong of the first-mentioned trade mark; or
(b) if the proprietor of the trade mark registered in Hong Kong proves
that he or his predecessors in business have continuously used such trade
mark in Hong Kong in connection with such goods or services (as the case
may be) from a date anterior to the date of the registration of the other
trade mark in the country or place of origin; or
(c) if the applicant does not prove-
(i) that within the 5 years immediately preceding the making of the
application under this section there has been bona fide user in connection
with such goods or services (as the case may be) in Hong Kong of the trade
mark registered in the country or place of origin; or
(ii) that the special circumstances of the trade or affecting the
provision of such services (as the case may be) account for the non-user
of such trade mark in Hong Kong within the same period; or
(iii) that the trade mark so registered in the country or place of origin
was first registered there within the like period of 5 years,
and does not give an undertaking to the satisfaction of the Registrar that
he will within 3 months from the making of the application under this
section apply for registration in Hong Kong of the trade mark so
registered in the country or place of origin, and will take all necessary
steps to complete the registration. (Replaced 44 of 1991 s. 34)
54. Adaptation of entries in register to amended or substituted
classification of goods
(1) The Governor in Council may from time to time make such rules,
prescribe such forms and generally do such things as he thinks expedient,
for empowering the Registrar to amend the register, whether by making or
expunging or varying entries therein, so far as may be requisite for the
purpose of adapting the designation therein of the goods or services or
classes of goods or services in respect of which trade marks are
registered to any amended or substituted classification that may be
prescribed. (Amended 44 of 1991 s. 52)
(2) The Registrar shall not, in exercise of any power conferred on him for
the purpose aforesaid, make any amendment of the register that would have
the effect of adding any goods or services or classes of goods or services
to those in respect of which a trade mark is registered (whether in one or
more classes) immediately before the amendment is to be made, or of
antedating the registration of a trade mark in respect of any goods or
services:
Provided that this subsection shall not have effect in relation to goods
or services as to which the Registrar is satisfied that compliance with
this subsection in relation thereto would involve undue complexity and
that the addition or antedating, as the case may be, would not affect any
substantial quantity of goods or services and would not substantially
prejudice the rights of any person. (Amended 44 of 1991 s. 52)
(3) A proposal for the amendment of the register for the purpose aforesaid
shall be notified to the registered proprietor of the trade mark affected,
shall be subject to appeal by the registered proprietor to the Court,
shall be advertised with any modifications, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed
amendment contravenes the provisions of subsection (2) The decision of the
Registrar on any such opposition shall be subject to appeal to the Court.
[cf. 1938 c. 22 s. 36 U. K.]
DEFENSIVE TRADE MARKS
55. Defensive registration of trade marks relating to goods
(1) Where a trade mark relating to goods and consisting of an invented
word or invented words, or a device or devices, or a combination of them,
has become so exceptionally well known as respects any goods in respect of
which it is registered and in relation to which it has been used that the
use thereof in relation to other goods or to services, or both, would be
likely to detract from its distinctive character in respect of the first-
mentioned goods, then, notwithstanding-
(a) that such use would not be likely to be taken as indicating a
connection in the course of trade between those other goods or those
services, or both, as the case may be, and a person entitled to use the
trade mark in relation to the first-mentioned goods; and
(b) that the proprietor registered in respect of the first-mentioned goods
does not use or propose to use the trade mark in relation to those other
goods or those services, or both, as the case may be,
and notwithstanding anything in section 37, the trade mark may, on the
application in the prescribed manner of the proprietor registered in
respect of the first-mentioned goods, be registered in his name in respect
of those other goods or those services, or both, as the case may be, as a
defensive trade mark and, while so registered, shall not be liable to be
taken off the register in respect of those other goods or those services,
or both, as the case may be, under section 37. (Replaced 44 of 1991 s. 35)
(1A) In determining whether a trade mark relating to goods is
exceptionally well known and whether its use in relation to other goods or
to services, or both, would be likely to detract from its distinctive
character in respect of the goods for which it is registered, the tribunal
shall have regard to all related circumstances, including the length of
time the trade mark has been in use, the extent to which it has become
well known in relation to the goods in respect of which it is registered,
the nature of those goods, and whether the notoriety of the mark is
limited because of its use on goods that are not of wide distribution.
(Added 44 of 1991 s. 35)
(2) The registered proprietor of a trade mark relating to goods may apply
for the registration thereof in respect of any goods as a defensive trade
mark notwithstanding that it is already registered in his name in respect
of those goods otherwise than as a defensive trade mark, or may apply for
the registration thereof in respect of any goods otherwise than as a
defensive trade mark notwithstanding that it is already registered in his
name in respect of those goods as a defensive trade mark, in lieu in each
case of the existing registration. (Amended 44 of 1991 s. 53)
(3) Except as otherwise expressly provided in this section and in sections
56 and 57, the provisions of this Ordinance shall apply in respect of the
registration of trade marks relating to goods as defensive trade marks and
of trade marks so registered as they apply in other cases. (Amended 44 of
1991 s. 35)
[cf. 1938 c. 22 s. 27 (1), (2) & (6) U. K.]
55A. Defensive registration of trade marks relating to services
(1) Where a trade mark relating to services and consisting of an invented
word or invented words, or a device or devices, or a combination of them,
has become so exceptionally well known as respects any services in respect
of which it is registered and in relation to which it has been used that
the use thereof in relation to other services or to goods, or both, would
be likely to detract from its distinctive character in respect of the
first-mentioned services, then, notwithstanding-
(a) that such use would not be likely to be taken as indicating a
connection in the course of business between the provision of those other
services or those goods, or both, as the case may be, and a person
entitled to use the trade mark in relation to the first-mentioned
services; and
(b) that the proprietor registered in respect of the first-mentioned
services does not use or propose to use the trade mark in relation to
those other services or those goods, or both, as the case may be,
and notwithstanding anything in section 37, the trade mark may, on the
application in the prescribed manner of the proprietor registered in
respect of the first-mentioned services, be registered in his name in
respect of those other services or those goods, or both, as the case may
be, as a defensive trade mark and, while so registered, shall not be
liable to be taken off the register in respect of those other services or
those goods, or both, as the case may be, under section 37.
(2) In determining whether a trade mark relating to services is
exceptionally well known and whether its use in relation to other services
or to goods, or both, would be likely to detract from its distinctive
character in respect of the services for which it is registered, the
tribunal shall have regard to all related circumstances, including the
length of time the trade mark has been in use, the extent to which it has
become well known in relation to the services in respect of which it is
registered, the nature of those services, and whether the notoriety of the
mark is limited because of its use in relation to services that are not
widely available.
(3) The registered proprietor of a trade mark relating to services may
apply for the registration thereof in respect of any services as a
defensive trade mark notwithstanding that it is already registered in his
name in respect of those services otherwise than as a defensive trade
mark, or may apply for the registration thereof in respect of any services
otherwise than as a defensive trade mark notwithstanding that it is
already registered in his name in respect of those services as a defensive
trade mark, in lieu in each case of the existing registration.
(4) Except as otherwise expressly provided in this section and sections 56
and 57, this Ordinance applies in respect of the registration of trade
marks relating to services as defensive trade marks and of trade marks so
registered as they apply in other cases. (Added 44 of 1991 s. 36)
56. Defensive trade marks to be registered as associated trade marks
A trade mark registered as a defensive trade mark and that trade mark as
otherwise registered in the name of the same proprietor shall,
notwithstanding that the respective registrations are in respect of
different goods or services, be deemed to be, and shall be registered as,
associated trade marks.
(Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 27 (3) U. K.]
57. Removal of defensive trade marks from the register
(1) On application by any person aggrieved to the Court or, at the option
of the applicant and subject to section 80, to the Registrar-
(a) the registration under section 55 (1) of a trade mark as a defensive
trade mark may be cancelled-
(i) on the ground that the requirements of section 55 (1) are no longer
satisfied in respect of any goods in respect of which the trade mark is
registered in the name of the same proprietor otherwise than as a
defensive trade mark; or
(ii) as respects any goods or services in respect of which it is
registered as a defensive trade mark on the ground that there is no longer
any likelihood that the use of the trade mark in relation to those goods
or services would detract from its distinctive character in respect of the
goods first-mentioned in section 55 (1);
(b) the registration under section 55A (1) of a trade mark as a defensive
trade mark may be cancelled-
(i) on the ground that the requirements of section 55A (1) are no longer
satisfied in respect of any services in respect of which the trade mark is
registered in the name of the same proprietor otherwise than as a
defensive trade mark; or
(ii) as respects any services or goods in respect of which it is
registered as a defensive trade mark on the ground that there is no longer
any likelihood that the use of the trade mark in relation to those
services or goods would detract from its distinctive character in respect
of the services first-mentioned in section 55A (1).
(2) The Registrar may at any time cancel the registration as a defensive
trade mark in respect of goods or services, or both, of a trade mark of
which there is no longer any registration either in respect of goods or
services in the name of the same proprietor otherwise than as a defensive
trade mark.
(Replaced 44 of 1991 s. 37)
REGISTERED USERS
58. Registration as a registered user. Meaning of "permitted use"
(1) (a) Subject to the provisions of this section and sections 59 to 63, a
person other than the proprietor of a trade mark may be registered as a
registered user thereof in respect of all or any of the goods or services
in respect of which it is registered (otherwise than as a defensive trade
mark) and either with or without conditions or restrictions. (Amended 44
of 1991 s. 52)
(b) The use of a trade mark by a registered user of the trade mark in
relation to-
(i) goods with which he is connected in the course of trade; or
(ii) services with the provision of which he is connected in the course of
business, and in respect of which for the time being the trade mark
remains registered and he is registered as a registered user, being use
such as to comply with any conditions or restrictions to which his
registration is subject, is in this Ordinance referred to as the
"permitted use" of the trade mark. (Replaced 44 of 1991 s. 38)
(2) (a) The permitted use of a trade mark shall be deemed to be use by the
proprietor thereof, and shall be deemed not to be use by a person other
than the proprietor, for the purposes of section 37 and for any other
purpose for which such use is material under this Ordinance or at common
law.
(b) Where a person is registered as a registered user of a trade mark
relating to goods on an application made within one year from the
commencement of this Ordinance, this subsection shall have effect in
relation to any previous use (whether before or after the commencement of
this Ordinance) of the trade mark by that person, being use in relation to
the goods in respect of which he is registered and, where he is registered
subject to conditions or restrictions, being use such as to comply
substantially therewith, as if such previous use had been permitted use.
(Amended 44 of 1991 s. 53)
(3) Where it is proposed that a person should be registered as a
registered user of a trade mark, the proprietor and the proposed
registered user must apply in writing to the Registrar in the prescribed
manner, and must furnish him with a statutory declaration made by the
proprietor, or by some person authorized to act on his behalf and approved
by the Registrar-
(a) giving particulars of the relationship, existing or proposed, between
the proprietor and the proposed registered user, including particulars
showing the degree of control by the proprietor over the permitted use
which their relationship will confer and whether it is a term of their
relationship that the proposed registered user shall be the sole
registered user or that there shall be any other restriction as to persons
for whose registration as registered users application may be made;
(b) stating the goods or services in respect of which registration is
proposed;
(c) stating any conditions or restrictions proposed with respect to the
characteristics of the goods or services, to the mode or place of
permitted use, or to any other matter; and
(d) stating whether the permitted use is to be for a period or without
limit of period, and, if for a period, the duration thereof,
and with such further documents, information or evidence as may be
required under the rules or by the Registrar. (Amended 44 of 1991 s. 52)
(4) When the requirements of subsection (3) have been complied with, if
the Registrar, after considering the information furnished to him under
that subsection, is satisfied that in all the circumstances the use of the
trade mark in relation to the proposed goods or services or any of them by
the proposed registered user subject to any conditions or restrictions
which the Registrar thinks proper would not be contrary to the public
interest, the Registrar may register the proposed registered user as a
registered user in respect of the goods or services as to which he is so
satisfied subject as aforesaid. (Amended 44 of 1991 s. 52)
(5) The Registrar shall refuse an application under the provisions of
subsections (1) to (3) if it appears to him that the grant thereof would
tend to facilitate trafficking in a trade mark.
(6) The Registrar shall, if so required by an applicant, take steps for
securing that information given for the purposes of an application under
the provisions of subsections (1) to (3) (other than matter entered in the
register) is not disclosed-
(a) in the case of an application for registration in respect of goods, to
rivals in the trade; or
(b) in the case of an application for registration in respect of services,
to rivals in the business. (Amended 44 of 1991 s. 38)
[cf. 1938 c. 22 s. 28 (1), (2), (4) - (7) U. K.]
59. Proceedings for infringement
(1) Subject to any agreement subsisting between the parties, a registered
user of a trade mark shall be entitled to call upon the proprietor thereof
to take proceedings to prevent infringement thereof, and, if the
proprietor refuses or neglects to do so within 2 months after being so
called upon, the registered user may institute proceedings for
infringement in his own name as if he were the proprietor, making the
proprietor a defendant.
(2) A proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.
[cf. 1938 c. 22 s. 28 (3) U. K.]
60. Variation or cancellation of registration as a registered user
(1) Without prejudice to the provisions of section 48, the registration of
a person as a registered user-
(a) may be varied by the Registrar as regards the goods or services in
respect of which, or any conditions or restrictions subject to which, it
has effect, on the application in writing in the prescribed manner of the
registered proprietor of the trade mark to which the registration relates;
(Amended 44 of 1991 s. 52)
(b) may be cancelled by the Registrar on the application in writing in the
prescribed manner of the registered proprietor or of the registered user
or of any other registered user of the trade mark; or
(c) may be cancelled by the Registrar on the application in writing in the
prescribed manner of any person on any of the following grounds, that is
to say-
(i) that the registered user has used the trade mark otherwise than by way
of the permitted use, or in such a way as to cause, or to be likely to
cause, deception or confusion;
(ii) that the proprietor or the registered user misrepresented, or failed
to disclose, some fact material to the application for the registration,
or that the circumstances have materially changed since the date of the
registration; or
(iii) that the registration ought not to have been effected having regard
to rights vested in the applicant by virtue of a contract in the
performance of which he is interested.
(2) The Registrar may at any time cancel the registration of a person as a
registered user of a trade mark in respect of any goods or services in
respect of which the trade mark is no longer registered. (Amended 44 of
1991 s. 52)
[cf. 1938 c. 22 s. 28 (8) & (10) U. K.]
61. Notification of registration as registered user and of application for
variation or cancellation of such registration
Provision shall be made by the rules for the notification of the
registration of a person as a registered user to any other registered user
of the trade mark, and for the notification of an application under
section 60 to the registered proprietor and each registered user (not
being the applicant) of the trade mark, and for giving to the applicant on
such an application, and to all persons to whom such an application is
notified and who intervene in the proceedings in accordance with the
rules, an opportunity of being heard.
[cf. 1938 c. 22 s. 28 (9) U. K.]
62. Registrar's decision subject to appeal to Court
Any decision of the Registrar under sections 58 and 60 shall be subject to
appeal to the Court.
[cf. 1938 c. 22 s. 28 (11) U. K.]
63. Right to use not assignable or transmissible
Nothing in sections 58, 59 and 60 shall confer on a registered user of a
trade mark any assignable or transmissible right to the use thereof. [cf.
1938 c. 22 s. 28 (12) U. K.]
CERTIFICATION TRADE MARKS
64. Marks registrable as certification trade marks
(1) A mark adapted in relation to any goods to distinguish in the course
of trade goods certified by any person in respect of origin, material,
mode of manufacture, quality, accuracy or other characteristic, from goods
not so certified shall be registrable as a certification trade mark in
Part A of the register in respect of those goods in the name, as
proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person
who carries on a trade in goods of the kind certified.
(1A) A mark adapted in relation to any services to distinguish in the
course of business services certified by any person in respect of quality,
accuracy or other characteristic, from services not so certified, shall be
registrable as a certification trade mark in Part A of the register in
respect of those services in the name, as proprietor of the certification
trade mark, of that person:
Provided that a mark shall not be so registrable in the name of a person
who is connected in the course of business with the provision of services
of the kind certified. (Added 44 of 1991 s. 39)
(2) In determining whether a mark is adapted to distinguish as aforesaid,
the tribunal may have regard to the extent to which-
(a) the mark is inherently adapted to distinguish as aforesaid in relation
to the goods or services in question; and
(b) by reason of the use of the mark or of any other circumstances, the
mark is in fact adapted to distinguish as aforesaid in relation to the
goods or services in question. (Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 37 (1) & (2) U. K.]
65. Application for registration as certification trade mark
(1) An application for the registration of a mark under section 64 shall
be made to the Registrar in writing in the prescribed manner by the person
proposed to be registered as the proprietor thereof.
(2) The provisions of section 13 (2) and of section 13 (4) to (7) shall
have effect in relation to an application under this section as they have
effect in relation to an application under section 13 (1).
(3) In dealing under the said provisions with an application under this
section the tribunal shall have regard to the like considerations, so far
as relevant, as if the application were an application under section 13
and to any other considerations relevant to applications under this
section, including the desirability of securing that a certification trade
mark shall comprise some indication that it is such a trade mark.
(4) An applicant for the registration of a mark under this section shall
transmit to the Registrar draft regulations for governing the use thereof,
which shall include provisions as to the cases in which the proprietor is
to certify goods or services and to authorize the use of the trade mark,
and may contain any other provisions that the Registrar may require or
permit to be inserted therein (including provisions conferring a right of
appeal to the Registrar against any refusal of the proprietor to certify
goods or services or to authorize the use of the trade mark in accordance
with the regulations). The regulations, if approved, shall be deposited
with the Registrar and shall be open to inspection in like manner as the
register.
(Amended 44 of 1991 ss. 40 & 52)
[cf. 1938 c. 22 s. 37 (7) U. K.]
(5) The Registrar shall consider the application with regard to the
following matters-
(a) whether the applicant is competent to certify the goods or services in
respect of which the mark is to be registered;
(Amended 44 of 1991 s. 52)
(b) whether the draft regulations are satisfactory; and
(c) whether in all the circumstances the registration applied for would be
to the public advantage;
and may either-
(i) refuse to accept the application; or
(ii) accept the application, and approve the regulations, either without
modification and unconditionally or subject to any conditions or
limitations, or to any amendments or modifications of the application or
of the regulations, which he may think requisite having regard to any of
the matters aforesaid;
but, except in the case of acceptance and approval without modification
and unconditionally, the Registrar shall not decide the matter without
giving to the applicant an opportunity of being heard:
Provided that the Registrar may, at the request of the applicant, consider
the application with regard to any of the matters aforesaid before the
application has been accepted, so however that the Registrar shall be at
liberty to reconsider any matter on which he has given a decision under
this proviso if any amendment or modification is thereafter made in the
application or in the draft regulations.
(6) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
[cf. 1938 c. 22 First Schedule Para. 1 U. K.]
66. Advertisement of application. Opposition to registration
(1) When an application for the registration of a certification trade mark
has been accepted, whether absolutely or subject to conditions and
limitations, the Registrar shall require the applicant to advertise it, as
accepted, in the prescribed manner, and the provisions of section 15 shall
have effect in relation to the registration of the mark as if the
application had been an application under section 13:
Provided that, in deciding under the said provisions, the Registrar shall
have regard only to the considerations referred to in section 65 (3), and
a decision under the said provisions in favour of the applicant shall be
conditional on the determination in his favour by the Registrar under
subsection (2) of any opposition relating to any of the matters referred
to in section 65 (5).
(2) When notice of opposition is given relating to any of the matters
referred to in section 65 (5), the Registrar shall, after hearing the
parties, if so required, and considering any evidence, decide whether, and
subject to what conditions and limitations, or amendments or modifications
of the application or of the regulations, if any, registration is, having
regard to those matters, to be permitted. [cf. 1938 c. 22 First Schedule
Para. 2 U. K.]
67. Right given by registration in respect of goods, and infringement
thereof
(1) Subject to the provisions of subsections (2) to (4) hereof, and of
sections 33 and 34, the registration of a person as proprietor of a
certification trade mark in respect of any goods, shall, if valid, give to
that person the exclusive right to the use of the trade mark in relation
to those goods, and, without prejudice to the generality of the foregoing
words, that right shall be deemed to be infringed by any person who, not
being the proprietor of the trade mark or a person authorized by him under
the regulations in that behalf using it in accordance therewith, uses in
the course of trade, a mark identical with it or nearly resembling it, in
relation to any goods in respect of which it is registered, and in such
manner as to render the use of the mark likely to be taken either-
(Amended 44 of 1991 s. 41)
(a) as being use as a trade mark relating to goods; or (Amended 44 of 1991
s. 53)
(b) in a case in which the use is use upon the goods or in physical
relation thereto or in an advertising circular or other advertisement
issued to the public, as importing a reference to some person having the
right either as proprietor or by his authorization under the relevant
regulations to use the trade mark or to goods certified by the proprietor.
(2) The right to the use of a certification trade mark given by
registration as aforesaid shall be subject to any conditions or
limitations entered on the register, and shall not be deemed to be
infringed by the use of any such mark as aforesaid in any mode, in
relation to goods to be sold or otherwise traded in in any place, in
relation to goods to be exported to any market, or in any other
circumstances, to which, having regard to any such limitations, the
registration does not extend.
(3) The right to the use of a certification trade mark given by
registration as aforesaid shall not be deemed to be infringed by the use
of any such mark as aforesaid by any person-
(a) in relation to goods certified by the proprietor of the trade mark if,
as to those goods or a bulk of which they form part, the proprietor or
another in accordance with his authorization under the relevant
regulations has applied the trade mark and has not subsequently removed or
obliterated it, or the proprietor has at any time expressly or impliedly
consented to the use of the trade mark; or
(b) in relation to goods adapted to form part of, or to be accessory to,
other goods in relation to which the trade mark has been used without
infringement of the right given as aforesaid or might for the time being
be so used, if the use of the mark is reasonably necessary in order to
indicate that the goods are so adapted and neither the purpose nor the
effect of the use of the mark is to indicate otherwise than in accordance
with the fact that the goods are certified by the proprietor: Provided
that paragraph (a) hereof shall not have effect in the case of use
consisting of the application of any such mark as aforesaid to any goods,
notwithstanding that they are such goods as are mentioned in that
paragraph, if such application is contrary to the relevant regulations.
(4) Where a certification trade mark relating to goods is one of 2 or more
registered trade marks relating to goods which are identical or nearly
resemble each other, the use of any of those trade marks in exercise of
the right to the use of that trade mark given by registration shall not be
deemed to be an infringement of the right so given to the use of any other
of those trade marks. (Amended 44 of 1991 ss. 41 & 53) [cf. 1938 c. 22 s.
37 (3) - (6) U. K.]
67A. Right given by registration in respect of services, and infringement
thereof
(1) Subject to the provisions of subsections (2) to (4) and of
sections 33 and 34, the registration of a person as proprietor of a
certification trade mark in respect of any services, shall, if valid, give
to that person the exclusive right to the use of the trade mark in
relation to those services, shall, if valid, give to that person the
exclusive right to the use of the trade mark in relation to those
services, and, without prejudice to the generality of the foregoing words,
that right shall be deemed to be infringed by any person who, not being
the proprietor of the trade mark or a person authorized by him under the
regulations in that behalf using it in accordance therewith, uses in
connection with the provision of any services a mark identical with or
nearly resembling it, in relation to any services in respect of which it
is registered, and in such manner as to render the use of the mark likely
to be taken either-
(a) as being use as a trade mark relating to services; or
(b) in a case in which the use is use at or near the place where the
services are available for acceptance or performed or in an advertising
circular or other advertisement issued to the public, as importing a
reference to some person having a right either as proprietor or by his
authorization under the relevant regulations to use the mark or to
services certified by the proprietor.
(2) The right to the use of a certification trade mark given by
registration as aforesaid shall be subject to any conditions or
limitations entered on the register, and shall not be deemed to be
infringed by the use of any such mark as aforesaid in any mode, in
relation to services for use or available for acceptance in any place,
country or territory, or in any other circumstances, to which, having
regard to any such limitations, the registration does not extend.
(3) The right to the use of a certification trade mark given by
registration as aforesaid shall not be deemed to be infringed by the use
of any such mark as aforesaid by any person-
(a) in relation to services to which the proprietor of the mark or another
in accordance with his authorization under the relevant regulations has
applied the mark, where the purpose and effect of the use of the mark is
to indicate, in accordance with the fact, that those services have been
certified by the proprietor; or
(b) in relation to services certified by the proprietor of the mark where
the proprietor has at any time expressly or impliedly consented to the use
of the mark; or
(c) in relation to services available for use with other services in
relation to which the mark has been used without infringement of the right
given by registration or might for the time being be so used, if-
(i) the use of the mark is reasonably necessary in order to indicate that
the services are available for such use; and
(ii) neither the purpose nor the effect of the use of the mark is to
indicate otherwise than in accordance with the fact that the services are
certified by the proprietor: Provided that paragraph (a) hereof shall not
have effect in the case of use consisting of the application of any such
mark as aforesaid to any services, notwithstanding that they are such
services as are mentioned in that paragraph, if such application is
contrary to the relevant regulations.
(4) Where a certification trade mark relating to services is one of 2 or
more registered trade marks relating to services which are identical or
nearly resemble each other, the use of any of those trade marks in
exercise of the right to the use of that trade mark given by registration
shall not be deemed to be an infringement of the right so given to the use
of any other of those trade marks.
(Added 44 of 1991 s. 42)
68. Alteration of deposited regulations, or expunging or varying of entry
in register relating to certification trade mark
(1) (a) The regulations deposited in respect of a certification trade mark
may, on the application of the registered proprietor, be altered by the
Registrar.
(b) The Registrar may, before granting an application, cause it to be
advertised in any case where it appears to him that it is expedient so to
do, and, where the Registrar causes an application to be advertised, if
within the prescribed time from the date of the advertisement any person
gives notice to the Registrar of opposition to the application, the
Registrar shall not decide the matter without giving the parties an
opportunity of being heard.
(2) (a) On application by any person aggrieved to the Court, or at the
option of the applicant and in the prescribed manner and subject to the
provisions of section 80, to the Registrar, or on application by the
Registrar to the Court, the tribunal may make such order as the tribunal
thinks fit for expunging or varying any entry in the register relating to
a certification trade mark, or for varying the deposited regulations, on
the ground-
(i) that the proprietor is no longer competent, in the case of any of the
goods or services in respect of which the trade mark is registered, to
certify those goods or services; (Amended 44 of 1991 s. 52)
(ii) that the proprietor has failed to observe a provision of the
deposited regulations to be observed on his part;
(iii) that it is no longer to the public advantage that the trade mark
should be registered; or
(iv) that it is requisite for the public advantage that, if the trade mark
remains registered, the regulations should be varied.
(b) The Registrar shall rectify the register or the deposited regulations
in such manner as may be requisite for giving effect to an order made
under paragraph (a) hereof. [cf. 1938 c. 22 First Schedule Paras. 3 & 4
U. K.]
69. Certification trade mark assignable or transmissible only with
Registrar's consent
(1) A certification trade mark shall not be assignable or transmissible
otherwise han with the consent of the Registrar, who before giving his
decision shall consider-
(a) in the case of a mark registered in respect of goods, whether the
person to whom it is proposed to assign or transmit the mark is competent
to certify the goods in respect of which the mark is registered; and
(aa) in the case of a mark registered in respect of services, whether the
person to whom it is proposed to assign or transmit the mark is competent
to certify the services in respect of which the mark is registered; and
(Added 44 of 1991 s. 43)
(b) whether in all the circumstances the proposed assignment or
transmission would be to the public advantage.
(2) A certification trade mark registered in respect of goods shall not be
assignable or transmissible to a person who carries on a trade in goods of
the kind certified.
(2A) A certification trade mark registered in respect of services shall
not be assignable or transmissible to a person who is connected in the
course of business with the provision of services of the kind certified.
(Added 44 of 1991 s. 43)
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court. (Amended 44 of 1991 s. 43)
[cf. 1938 c. 22 s. 37 (8) U. K.]
70. Registrar not empowered to award costs on appeals to him
Notwithstanding anything in section 82, the Registrar shall not have any
jurisdiction to award costs to or against any party on an appeal to him
against a refusal of the proprietor of a certification trade mark to
certify goods or services or to authorize the use of the trade mark.
(Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 First Schedule Para. 5 U. K.]
71. Provisions not applicable to certification trade marks
The following provisions of this Ordinance shall not have effect in
relation to a certification trade mark, that is to say, section 9,
sections 13 to 15 (except as expressly applied by sections 65 and 66),
sections 19, 27, 27A, 32, 37, 40, 41 (4) to (7), 41A (4) to (6), 55, 55A,
and 56 to 63, and any provisions the operation of which is limited by the
terms thereof to registration in Part B of the register. (Amended 44 of
1991 s. 44)
[cf. 1938 c. 22 First Schedule Para. 6 U. K.]
72. Trade mark registered under section 59 of Trade Marks Ordinance 1909,
to be deemed registered as a certification trade mark under this Ordinance
Sections 64 to 71 shall have effect, in relation to a trade mark that
immediately before the commencement of this Ordinance was on the register
by virtue of section 59 of the Trade Marks Ordinance 1909 (40 of 1909, see
Cap. 43, 1950 Ed.), as if the sections had been in force at the date of
the registration of the trade mark and it had been registered under those
sections, subject however to the following modifications, that is to say-
(a) that the proviso to section 64 (1) shall not apply;
(b) that sections 64 to 71 shall have effect as if references therein to
the regulations governing the use of certification trade marks had been
omitted; and
(c) that the proprietor shall be at liberty, or may be required by the
Registrar as a condition of the continuance of the registration, to
deposit at any time after the commencement of this Ordinance such
regulations as the Registrar may permit or require. [cf. 1938 c. 22 First
Schedule Para. 7 U. K.]
POWERS AND DUTIES OF REGISTRAR
73. Preliminary advice by Registrar as to distinctiveness
(1) The power to give to a person who proposes to apply for the
registration of a trade mark in Part A or Part B of the register advice as
to whether the trade mark appears to the Registrar prima facie to be
inherently adapted to distinguish, or capable of distinguishing, as the
case may be, shall be a function of the Registrar under this Ordinance.
(2) Any person who is desirous of obtaining advice as aforesaid shall make
application to the Registrar in the prescribed manner.
(3) If on an application for the registration of a trade mark as to which
the Registrar has given advice as aforesaid in the affirmative, made
within 3 months after the advice is given, the Registrar, after further
investigation or consideration, gives notice to the applicant of objection
on the ground that the trade mark is not adapted to distinguish, or
capable of distinguishing, as the case may be, the applicant shall be
entitled, on giving notice of withdrawal of the application within the
prescribed period, to have repaid to him any fee paid for the filing of
the application. [cf. 1938 c. 22 s. 42 U. K.]
74. Hearing before exercise of discretionary power of Registrar
Where any discretionary or other power is given to the Registrar by this
Ordinance or by the rules, he shall not exercise that power adversely to
the applicant for registration or the registered proprietor of the trade
mark in question without (if duly required so to do within the prescribed
time) giving to the applicant or registered proprietor an opportunity of
being heard.
[cf. 1938 c. 22 s. 43 U. K.]
LEGAL PROCEEDINGS AND APPEALS
75. Certificate of validity
In any legal proceeding in which the validity of the registration of a
registered trade mark comes into question and is decided in favour of the
proprietor of the trade mark, the Court may certify to that effect, and if
it so certifies then in any subsequent legal proceeding in which the
validity of the registration comes into question the proprietor of the
trade mark on obtaining a final order or judgment in his favour shall have
his full costs, charges and expenses as between solicitor and client,
unless in the subsequent proceeding the Court certifies that he ought not
to have them. [cf. 1938 c. 22 s. 47 U. K.]
76. Trade usage, etc., to be considered
(1) In any action or proceeding relating to a trade mark relating to goods
or trade name the tribunal shall admit evidence of the usages of the trade
concerned and of any relevant trade mark relating to goods or trade name
or get-up legitimately used by other persons. (Amended 44 of 1991 s. 45)
[cf. 1938 c. 22 s. 49 U. K.]
(2) In any action relating to a trade mark relating to services or
business name, the tribunal shall admit evidence of business usages in the
provision of services in question and of any relevant trade mark relating
to services or business name or getup legitimately used by other persons.
(Added 44 of 1991 s. 45)
77. Registrar's appearance in proceedings involving rectification
(1) In any legal proceeding in which the relief sought includes alteration
or rectification of the register, the Registrar shall have the right to
appear and be heard, and shall appear if so directed by the Court.
(2) Unless otherwise directed by the Court, the Registrar in lieu of
appearing and being heard may submit to the Court a statement in writing
signed by him, giving particulars of the proceedings before him in
relation to the matter in issue or of the grounds of any decision given by
him affecting it or of the practice of his office in like cases, or of
such other matters relevant to the issues, and within his knowledge as
Registrar, as he thinks fit, and the statement shall be deemed to form
part of the evidence in the proceeding.
[cf. 1938 c. 22 s. 50 U. K.]
78. Appeal from Registrar
Except when expressly given by the provisions of this Ordinance or the
rules there shall be no appeal from a decision of the Registrar, but the
Court in dealing with any question of the rectification of the register
(including all applications under the provisions of section 48) shall have
power to review any decision of the Registrar relating to the entry in
question or the correction sought to be made. [cf. 1938 c. 22 s. 51 U.
K.]
79. Appeal to Court of Appeal. Discretion of Court in appeals
(1) Every order of the Court shall be subject to appeal to the Court of
Appeal. The appeal shall be commenced within 21 days from the time when
the decision appealed against is pronounced or made. (Amended 92 of 1975
s. 59)
(2) In any appeal from a decision of the Registrar to the Court under this
Ordinance, the Court shall have and exercise the same discretionary powers
as under this Ordinance are conferred upon the Registrar.
[cf. 1938 c. 22 s. 52 U. K.]
80. Procedure in case of option to apply to Court or Registrar
Where under any of the provisions of this Ordinance an applicant has an
option to make an application either to the Court or to the Registrar-
(a) if an action concerning the trade mark in question is pending, the
application must be made to the Court;
(b) if in any other case the application is made to the Registrar, he may,
at any stage of the proceedings, refer the application to the Court, or he
may, after hearing the parties, determine the question between them,
subject to appeal to the Court. [cf. 1938 c. 22 s. 54 U. K.]
COSTS
81. Costs of proceedings before the Court
In all proceedings before the Court under this Ordinance the Court may
award to any party such costs as it may consider reasonable and the costs
of the Registrar shall be in the discretion of the Court, but the
Registrar shall not be ordered to pay the costs of any other of the
parties.
[cf. 1938 c. 22 s. 48 U. K.]
82. Costs of proceedings before the Registrar
Save as otherwise provided in this Ordinance, in all proceedings before
the Registrar, he shall have power to award to any party such costs as he
may consider reasonable, and to direct how and by what parties they are to
be paid, and any such order may, by leave of the Court or a judge thereof,
be enforced in the same manner as a judgment or order of the Court to the
same effect.
[cf. 1938 c. 22 s. 44 U. K.]
EVIDENCE
83. Mode of giving evidence
(1) In any proceeding under this Ordinance before the Registrar, the
evidence shall be given by statutory declaration in the absence of
directions to the contrary, but, in any case in which he shall think it
right to do so, he may take evidence viva voce in lieu of or in addition
to evidence by declaration. Any such statutory declaration may in the case
of appeal be used before the Court in lieu of evidence by affidavit, but
if so used shall have all the incidents and consequences of evidence by
affidavit.
(2) In case any part of the evidence is taken viva voce, the Registrar
shall, in respect of requiring the attendance of witnesses and taking
evidence on oath, be in the same position in all respects as a special
referee appointed by the Court. [cf. 1938 c. 22 s. 55 U. K.]
84. Evidence of entries in Hong Kong or United Kingdom Register
A printed or written copy of any entry in or extract from the register,
purporting to be certified by the Registrar and sealed with his seal, or
of any entry in or extract from the United Kingdom Register, purporting to
be certified by the Comptroller-General of the United Kingdom patent
Office and sealed with the seal of the Patent Office, shall be admitted in
evidence in all Courts, and in all proceedings, without further proof or
production of the original.
(Amended 44 of 1991 s. 46)
[cf. 1938 c. 22 s. 57 U. K.]
85. Evidence of entries made or of things done by Registrar, or
Comptroller-General of U. K. Patent Office
A certificate purporting to be under the hand of the Registrar, or of the
Comptroller-General of the United Kingdom Patent Office, as to any entry,
matter or thing which he is authorized to make or do, shall be prima facie
evidence of the entry having been made, and of the contents thereof, and
of the matter or thing having been done or not done.
[cf. 1938 c. 22 s. 58 U. K.]
OFFENCES, AND RESTRAINT OF USE OF ROYAL ARMS
86. Falsification of entries in register
If any person makes or causes to be made a false entry in the register, or
a writing falsely purporting to be a copy of an entry in the register, or
produces or tenders or causes to be produced or tendered in evidence any
such writing, knowing the entry or writing to be false, he commits an
offence and is liable on conviction upon indictment to a fine of $ 50,000
and to imprisonment for 7 years.
(Amended 44 of 1991 s. 47)
[cf. 1938 c. 22 s. 59 U. K.]
87. Falsely representing a trade mark as registered, etc.
(1) Any person who makes a representation-
(a) with respect to a mark not being a registered trade mark, to the
effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark not being a part
separately registered as a trade mark, to the effect that it is so
registered; or
(c) to the effect that a registered trade mark is registered in respect of
any goods or services in respect of which it is not registered; or
(Amended 44 of 1991 s. 52)
(d) to the effect that the registration of a trade mark gives an exclusive
right to the use thereof in any circumstances in which, having regard to
limitations entered on the register, the registration does not give that
right,
shall be liable to a fine of $ 500.
(2) For the purposes of this section, the use in Hong Kong in relation to
a trade mark of the word "registered", or of any word referring whether
expressly or impliedly to registration, shall be deemed to import a
reference to registration in the register, except-
(a) where that word is used in physical association with other words
delineated in characters at least as large as those in which that word is
delineated and indicating that the reference is to registration as a trade
mark under the law of a country outside Hong Kong, being a country under
the law of which the registration referred to is in fact in force;
(b) where that word (being a word other than the word "registered") is of
itself such as to indicate that the reference is to such registration as
last aforesaid; or
(c) where that word is used in relation to a mark registered as a trade
mark under the law of a country outside Hong Kong and in relation to goods
to be exported to that country or to services for use in that country.
(Amended 44 of 1991 ss. 48 & 54) [cf. 1938 c. 22 s. 60 U. K.]
88. Restraint of use of Royal Arms
If any person, without the authority of Her Majesty, uses, in connexion
with any trade, business, calling or profession, the Royal Arms (or arms
so closely resembling the same as to be calculated to deceive) in such
manner as to be calculated to lead to the belief that he is duly
authorized so to use the Royal Arms, or if any person, without the
authority of Her Majesty or of a member of the Royal Family, uses, in
connexion with any trade, business, calling or profession, any device,
emblem or title in such manner as to be calculated to lead to the belief
that he is employed by, or supplies goods to or provides services for, Her
Majesty or such member of the Royal Family, he may, at the suit of any
person who is authorized to use such arms or such device, emblem or title,
or who is authorized by the Governor to take proceedings in that behalf,
be restrained by injunction from continuing so to use the same:
Provided that nothing in this section shall be construed as affecting the
right, if any, of the proprietor of a trade mark containing any such arms,
device, emblem or title to continue to use such trade mark.
(Amended 44 of 1991 s. 49)
[cf. 1938 c. 22 s. 61 U. K.]
AGENTS
89. Recognition of agents
Where by this Ordinance any act has to be done by or to any person in
connexion with a trade mark or proposed trade mark or any procedure
relating thereto, the act may, under and in accordance with the rules, or
in particular cases by special leave of the Registrar, be done by or to an
agent of that person duly authorized in the prescribed manner.
[cf. 1938 c. 22 s. 65 U. K.]
RULES
90. Power of Governor in Council to make rules
(1) The Governor in Council may be rules prescribe or provide for-
(Amended 44 of 1991 s. 50)
(a) regulating the practice under this Ordinance, including the service of
documents;
(b) classifying goods or services for the purposes of registration of
trade marks; (Amended 44 of 1991 s. 52)
(c) making or requiring duplicates of trade marks and other documents;
(d) securing and regulating the publishing and selling or distributing, in
such manner as the Governor in Council may think fit, of copies of trade
marks and other documents;
(e) forms which shall be used for carrying out the provisions of this
Ordinance;
(f) fees which shall be paid in respect of applications and registrations
and other matters under this Ordinance;
(g) regulating the business of the registry in relation to trade marks and
all things by this Ordinance placed under the direction or control of the
Registrar;
(h) generally, carrying into effect the provisions of this Ordinance. [cf.
1938 c. 22 s. 40 U. K.]
(2) Any rules made under subsection (1) (f) may-
(a) prescribe fees fixed at; or
(b) provide for fees to be fixed at,
levels that provide for the recovery of expenditure incurred or likely to
be incurred by the Government or other authority in the exercise of any or
all functions under this Ordinance, and shall not be limited by reference
to the amount of administrative or other costs incurred or likely to be
incurred in the exercise of any particular function. (Added 44 of 1991 s.
50)
90A. Hours of business and excluded days
(1) Rules under section 90 may specify the hour at which the registry
shall be deemed to be closed on any day for the purposes of the
transaction by the public of business under this Ordinance or of any class
of such business, and may specify days as excluded days for any such
purposes.
(2) Any business done under this Ordinance on any day after the hour so
specified in relation to business of that class, or on a day which is an
excluded day in relation to business of that class, shall be deemed to
have been done on the next following day not being an excluded day; and
where the time for doing anything under this Ordinance expires on an
excluded day, that time shall be extended to the next following day not
being an excluded day.
(Added 44 of 1991 s. 51)
[cf. 1938 c. 22 s. 40A U. K.]
TRANSITIONAL PROVISIONS
91. Validity of registrations under previous enactments
(1) Nothing in this Ordinance shall be taken to invalidate the original
registration of a trade mark that immediately before the commencement of
this Ordinance was validly on the register.
(2) No trade mark which was on the register at the commencement of this
Ordinance and which under this Ordinance is a registrable trade mark shall
be removed from the register on the ground that it was not registrable
under the Ordinance in force at the date of its registration.
(3) Nothing in this section shall be construed as having subjected any
person to any liability in respect of any act or thing done before the
commencement of this Ordinance to which he would not have been subject
under the Ordinance then in force. [cf. 1938 c. 22 s. 69 U. K.]
SCHEDULE [s. 13A]
LIST OF COUNTRIES (EXCLUDING THE UNITED KINGDOM) ADHERING TO THE PARIS
CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY 1883, AS REVISED FROM
TIME TO TIME
-------------------
Algeria Cyprus
Argentina Czechoslovakia
Australia Democratic People's Republic of Korea
Denmark (including
the Faroe Islands)
Bahamas Dominican Republic Bangladesh
Egypt Barbados Finland
Belgium France (including all
Overseas Departments and Territories)
Benin
Brazil Gabon
Bulgaria Germany
Burkina Faso Ghana
Burundi Greece
Cameroon Guinea
Canada Guinea-Bissau
Central African Republic Haiti
Chad Holy See
China Hungary
Congo Iceland
Cote d' Ivoire Indonesia
Cuba Iran (Islamic Republic of)
-------------------
-------------------
Iraq Portugal
Ireland Republic of Korea
Israel Romania
Italy Rwanda
Japan San Marino
Jordan Senegal
Kenya South Africa
Lebanon Soviet Union
Lesotho Spain
Libya Sri Lanka
Liechtenstein Sudan
Luxembourg Suriname
Madagascar Sweden
Malawi Switzerland
Malaysia Syria
Mali Togo
Malta Trinidad and Tobago
Mauritania Tunisia
Mauritius Turkey
Mexico Uganda
Monaco United Republic of Tanzania
Mongolia United States of America
(including the Morocco Commonwealth
of Puerto Rico and all other
territories and possessions)
Netherlands (including Aruba
and the Nether
lands Antilles)
Uruguay
New Zealand (including Cook
Islands, Niue and Tokelau) Viet Nam
Yugoslavia
Niger Zaire
Nigeria Zambia
Norway Zimbabwe
Philippines
Poland
-------------------
(Replaced L. N. 213 of 1987. Amended L. N. 275 of 1991)
ing out the circumstances, and the Registrar may issue to him a
certificate stating whether, having regard to the similarity of the
services or the association of the services and goods or descriptions of
services and goods and to the similarity of the trade marks referred to in
the case, the proposed assignment of the first-mentioned trade mark would
or would not be invalid under subsection (4), and a certificate so issued
shall, subject to the provisions of this section as to appeal and unless
it is shown that the certificate was obtained by fraud or
misrepresentation, be conclusive as to the validity or invalidity under
subsection (4) of the assignment in so far as such validity or invalidity
depends upon the facts set out in the case, but, as regards a certificate
in favour of validity, only if application for the registration under
section 43 of the title of the person becoming entitled is made within 6
months from the date on which the certificate is issued.
(6) Where an assignment in respect of any services of a trade mark that is
at the time of the assignment used in a business of providing those
services is made otherwise than in connection with the goodwill of that
business, the assignment shall not take effect until the following
requirements have been satisfied, that is to say, the assignee must, not
later than the expiration of 6 months from the date on which the
assignment is made or within such extended period, if any, as the
Registrar may allow, apply to him for directions with respect to the
advertisement of the assignment, and must advertise it in such form and
manner and within such period as the Registrar may direct.
(7) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(Added 44 of 1991 s. 29)
42. Power of registered proprietor to assign, and give receipts
Subject to the provisions of this Ordinance, the person for the time being
entered in the register as proprietor of a trade mark shall, subject to
any rights appearing from the register to be vested in any other person,
have power to assign the trade mark, and to give effectual receipts for
any consideration for an assignment.
[cf. 1938 c. 22 s. 24 U. K.]
43. Registration of assignments and transmissions
(1) Where a person becomes entitled by assignment or transmission to a
registered trade mark, he shall make application to the Registrar to
register his title, and the Registrar shall, on receipt of such
application and on proof of title to his satisfaction, register him as the
proprietor of the trade mark in respect of the goods or services in
respect of which the assignment or transmission has effect, and shall
cause particulars of the assignment or transmission to be entered on the
register. (Amended 44 of 1991 s. 52)
(2) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(3) Except for the purposes of an appeal under this section or of an
application under section 48, a document or instrument in respect of which
no entry has been made in the register in accordance with the provisions
of subsection (1) shall not be admitted in evidence in any Court in proof
of the title to a trade mark unless the Court otherwise directs.
[cf. 1938 c. 22 s. 25 U. K.]
44. Assignments and transmissions of associated trade marks
Trade marks that are registered as, or that are deemed by virtue of this
Ordinance to be, associated trade marks shall be assignable and
transmissible only as a whole and not separately, but they shall for all
other purposes be deemed to have been registered as separate trade marks.
[cf. 1938 c. 22 s. 23 (1) U. K.]
RENEWAL OF REGISTRATION
45. Renewal of registration
The Registrar shall, on application made by the registered proprietor of a
trade mark in the prescribed manner and within the prescribed period,
renew the registration of such trade mark for a period of 14 years from
the date of expiration of the original registration as stated in section
17 (2) or of the last renewal of registration, as the case may be, which
date is hereinafter referred to as "the expiration of the last
registration".
[cf. 1938 c. 22 s. 20 (2) U. K.]
46. Procedure on expiry of period of registration
At the prescribed time before the expiration of the last registration of a
trade mark, the Registrar shall send notice in the prescribed manner to
the registered proprietor of the date at which the existing registration
will expire and the conditions as to payment of fees and otherwise upon
which a renewal of registration may be obtained, and, if at the expiration
of the time prescribed in that behalf those conditions have not been duly
complied with, the Registrar may remove such trade mark from the register,
subject to such conditions, if any, as to its restoration to the register
as may be prescribed. [cf. 1938 c. 22 s. 20 (3) U. K.]
47. Status of unrenewed trade mark
Where a trade mark has been removed from the register for non-payment of
the fee for renewal, it shall, nevertheless, for the purpose of any
application for registration of a trade mark during one year next after
the date of such removal, be deemed to be a trade mark that is already on
the register:
Provided that the foregoing provisions of this section shall not have
effect when the Registrar is satisfied either-
(a) that, in the case of a trade mark that was before removal registered
in respect of goods, there has been no bona fide trade use of the trade
mark during the 2 years immediately preceding its removal; or (Replaced 44
of 1991 s. 30)
(b) that, in the case of a trade mark that was before removal registered
in respect of services, there has been no bona fide business use of the
trade mark during the 2 years immediately preceding its removal; or
(Replaced 44 of 1991 s. 30)
(c) that no deception or confusion would be likely to arise from the use
of the trade mark that is the subject of the application for registration
by reason of any previous use of the trade mark that has been removed.
(Added 44 of 1991 s. 30) [cf. 1938 c. 22 s. 20 (4) U. K.]
RECTIFICATION AND CORRECTION OF REGISTER
48. General power to rectify entries in register
(1) Subject to the provisions of this Ordinance-
(a) any person aggrieved by the non-insertion in or omission from the
register of any entry, or by any entry made in the register without
sufficient cause, or by any entry wrongly remaining on the register, or by
any error or defect in any entry in the register, may apply in the
prescribed manner to the Court or, at the option of the applicant and
subject to the provisions of section 80, to the Registrar, and the
tribunal may make such order for making, expunging or varying the entry as
the tribunal may think fit;
(b) the tribunal may in any proceeding under this section decide any
question that it may be necessary or expedient to decide in connexion with
the rectification of the register;
(c) in case of fraud in the registration, assignment or transmission of a
registered trade mark, the Registrar may himself apply to the Court under
the provisions of this section;
(d) any order of the Court rectifying the register shall direct that
notice of the rectification shall be served in the prescribed manner on
the Registrar, and the Registrar shall on receipt of the notice rectify
the register accordingly.
(2) The power to rectify the register conferred by this section shall
include power to remove a registration in Part A of the register to Part
B.
[cf. 1938 c. 22 s. 32 U. K.]
49. Power to expunge or vary registration for breach of condition
On application by any person aggrieved to the Court, or, at the option of
the applicant and subject to the provisions of section 80, to the
Registrar, or on application by the Registrar to the Court, the tribunal
may make such order as the tribunal may think fit for expunging or varying
the registration of a trade mark on the ground of any contravention of, or
failure to observe, a condition entered on the register in relation
thereto.
[cf. 1938 c. 22 s. 33 U. K.]
50. Correction of register
(1) The Registrar may, on request made in the prescribed manner by the
registered proprietor-
(a) correct any error in the name and address of the registered proprietor
of a trade mark; or
(b) enter any change in the name and address of the person who is
registered as proprietor of a trade mark; or
(c) cancel the entry of a trade mark on the register; or
(d) strike out any goods or services or classes of goods or services from
those in respect of which a trade mark is registered; or (Amended 44 of
1991 s. 52)
(e) enter a disclaimer or memorandum relating to a trade mark which does
not in any way extend the rights given by the existing registration of
such trade mark.
(2) The Registrar may, on request made in the prescribed manner by a
registered user of a trade mark, correct any error, or enter any change,
in the name and address of the registered user.
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(Amended 44 of 1991 s. 31)
[cf. 1938 c. 22 s. 34 U. K.]
51. Alteration of registered trade mark
(1) The registered proprietor of a trade mark may apply in the prescribed
manner to the Registrar for leave to add to or alter the trade mark in any
manner not substantially affecting the identity thereof, and the Registrar
may refuse such leave or may grant it on such terms and subject to such
limitations as he may think fit.
(2) The Registrar may cause an application under this section to be
advertised in the prescribed manner in any case where it appears to him
that it is expedient so to do, and where he does so, if within the
prescribed time from the date of the advertisement any person gives notice
to the Registrar in the prescribed manner of opposition to the
application, the Registrar shall, after hearing the parties if so
required, decide the matter.
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
(4) Where leave as aforesaid is granted, the trade mark as altered shall
be advertised in the prescribed manner, unless it has already been
advertised, in the form to which it has been altered, in an advertisement
under subsection (2).
[cf. 1938 c. 22 s. 35 U. K.]
52. Words used as name or description of an article or substance
(1) The registration of a trade mark relating to goods shall not be deemed
to have become invalid by reason only of any use, after the date of the
registration, of a word or words which the trade mark contains, or of
which it consists, as the name or description of an article or substance:
(Amended 44 of 1991 s. 53) Provided that, if it is proved either-
(a) that there is a well-known and established use of the word or words as
the name or description of the article or substance by a person or persons
carrying on a trade therein, not being use in relation to goods connected
in the course of trade with the proprietor or a registered user of the
trade mark or (in the case of a certification trade mark) goods certified
by the proprietor; or
(b) that the article or substance was formerly manufactured under a
patent, that a period of 2 years or more after the cesser of the patent
has elapsed, and that the word or words is or are the only practicable
name or description of the article or substance, the provisions of
subsection (2) shall have effect.
(2) Where the facts mentioned in paragraph (a) or (b) of the proviso to
subsection (1) are proved with respect to any word or words, then-
(a) if the trade mark consists solely of that word or those words, the
registration of the trade mark, so far as regards registration in respect
of the article or substance in question or of any goods of the same
description, shall be deemed for the purposes of section 48 to be an entry
wrongly remaining on the register;
(b) if the trade mark contains that word or those words and other matter,
the Court or the Registrar, in deciding whether the trade mark shall
remain on the register, so far as regards registration in respect of the
article or substance in question and of any goods of the same description,
may, in case of a decision in favour of its remaining on the register,
require as a condition thereof that the proprietor shall disclaim any
right to the exclusive use in relation to that article or substance and
any goods of the same description of that word or those words, so,
however, that no disclaimer on the register shall affect any rights of the
proprietor of a trade mark except such as arise out of the registration of
the trade mark in respect of which the disclaimer is made; and
(c) for the purposes of any other legal proceedings relating to the trade
mark-
(i) if the trade mark consists solely of that word or those words, all
rights of the proprietor, whether under the common law or by registration,
to the exclusive use of the trade mark in relation to the article or
substance in question or to any goods of the same description; or (Amended
44 of 1991 s. 32)
(ii) if the trade mark contains that word or those words and other matter,
all such rights of the proprietor to the exclusive use of that word or
those words in such relation as aforesaid,
shall be deemed to have ceased on the date at which the use mentioned in
paragraph (a) of the proviso to subsection (1) first became well-known and
established, or at the expiration of 2 years mentioned in paragraph (b) of
that proviso.
[cf. 1938 c. 22 s. 15 (1) & (2) U. K.]
52A. Words used as name or description of an activity
(1) The registration of a trade mark relating to services shall not be
deemed to have become invalid by reason only of any use, after the date of
registration, of a word or words which the trade mark contains, or of
which it consists, as the name or description of some activity:
Provided that, if it is proved that there is a well-known and established
use of the word or words as the name or description of some activity by a
person or persons providing services which include that activity, not
being use in relation to services with the provision of which the
proprietor or a registered user of the trade mark is connected in the
course of business, the provisions of subsection (2) shall have effect.
(2) Where the facts mentioned in the proviso to subsection (1) are proved
with respect to any word or words, then-
(a) if the trade mark consists solely of that word or those words, the
registration of the trade mark, so far as regards registration in respect
of the activity in question, shall be deemed for the purposes of section
48 to be an entry wrongly remaining on the register;
(b) if the trade mark contains that word or those words and other matter,
the Court or the Registrar, in deciding whether the trade mark shall
remain on the register, so far as regards registration in respect of the
activity in question, may, in case of a decision in favour of its
remaining on the register, require as a condition thereof that the
proprietor shall disclaim any right to the exclusive use in relation to
that activity of that word or those words, so, however, that no disclaimer
on the register shall affect any rights of the proprietor of a trade mark
except such as arise out of the registration of the trade mark in respect
of which the disclaimer is made; and
(c) for the purposes of any other legal proceedings relating to the trade
mark-
(i) if the trade mark consists solely of that word or those words, all
rights of the proprietor, whether under the common law or by registration,
to the exclusive use of the trade mark in relation to the activity in
question; or
(ii) if the trade mark contains that word or those words and other matter,
all such rights of the proprietor to the exclusive use of that word or
those words in such relation as aforesaid, shall be deemed to have ceased
on the date at which the use mentioned in the proviso to subsection (1)
first became well-known and established. (Added 44 of 1991 s. 33)
53. Removal of trade mark from register on proof of prior registration in
country of origin
(1) Subject to subsection (3), the Court may, on application in writing
within 7 years from the registration in Hong Kong of a trade mark relating
to goods by any person aggrieved by such registration, remove such trade
mark from the register if it is proved to the satisfaction of the Court
that such trade mark is identical with or nearly resembles a trade mark
which was, prior to the registration in Hong Kong of the first-mentioned
trade mark, registered in respect of-
(a) the same goods;
(b) the same description of goods; or
(c) services or a description of services which are associated with those
goods or goods of that description,
in a country or place from which such goods originate.
(2) Subject to subsection (3), the Court may, on application in writing
made within 7 years from the registration in Hong Kong of a trade mark
relating to services by any person aggrieved by such registration, remove
such trade mark from the register if it is proved to the satisfaction of
the Court that such trade mark is identical with or nearly resembles a
trade mark which was, prior to the registration in Hong Kong of the first-
mentioned trade mark, registered in respect of-
(a) the same services;
(b) the same description of services; or
(c) goods or a description of goods which are associated with those
services or services of that description,
in a country or place from which such services originate.
(3) No trade mark shall be removed from the register under this section in
the following cases-
(a) if the proprietor of the other trade mark consented to the
registration in Hong Kong of the first-mentioned trade mark; or
(b) if the proprietor of the trade mark registered in Hong Kong proves
that he or his predecessors in business have continuously used such trade
mark in Hong Kong in connection with such goods or services (as the case
may be) from a date anterior to the date of the registration of the other
trade mark in the country or place of origin; or
(c) if the applicant does not prove-
(i) that within the 5 years immediately preceding the making of the
application under this section there has been bona fide user in connection
with such goods or services (as the case may be) in Hong Kong of the trade
mark registered in the country or place of origin; or
(ii) that the special circumstances of the trade or affecting the
provision of such services (as the case may be) account for the non-user
of such trade mark in Hong Kong within the same period; or
(iii) that the trade mark so registered in the country or place of origin
was first registered there within the like period of 5 years,
and does not give an undertaking to the satisfaction of the Registrar that
he will within 3 months from the making of the application under this
section apply for registration in Hong Kong of the trade mark so
registered in the country or place of origin, and will take all necessary
steps to complete the registration. (Replaced 44 of 1991 s. 34)
54. Adaptation of entries in register to amended or substituted
classification of goods
(1) The Governor in Council may from time to time make such rules,
prescribe such forms and generally do such things as he thinks expedient,
for empowering the Registrar to amend the register, whether by making or
expunging or varying entries therein, so far as may be requisite for the
purpose of adapting the designation therein of the goods or services or
classes of goods or services in respect of which trade marks are
registered to any amended or substituted classification that may be
prescribed. (Amended 44 of 1991 s. 52)
(2) The Registrar shall not, in exercise of any power conferred on him for
the purpose aforesaid, make any amendment of the register that would have
the effect of adding any goods or services or classes of goods or services
to those in respect of which a trade mark is registered (whether in one or
more classes) immediately before the amendment is to be made, or of
antedating the registration of a trade mark in respect of any goods or
services:
Provided that this subsection shall not have effect in relation to goods
or services as to which the Registrar is satisfied that compliance with
this subsection in relation thereto would involve undue complexity and
that the addition or antedating, as the case may be, would not affect any
substantial quantity of goods or services and would not substantially
prejudice the rights of any person. (Amended 44 of 1991 s. 52)
(3) A proposal for the amendment of the register for the purpose aforesaid
shall be notified to the registered proprietor of the trade mark affected,
shall be subject to appeal by the registered proprietor to the Court,
shall be advertised with any modifications, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed
amendment contravenes the provisions of subsection (2) The decision of the
Registrar on any such opposition shall be subject to appeal to the Court.
[cf. 1938 c. 22 s. 36 U. K.]
DEFENSIVE TRADE MARKS
55. Defensive registration of trade marks relating to goods
(1) Where a trade mark relating to goods and consisting of an invented
word or invented words, or a device or devices, or a combination of them,
has become so exceptionally well known as respects any goods in respect of
which it is registered and in relation to which it has been used that the
use thereof in relation to other goods or to services, or both, would be
likely to detract from its distinctive character in respect of the first-
mentioned goods, then, notwithstanding-
(a) that such use would not be likely to be taken as indicating a
connection in the course of trade between those other goods or those
services, or both, as the case may be, and a person entitled to use the
trade mark in relation to the first-mentioned goods; and
(b) that the proprietor registered in respect of the first-mentioned goods
does not use or propose to use the trade mark in relation to those other
goods or those services, or both, as the case may be,
and notwithstanding anything in section 37, the trade mark may, on the
application in the prescribed manner of the proprietor registered in
respect of the first-mentioned goods, be registered in his name in respect
of those other goods or those services, or both, as the case may be, as a
defensive trade mark and, while so registered, shall not be liable to be
taken off the register in respect of those other goods or those services,
or both, as the case may be, under section 37. (Replaced 44 of 1991 s. 35)
(1A) In determining whether a trade mark relating to goods is
exceptionally well known and whether its use in relation to other goods or
to services, or both, would be likely to detract from its distinctive
character in respect of the goods for which it is registered, the tribunal
shall have regard to all related circumstances, including the length of
time the trade mark has been in use, the extent to which it has become
well known in relation to the goods in respect of which it is registered,
the nature of those goods, and whether the notoriety of the mark is
limited because of its use on goods that are not of wide distribution.
(Added 44 of 1991 s. 35)
(2) The registered proprietor of a trade mark relating to goods may apply
for the registration thereof in respect of any goods as a defensive trade
mark notwithstanding that it is already registered in his name in respect
of those goods otherwise than as a defensive trade mark, or may apply for
the registration thereof in respect of any goods otherwise than as a
defensive trade mark notwithstanding that it is already registered in his
name in respect of those goods as a defensive trade mark, in lieu in each
case of the existing registration. (Amended 44 of 1991 s. 53)
(3) Except as otherwise expressly provided in this section and in sections
56 and 57, the provisions of this Ordinance shall apply in respect of the
registration of trade marks relating to goods as defensive trade marks and
of trade marks so registered as they apply in other cases. (Amended 44 of
1991 s. 35)
[cf. 1938 c. 22 s. 27 (1), (2) & (6) U. K.]
55A. Defensive registration of trade marks relating to services
(1) Where a trade mark relating to services and consisting of an invented
word or invented words, or a device or devices, or a combination of them,
has become so exceptionally well known as respects any services in respect
of which it is registered and in relation to which it has been used that
the use thereof in relation to other services or to goods, or both, would
be likely to detract from its distinctive character in respect of the
first-mentioned services, then, notwithstanding-
(a) that such use would not be likely to be taken as indicating a
connection in the course of business between the provision of those other
services or those goods, or both, as the case may be, and a person
entitled to use the trade mark in relation to the first-mentioned
services; and
(b) that the proprietor registered in respect of the first-mentioned
services does not use or propose to use the trade mark in relation to
those other services or those goods, or both, as the case may be,
and notwithstanding anything in section 37, the trade mark may, on the
application in the prescribed manner of the proprietor registered in
respect of the first-mentioned services, be registered in his name in
respect of those other services or those goods, or both, as the case may
be, as a defensive trade mark and, while so registered, shall not be
liable to be taken off the register in respect of those other services or
those goods, or both, as the case may be, under section 37.
(2) In determining whether a trade mark relating to services is
exceptionally well known and whether its use in relation to other services
or to goods, or both, would be likely to detract from its distinctive
character in respect of the services for which it is registered, the
tribunal shall have regard to all related circumstances, including the
length of time the trade mark has been in use, the extent to which it has
become well known in relation to the services in respect of which it is
registered, the nature of those services, and whether the notoriety of the
mark is limited because of its use in relation to services that are not
widely available.
(3) The registered proprietor of a trade mark relating to services may
apply for the registration thereof in respect of any services as a
defensive trade mark notwithstanding that it is already registered in his
name in respect of those services otherwise than as a defensive trade
mark, or may apply for the registration thereof in respect of any services
otherwise than as a defensive trade mark notwithstanding that it is
already registered in his name in respect of those services as a defensive
trade mark, in lieu in each case of the existing registration.
(4) Except as otherwise expressly provided in this section and sections 56
and 57, this Ordinance applies in respect of the registration of trade
marks relating to services as defensive trade marks and of trade marks so
registered as they apply in other cases. (Added 44 of 1991 s. 36)
56. Defensive trade marks to be registered as associated trade marks
A trade mark registered as a defensive trade mark and that trade mark as
otherwise registered in the name of the same proprietor shall,
notwithstanding that the respective registrations are in respect of
different goods or services, be deemed to be, and shall be registered as,
associated trade marks.
(Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 27 (3) U. K.]
57. Removal of defensive trade marks from the register
(1) On application by any person aggrieved to the Court or, at the option
of the applicant and subject to section 80, to the Registrar-
(a) the registration under section 55 (1) of a trade mark as a defensive
trade mark may be cancelled-
(i) on the ground that the requirements of section 55 (1) are no longer
satisfied in respect of any goods in respect of which the trade mark is
registered in the name of the same proprietor otherwise than as a
defensive trade mark; or
(ii) as respects any goods or services in respect of which it is
registered as a defensive trade mark on the ground that there is no longer
any likelihood that the use of the trade mark in relation to those goods
or services would detract from its distinctive character in respect of the
goods first-mentioned in section 55 (1);
(b) the registration under section 55A (1) of a trade mark as a defensive
trade mark may be cancelled-
(i) on the ground that the requirements of section 55A (1) are no longer
satisfied in respect of any services in respect of which the trade mark is
registered in the name of the same proprietor otherwise than as a
defensive trade mark; or
(ii) as respects any services or goods in respect of which it is
registered as a defensive trade mark on the ground that there is no longer
any likelihood that the use of the trade mark in relation to those
services or goods would detract from its distinctive character in respect
of the services first-mentioned in section 55A (1).
(2) The Registrar may at any time cancel the registration as a defensive
trade mark in respect of goods or services, or both, of a trade mark of
which there is no longer any registration either in respect of goods or
services in the name of the same proprietor otherwise than as a defensive
trade mark.
(Replaced 44 of 1991 s. 37)
REGISTERED USERS
58. Registration as a registered user. Meaning of "permitted use"
(1) (a) Subject to the provisions of this section and sections 59 to 63, a
person other than the proprietor of a trade mark may be registered as a
registered user thereof in respect of all or any of the goods or services
in respect of which it is registered (otherwise than as a defensive trade
mark) and either with or without conditions or restrictions. (Amended 44
of 1991 s. 52)
(b) The use of a trade mark by a registered user of the trade mark in
relation to-
(i) goods with which he is connected in the course of trade; or
(ii) services with the provision of which he is connected in the course of
business, and in respect of which for the time being the trade mark
remains registered and he is registered as a registered user, being use
such as to comply with any conditions or restrictions to which his
registration is subject, is in this Ordinance referred to as the
"permitted use" of the trade mark. (Replaced 44 of 1991 s. 38)
(2) (a) The permitted use of a trade mark shall be deemed to be use by the
proprietor thereof, and shall be deemed not to be use by a person other
than the proprietor, for the purposes of section 37 and for any other
purpose for which such use is material under this Ordinance or at common
law.
(b) Where a person is registered as a registered user of a trade mark
relating to goods on an application made within one year from the
commencement of this Ordinance, this subsection shall have effect in
relation to any previous use (whether before or after the commencement of
this Ordinance) of the trade mark by that person, being use in relation to
the goods in respect of which he is registered and, where he is registered
subject to conditions or restrictions, being use such as to comply
substantially therewith, as if such previous use had been permitted use.
(Amended 44 of 1991 s. 53)
(3) Where it is proposed that a person should be registered as a
registered user of a trade mark, the proprietor and the proposed
registered user must apply in writing to the Registrar in the prescribed
manner, and must furnish him with a statutory declaration made by the
proprietor, or by some person authorized to act on his behalf and approved
by the Registrar-
(a) giving particulars of the relationship, existing or proposed, between
the proprietor and the proposed registered user, including particulars
showing the degree of control by the proprietor over the permitted use
which their relationship will confer and whether it is a term of their
relationship that the proposed registered user shall be the sole
registered user or that there shall be any other restriction as to persons
for whose registration as registered users application may be made;
(b) stating the goods or services in respect of which registration is
proposed;
(c) stating any conditions or restrictions proposed with respect to the
characteristics of the goods or services, to the mode or place of
permitted use, or to any other matter; and
(d) stating whether the permitted use is to be for a period or without
limit of period, and, if for a period, the duration thereof,
and with such further documents, information or evidence as may be
required under the rules or by the Registrar. (Amended 44 of 1991 s. 52)
(4) When the requirements of subsection (3) have been complied with, if
the Registrar, after considering the information furnished to him under
that subsection, is satisfied that in all the circumstances the use of the
trade mark in relation to the proposed goods or services or any of them by
the proposed registered user subject to any conditions or restrictions
which the Registrar thinks proper would not be contrary to the public
interest, the Registrar may register the proposed registered user as a
registered user in respect of the goods or services as to which he is so
satisfied subject as aforesaid. (Amended 44 of 1991 s. 52)
(5) The Registrar shall refuse an application under the provisions of
subsections (1) to (3) if it appears to him that the grant thereof would
tend to facilitate trafficking in a trade mark.
(6) The Registrar shall, if so required by an applicant, take steps for
securing that information given for the purposes of an application under
the provisions of subsections (1) to (3) (other than matter entered in the
register) is not disclosed-
(a) in the case of an application for registration in respect of goods, to
rivals in the trade; or
(b) in the case of an application for registration in respect of services,
to rivals in the business. (Amended 44 of 1991 s. 38)
[cf. 1938 c. 22 s. 28 (1), (2), (4) - (7) U. K.]
59. Proceedings for infringement
(1) Subject to any agreement subsisting between the parties, a registered
user of a trade mark shall be entitled to call upon the proprietor thereof
to take proceedings to prevent infringement thereof, and, if the
proprietor refuses or neglects to do so within 2 months after being so
called upon, the registered user may institute proceedings for
infringement in his own name as if he were the proprietor, making the
proprietor a defendant.
(2) A proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.
[cf. 1938 c. 22 s. 28 (3) U. K.]
60. Variation or cancellation of registration as a registered user
(1) Without prejudice to the provisions of section 48, the registration of
a person as a registered user-
(a) may be varied by the Registrar as regards the goods or services in
respect of which, or any conditions or restrictions subject to which, it
has effect, on the application in writing in the prescribed manner of the
registered proprietor of the trade mark to which the registration relates;
(Amended 44 of 1991 s. 52)
(b) may be cancelled by the Registrar on the application in writing in the
prescribed manner of the registered proprietor or of the registered user
or of any other registered user of the trade mark; or
(c) may be cancelled by the Registrar on the application in writing in the
prescribed manner of any person on any of the following grounds, that is
to say-
(i) that the registered user has used the trade mark otherwise than by way
of the permitted use, or in such a way as to cause, or to be likely to
cause, deception or confusion;
(ii) that the proprietor or the registered user misrepresented, or failed
to disclose, some fact material to the application for the registration,
or that the circumstances have materially changed since the date of the
registration; or
(iii) that the registration ought not to have been effected having regard
to rights vested in the applicant by virtue of a contract in the
performance of which he is interested.
(2) The Registrar may at any time cancel the registration of a person as a
registered user of a trade mark in respect of any goods or services in
respect of which the trade mark is no longer registered. (Amended 44 of
1991 s. 52)
[cf. 1938 c. 22 s. 28 (8) & (10) U. K.]
61. Notification of registration as registered user and of application for
variation or cancellation of such registration
Provision shall be made by the rules for the notification of the
registration of a person as a registered user to any other registered user
of the trade mark, and for the notification of an application under
section 60 to the registered proprietor and each registered user (not
being the applicant) of the trade mark, and for giving to the applicant on
such an application, and to all persons to whom such an application is
notified and who intervene in the proceedings in accordance with the
rules, an opportunity of being heard.
[cf. 1938 c. 22 s. 28 (9) U. K.]
62. Registrar's decision subject to appeal to Court
Any decision of the Registrar under sections 58 and 60 shall be subject to
appeal to the Court.
[cf. 1938 c. 22 s. 28 (11) U. K.]
63. Right to use not assignable or transmissible
Nothing in sections 58, 59 and 60 shall confer on a registered user of a
trade mark any assignable or transmissible right to the use thereof. [cf.
1938 c. 22 s. 28 (12) U. K.]
CERTIFICATION TRADE MARKS
64. Marks registrable as certification trade marks
(1) A mark adapted in relation to any goods to distinguish in the course
of trade goods certified by any person in respect of origin, material,
mode of manufacture, quality, accuracy or other characteristic, from goods
not so certified shall be registrable as a certification trade mark in
Part A of the register in respect of those goods in the name, as
proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person
who carries on a trade in goods of the kind certified.
(1A) A mark adapted in relation to any services to distinguish in the
course of business services certified by any person in respect of quality,
accuracy or other characteristic, from services not so certified, shall be
registrable as a certification trade mark in Part A of the register in
respect of those services in the name, as proprietor of the certification
trade mark, of that person:
Provided that a mark shall not be so registrable in the name of a person
who is connected in the course of business with the provision of services
of the kind certified. (Added 44 of 1991 s. 39)
(2) In determining whether a mark is adapted to distinguish as aforesaid,
the tribunal may have regard to the extent to which-
(a) the mark is inherently adapted to distinguish as aforesaid in relation
to the goods or services in question; and
(b) by reason of the use of the mark or of any other circumstances, the
mark is in fact adapted to distinguish as aforesaid in relation to the
goods or services in question. (Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 37 (1) & (2) U. K.]
65. Application for registration as certification trade mark
(1) An application for the registration of a mark under section 64 shall
be made to the Registrar in writing in the prescribed manner by the person
proposed to be registered as the proprietor thereof.
(2) The provisions of section 13 (2) and of section 13 (4) to (7) shall
have effect in relation to an application under this section as they have
effect in relation to an application under section 13 (1).
(3) In dealing under the said provisions with an application under this
section the tribunal shall have regard to the like considerations, so far
as relevant, as if the application were an application under section 13
and to any other considerations relevant to applications under this
section, including the desirability of securing that a certification trade
mark shall comprise some indication that it is such a trade mark.
(4) An applicant for the registration of a mark under this section shall
transmit to the Registrar draft regulations for governing the use thereof,
which shall include provisions as to the cases in which the proprietor is
to certify goods or services and to authorize the use of the trade mark,
and may contain any other provisions that the Registrar may require or
permit to be inserted therein (including provisions conferring a right of
appeal to the Registrar against any refusal of the proprietor to certify
goods or services or to authorize the use of the trade mark in accordance
with the regulations). The regulations, if approved, shall be deposited
with the Registrar and shall be open to inspection in like manner as the
register.
(Amended 44 of 1991 ss. 40 & 52)
[cf. 1938 c. 22 s. 37 (7) U. K.]
(5) The Registrar shall consider the application with regard to the
following matters-
(a) whether the applicant is competent to certify the goods or services in
respect of which the mark is to be registered;
(Amended 44 of 1991 s. 52)
(b) whether the draft regulations are satisfactory; and
(c) whether in all the circumstances the registration applied for would be
to the public advantage;
and may either-
(i) refuse to accept the application; or
(ii) accept the application, and approve the regulations, either without
modification and unconditionally or subject to any conditions or
limitations, or to any amendments or modifications of the application or
of the regulations, which he may think requisite having regard to any of
the matters aforesaid;
but, except in the case of acceptance and approval without modification
and unconditionally, the Registrar shall not decide the matter without
giving to the applicant an opportunity of being heard:
Provided that the Registrar may, at the request of the applicant, consider
the application with regard to any of the matters aforesaid before the
application has been accepted, so however that the Registrar shall be at
liberty to reconsider any matter on which he has given a decision under
this proviso if any amendment or modification is thereafter made in the
application or in the draft regulations.
(6) Any decision of the Registrar under this section shall be subject to
appeal to the Court.
[cf. 1938 c. 22 First Schedule Para. 1 U. K.]
66. Advertisement of application. Opposition to registration
(1) When an application for the registration of a certification trade mark
has been accepted, whether absolutely or subject to conditions and
limitations, the Registrar shall require the applicant to advertise it, as
accepted, in the prescribed manner, and the provisions of section 15 shall
have effect in relation to the registration of the mark as if the
application had been an application under section 13:
Provided that, in deciding under the said provisions, the Registrar shall
have regard only to the considerations referred to in section 65 (3), and
a decision under the said provisions in favour of the applicant shall be
conditional on the determination in his favour by the Registrar under
subsection (2) of any opposition relating to any of the matters referred
to in section 65 (5).
(2) When notice of opposition is given relating to any of the matters
referred to in section 65 (5), the Registrar shall, after hearing the
parties, if so required, and considering any evidence, decide whether, and
subject to what conditions and limitations, or amendments or modifications
of the application or of the regulations, if any, registration is, having
regard to those matters, to be permitted. [cf. 1938 c. 22 First Schedule
Para. 2 U. K.]
67. Right given by registration in respect of goods, and infringement
thereof
(1) Subject to the provisions of subsections (2) to (4) hereof, and of
sections 33 and 34, the registration of a person as proprietor of a
certification trade mark in respect of any goods, shall, if valid, give to
that person the exclusive right to the use of the trade mark in relation
to those goods, and, without prejudice to the generality of the foregoing
words, that right shall be deemed to be infringed by any person who, not
being the proprietor of the trade mark or a person authorized by him under
the regulations in that behalf using it in accordance therewith, uses in
the course of trade, a mark identical with it or nearly resembling it, in
relation to any goods in respect of which it is registered, and in such
manner as to render the use of the mark likely to be taken either-
(Amended 44 of 1991 s. 41)
(a) as being use as a trade mark relating to goods; or (Amended 44 of 1991
s. 53)
(b) in a case in which the use is use upon the goods or in physical
relation thereto or in an advertising circular or other advertisement
issued to the public, as importing a reference to some person having the
right either as proprietor or by his authorization under the relevant
regulations to use the trade mark or to goods certified by the proprietor.
(2) The right to the use of a certification trade mark given by
registration as aforesaid shall be subject to any conditions or
limitations entered on the register, and shall not be deemed to be
infringed by the use of any such mark as aforesaid in any mode, in
relation to goods to be sold or otherwise traded in in any place, in
relation to goods to be exported to any market, or in any other
circumstances, to which, having regard to any such limitations, the
registration does not extend.
(3) The right to the use of a certification trade mark given by
registration as aforesaid shall not be deemed to be infringed by the use
of any such mark as aforesaid by any person-
(a) in relation to goods certified by the proprietor of the trade mark if,
as to those goods or a bulk of which they form part, the proprietor or
another in accordance with his authorization under the relevant
regulations has applied the trade mark and has not subsequently removed or
obliterated it, or the proprietor has at any time expressly or impliedly
consented to the use of the trade mark; or
(b) in relation to goods adapted to form part of, or to be accessory to,
other goods in relation to which the trade mark has been used without
infringement of the right given as aforesaid or might for the time being
be so used, if the use of the mark is reasonably necessary in order to
indicate that the goods are so adapted and neither the purpose nor the
effect of the use of the mark is to indicate otherwise than in accordance
with the fact that the goods are certified by the proprietor: Provided
that paragraph (a) hereof shall not have effect in the case of use
consisting of the application of any such mark as aforesaid to any goods,
notwithstanding that they are such goods as are mentioned in that
paragraph, if such application is contrary to the relevant regulations.
(4) Where a certification trade mark relating to goods is one of 2 or more
registered trade marks relating to goods which are identical or nearly
resemble each other, the use of any of those trade marks in exercise of
the right to the use of that trade mark given by registration shall not be
deemed to be an infringement of the right so given to the use of any other
of those trade marks. (Amended 44 of 1991 ss. 41 & 53) [cf. 1938 c. 22 s.
37 (3) - (6) U. K.]
67A. Right given by registration in respect of services, and infringement
thereof
(1) Subject to the provisions of subsections (2) to (4) and of
sections 33 and 34, the registration of a person as proprietor of a
certification trade mark in respect of any services, shall, if valid, give
to that person the exclusive right to the use of the trade mark in
relation to those services, shall, if valid, give to that person the
exclusive right to the use of the trade mark in relation to those
services, and, without prejudice to the generality of the foregoing words,
that right shall be deemed to be infringed by any person who, not being
the proprietor of the trade mark or a person authorized by him under the
regulations in that behalf using it in accordance therewith, uses in
connection with the provision of any services a mark identical with or
nearly resembling it, in relation to any services in respect of which it
is registered, and in such manner as to render the use of the mark likely
to be taken either-
(a) as being use as a trade mark relating to services; or
(b) in a case in which the use is use at or near the place where the
services are available for acceptance or performed or in an advertising
circular or other advertisement issued to the public, as importing a
reference to some person having a right either as proprietor or by his
authorization under the relevant regulations to use the mark or to
services certified by the proprietor.
(2) The right to the use of a certification trade mark given by
registration as aforesaid shall be subject to any conditions or
limitations entered on the register, and shall not be deemed to be
infringed by the use of any such mark as aforesaid in any mode, in
relation to services for use or available for acceptance in any place,
country or territory, or in any other circumstances, to which, having
regard to any such limitations, the registration does not extend.
(3) The right to the use of a certification trade mark given by
registration as aforesaid shall not be deemed to be infringed by the use
of any such mark as aforesaid by any person-
(a) in relation to services to which the proprietor of the mark or another
in accordance with his authorization under the relevant regulations has
applied the mark, where the purpose and effect of the use of the mark is
to indicate, in accordance with the fact, that those services have been
certified by the proprietor; or
(b) in relation to services certified by the proprietor of the mark where
the proprietor has at any time expressly or impliedly consented to the use
of the mark; or
(c) in relation to services available for use with other services in
relation to which the mark has been used without infringement of the right
given by registration or might for the time being be so used, if-
(i) the use of the mark is reasonably necessary in order to indicate that
the services are available for such use; and
(ii) neither the purpose nor the effect of the use of the mark is to
indicate otherwise than in accordance with the fact that the services are
certified by the proprietor: Provided that paragraph (a) hereof shall not
have effect in the case of use consisting of the application of any such
mark as aforesaid to any services, notwithstanding that they are such
services as are mentioned in that paragraph, if such application is
contrary to the relevant regulations.
(4) Where a certification trade mark relating to services is one of 2 or
more registered trade marks relating to services which are identical or
nearly resemble each other, the use of any of those trade marks in
exercise of the right to the use of that trade mark given by registration
shall not be deemed to be an infringement of the right so given to the use
of any other of those trade marks.
(Added 44 of 1991 s. 42)
68. Alteration of deposited regulations, or expunging or varying of entry
in register relating to certification trade mark
(1) (a) The regulations deposited in respect of a certification trade mark
may, on the application of the registered proprietor, be altered by the
Registrar.
(b) The Registrar may, before granting an application, cause it to be
advertised in any case where it appears to him that it is expedient so to
do, and, where the Registrar causes an application to be advertised, if
within the prescribed time from the date of the advertisement any person
gives notice to the Registrar of opposition to the application, the
Registrar shall not decide the matter without giving the parties an
opportunity of being heard.
(2) (a) On application by any person aggrieved to the Court, or at the
option of the applicant and in the prescribed manner and subject to the
provisions of section 80, to the Registrar, or on application by the
Registrar to the Court, the tribunal may make such order as the tribunal
thinks fit for expunging or varying any entry in the register relating to
a certification trade mark, or for varying the deposited regulations, on
the ground-
(i) that the proprietor is no longer competent, in the case of any of the
goods or services in respect of which the trade mark is registered, to
certify those goods or services; (Amended 44 of 1991 s. 52)
(ii) that the proprietor has failed to observe a provision of the
deposited regulations to be observed on his part;
(iii) that it is no longer to the public advantage that the trade mark
should be registered; or
(iv) that it is requisite for the public advantage that, if the trade mark
remains registered, the regulations should be varied.
(b) The Registrar shall rectify the register or the deposited regulations
in such manner as may be requisite for giving effect to an order made
under paragraph (a) hereof. [cf. 1938 c. 22 First Schedule Paras. 3 & 4
U. K.]
69. Certification trade mark assignable or transmissible only with
Registrar's consent
(1) A certification trade mark shall not be assignable or transmissible
otherwise han with the consent of the Registrar, who before giving his
decision shall consider-
(a) in the case of a mark registered in respect of goods, whether the
person to whom it is proposed to assign or transmit the mark is competent
to certify the goods in respect of which the mark is registered; and
(aa) in the case of a mark registered in respect of services, whether the
person to whom it is proposed to assign or transmit the mark is competent
to certify the services in respect of which the mark is registered; and
(Added 44 of 1991 s. 43)
(b) whether in all the circumstances the proposed assignment or
transmission would be to the public advantage.
(2) A certification trade mark registered in respect of goods shall not be
assignable or transmissible to a person who carries on a trade in goods of
the kind certified.
(2A) A certification trade mark registered in respect of services shall
not be assignable or transmissible to a person who is connected in the
course of business with the provision of services of the kind certified.
(Added 44 of 1991 s. 43)
(3) Any decision of the Registrar under this section shall be subject to
appeal to the Court. (Amended 44 of 1991 s. 43)
[cf. 1938 c. 22 s. 37 (8) U. K.]
70. Registrar not empowered to award costs on appeals to him
Notwithstanding anything in section 82, the Registrar shall not have any
jurisdiction to award costs to or against any party on an appeal to him
against a refusal of the proprietor of a certification trade mark to
certify goods or services or to authorize the use of the trade mark.
(Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 First Schedule Para. 5 U. K.]
71. Provisions not applicable to certification trade marks
The following provisions of this Ordinance shall not have effect in
relation to a certification trade mark, that is to say, section 9,
sections 13 to 15 (except as expressly applied by sections 65 and 66),
sections 19, 27, 27A, 32, 37, 40, 41 (4) to (7), 41A (4) to (6), 55, 55A,
and 56 to 63, and any provisions the operation of which is limited by the
terms thereof to registration in Part B of the register. (Amended 44 of
1991 s. 44)
[cf. 1938 c. 22 First Schedule Para. 6 U. K.]
72. Trade mark registered under section 59 of Trade Marks Ordinance 1909,
to be deemed registered as a certification trade mark under this Ordinance
Sections 64 to 71 shall have effect, in relation to a trade mark that
immediately before the commencement of this Ordinance was on the register
by virtue of section 59 of the Trade Marks Ordinance 1909 (40 of 1909, see
Cap. 43, 1950 Ed.), as if the sections had been in force at the date of
the registration of the trade mark and it had been registered under those
sections, subject however to the following modifications, that is to say-
(a) that the proviso to section 64 (1) shall not apply;
(b) that sections 64 to 71 shall have effect as if references therein to
the regulations governing the use of certification trade marks had been
omitted; and
(c) that the proprietor shall be at liberty, or may be required by the
Registrar as a condition of the continuance of the registration, to
deposit at any time after the commencement of this Ordinance such
regulations as the Registrar may permit or require. [cf. 1938 c. 22 First
Schedule Para. 7 U. K.]
POWERS AND DUTIES OF REGISTRAR
73. Preliminary advice by Registrar as to distinctiveness
(1) The power to give to a person who proposes to apply for the
registration of a trade mark in Part A or Part B of the register advice as
to whether the trade mark appears to the Registrar prima facie to be
inherently adapted to distinguish, or capable of distinguishing, as the
case may be, shall be a function of the Registrar under this Ordinance.
(2) Any person who is desirous of obtaining advice as aforesaid shall make
application to the Registrar in the prescribed manner.
(3) If on an application for the registration of a trade mark as to which
the Registrar has given advice as aforesaid in the affirmative, made
within 3 months after the advice is given, the Registrar, after further
investigation or consideration, gives notice to the applicant of objection
on the ground that the trade mark is not adapted to distinguish, or
capable of distinguishing, as the case may be, the applicant shall be
entitled, on giving notice of withdrawal of the application within the
prescribed period, to have repaid to him any fee paid for the filing of
the application. [cf. 1938 c. 22 s. 42 U. K.]
74. Hearing before exercise of discretionary power of Registrar
Where any discretionary or other power is given to the Registrar by this
Ordinance or by the rules, he shall not exercise that power adversely to
the applicant for registration or the registered proprietor of the trade
mark in question without (if duly required so to do within the prescribed
time) giving to the applicant or registered proprietor an opportunity of
being heard.
[cf. 1938 c. 22 s. 43 U. K.]
LEGAL PROCEEDINGS AND APPEALS
75. Certificate of validity
In any legal proceeding in which the validity of the registration of a
registered trade mark comes into question and is decided in favour of the
proprietor of the trade mark, the Court may certify to that effect, and if
it so certifies then in any subsequent legal proceeding in which the
validity of the registration comes into question the proprietor of the
trade mark on obtaining a final order or judgment in his favour shall have
his full costs, charges and expenses as between solicitor and client,
unless in the subsequent proceeding the Court certifies that he ought not
to have them. [cf. 1938 c. 22 s. 47 U. K.]
76. Trade usage, etc., to be considered
(1) In any action or proceeding relating to a trade mark relating to goods
or trade name the tribunal shall admit evidence of the usages of the trade
concerned and of any relevant trade mark relating to goods or trade name
or get-up legitimately used by other persons. (Amended 44 of 1991 s. 45)
[cf. 1938 c. 22 s. 49 U. K.]
(2) In any action relating to a trade mark relating to services or
business name, the tribunal shall admit evidence of business usages in the
provision of services in question and of any relevant trade mark relating
to services or business name or getup legitimately used by other persons.
(Added 44 of 1991 s. 45)
77. Registrar's appearance in proceedings involving rectification
(1) In any legal proceeding in which the relief sought includes alteration
or rectification of the register, the Registrar shall have the right to
appear and be heard, and shall appear if so directed by the Court.
(2) Unless otherwise directed by the Court, the Registrar in lieu of
appearing and being heard may submit to the Court a statement in writing
signed by him, giving particulars of the proceedings before him in
relation to the matter in issue or of the grounds of any decision given by
him affecting it or of the practice of his office in like cases, or of
such other matters relevant to the issues, and within his knowledge as
Registrar, as he thinks fit, and the statement shall be deemed to form
part of the evidence in the proceeding.
[cf. 1938 c. 22 s. 50 U. K.]
78. Appeal from Registrar
Except when expressly given by the provisions of this Ordinance or the
rules there shall be no appeal from a decision of the Registrar, but the
Court in dealing with any question of the rectification of the register
(including all applications under the provisions of section 48) shall have
power to review any decision of the Registrar relating to the entry in
question or the correction sought to be made. [cf. 1938 c. 22 s. 51 U.
K.]
79. Appeal to Court of Appeal. Discretion of Court in appeals
(1) Every order of the Court shall be subject to appeal to the Court of
Appeal. The appeal shall be commenced within 21 days from the time when
the decision appealed against is pronounced or made. (Amended 92 of 1975
s. 59)
(2) In any appeal from a decision of the Registrar to the Court under this
Ordinance, the Court shall have and exercise the same discretionary powers
as under this Ordinance are conferred upon the Registrar.
[cf. 1938 c. 22 s. 52 U. K.]
80. Procedure in case of option to apply to Court or Registrar
Where under any of the provisions of this Ordinance an applicant has an
option to make an application either to the Court or to the Registrar-
(a) if an action concerning the trade mark in question is pending, the
application must be made to the Court;
(b) if in any other case the application is made to the Registrar, he may,
at any stage of the proceedings, refer the application to the Court, or he
may, after hearing the parties, determine the question between them,
subject to appeal to the Court. [cf. 1938 c. 22 s. 54 U. K.]
COSTS
81. Costs of proceedings before the Court
In all proceedings before the Court under this Ordinance the Court may
award to any party such costs as it may consider reasonable and the costs
of the Registrar shall be in the discretion of the Court, but the
Registrar shall not be ordered to pay the costs of any other of the
parties.
[cf. 1938 c. 22 s. 48 U. K.]
82. Costs of proceedings before the Registrar
Save as otherwise provided in this Ordinance, in all proceedings before
the Registrar, he shall have power to award to any party such costs as he
may consider reasonable, and to direct how and by what parties they are to
be paid, and any such order may, by leave of the Court or a judge thereof,
be enforced in the same manner as a judgment or order of the Court to the
same effect.
[cf. 1938 c. 22 s. 44 U. K.]
EVIDENCE
83. Mode of giving evidence
(1) In any proceeding under this Ordinance before the Registrar, the
evidence shall be given by statutory declaration in the absence of
directions to the contrary, but, in any case in which he shall think it
right to do so, he may take evidence viva voce in lieu of or in addition
to evidence by declaration. Any such statutory declaration may in the case
of appeal be used before the Court in lieu of evidence by affidavit, but
if so used shall have all the incidents and consequences of evidence by
affidavit.
(2) In case any part of the evidence is taken viva voce, the Registrar
shall, in respect of requiring the attendance of witnesses and taking
evidence on oath, be in the same position in all respects as a special
referee appointed by the Court. [cf. 1938 c. 22 s. 55 U. K.]
84. Evidence of entries in Hong Kong or United Kingdom Register
A printed or written copy of any entry in or extract from the register,
purporting to be certified by the Registrar and sealed with his seal, or
of any entry in or extract from the United Kingdom Register, purporting to
be certified by the Comptroller-General of the United Kingdom patent
Office and sealed with the seal of the Patent Office, shall be admitted in
evidence in all Courts, and in all proceedings, without further proof or
production of the original.
(Amended 44 of 1991 s. 46)
[cf. 1938 c. 22 s. 57 U. K.]
85. Evidence of entries made or of things done by Registrar, or
Comptroller-General of U. K. Patent Office
A certificate purporting to be under the hand of the Registrar, or of the
Comptroller-General of the United Kingdom Patent Office, as to any entry,
matter or thing which he is authorized to make or do, shall be prima facie
evidence of the entry having been made, and of the contents thereof, and
of the matter or thing having been done or not done.
[cf. 1938 c. 22 s. 58 U. K.]
OFFENCES, AND RESTRAINT OF USE OF ROYAL ARMS
86. Falsification of entries in register
If any person makes or causes to be made a false entry in the register, or
a writing falsely purporting to be a copy of an entry in the register, or
produces or tenders or causes to be produced or tendered in evidence any
such writing, knowing the entry or writing to be false, he commits an
offence and is liable on conviction upon indictment to a fine of $ 50,000
and to imprisonment for 7 years.
(Amended 44 of 1991 s. 47)
[cf. 1938 c. 22 s. 59 U. K.]
87. Falsely representing a trade mark as registered, etc.
(1) Any person who makes a representation-
(a) with respect to a mark not being a registered trade mark, to the
effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark not being a part
separately registered as a trade mark, to the effect that it is so
registered; or
(c) to the effect that a registered trade mark is registered in respect of
any goods or services in respect of which it is not registered; or
(Amended 44 of 1991 s. 52)
(d) to the effect that the registration of a trade mark gives an exclusive
right to the use thereof in any circumstances in which, having regard to
limitations entered on the register, the registration does not give that
right,
shall be liable to a fine of $ 500.
(2) For the purposes of this section, the use in Hong Kong in relation to
a trade mark of the word "registered", or of any word referring whether
expressly or impliedly to registration, shall be deemed to import a
reference to registration in the register, except-
(a) where that word is used in physical association with other words
delineated in characters at least as large as those in which that word is
delineated and indicating that the reference is to registration as a trade
mark under the law of a country outside Hong Kong, being a country under
the law of which the registration referred to is in fact in force;
(b) where that word (being a word other than the word "registered") is of
itself such as to indicate that the reference is to such registration as
last aforesaid; or
(c) where that word is used in relation to a mark registered as a trade
mark under the law of a country outside Hong Kong and in relation to goods
to be exported to that country or to services for use in that country.
(Amended 44 of 1991 ss. 48 & 54) [cf. 1938 c. 22 s. 60 U. K.]
88. Restraint of use of Royal Arms
If any person, without the authority of Her Majesty, uses, in connexion
with any trade, business, calling or profession, the Royal Arms (or arms
so closely resembling the same as to be calculated to deceive) in such
manner as to be calculated to lead to the belief that he is duly
authorized so to use the Royal Arms, or if any person, without the
authority of Her Majesty or of a member of the Royal Family, uses, in
connexion with any trade, business, calling or profession, any device,
emblem or title in such manner as to be calculated to lead to the belief
that he is employed by, or supplies goods to or provides services for, Her
Majesty or such member of the Royal Family, he may, at the suit of any
person who is authorized to use such arms or such device, emblem or title,
or who is authorized by the Governor to take proceedings in that behalf,
be restrained by injunction from continuing so to use the same:
Provided that nothing in this section shall be construed as affecting the
right, if any, of the proprietor of a trade mark containing any such arms,
device, emblem or title to continue to use such trade mark.
(Amended 44 of 1991 s. 49)
[cf. 1938 c. 22 s. 61 U. K.]
AGENTS
89. Recognition of agents
Where by this Ordinance any act has to be done by or to any person in
connexion with a trade mark or proposed trade mark or any procedure
relating thereto, the act may, under and in accordance with the rules, or
in particular cases by special leave of the Registrar, be done by or to an
agent of that person duly authorized in the prescribed manner.
[cf. 1938 c. 22 s. 65 U. K.]
RULES
90. Power of Governor in Council to make rules
(1) The Governor in Council may be rules prescribe or provide for-
(Amended 44 of 1991 s. 50)
(a) regulating the practice under this Ordinance, including the service of
documents;
(b) classifying goods or services for the purposes of registration of
trade marks; (Amended 44 of 1991 s. 52)
(c) making or requiring duplicates of trade marks and other documents;
(d) securing and regulating the publishing and selling or distributing, in
such manner as the Governor in Council may think fit, of copies of trade
marks and other documents;
(e) forms which shall be used for carrying out the provisions of this
Ordinance;
(f) fees which shall be paid in respect of applications and registrations
and other matters under this Ordinance;
(g) regulating the business of the registry in relation to trade marks and
all things by this Ordinance placed under the direction or control of the
Registrar;
(h) generally, carrying into effect the provisions of this Ordinance. [cf.
1938 c. 22 s. 40 U. K.]
(2) Any rules made under subsection (1) (f) may-
(a) prescribe fees fixed at; or
(b) provide for fees to be fixed at,
levels that provide for the recovery of expenditure incurred or likely to
be incurred by the Government or other authority in the exercise of any or
all functions under this Ordinance, and shall not be limited by reference
to the amount of administrative or other costs incurred or likely to be
incurred in the exercise of any particular function. (Added 44 of 1991 s.
50)
90A. Hours of business and excluded days
(1) Rules under section 90 may specify the hour at which the registry
shall be deemed to be closed on any day for the purposes of the
transaction by the public of business under this Ordinance or of any class
of such business, and may specify days as excluded days for any such
purposes.
(2) Any business done under this Ordinance on any day after the hour so
specified in relation to business of that class, or on a day which is an
excluded day in relation to business of that class, shall be deemed to
have been done on the next following day not being an excluded day; and
where the time for doing anything under this Ordinance expires on an
excluded day, that time shall be extended to the next following day not
being an excluded day.
(Added 44 of 1991 s. 51)
[cf. 1938 c. 22 s. 40A U. K.]
TRANSITIONAL PROVISIONS
91. Validity of registrations under previous enactments
(1) Nothing in this Ordinance shall be taken to invalidate the original
registration of a trade mark that immediately before the commencement of
this Ordinance was validly on the register.
(2) No trade mark which was on the register at the commencement of this
Ordinance and which under this Ordinance is a registrable trade mark shall
be removed from the register on the ground that it was not registrable
under the Ordinance in force at the date of its registration.
(3) Nothing in this section shall be construed as having subjected any
person to any liability in respect of any act or thing done before the
commencement of this Ordinance to which he would not have been subject
under the Ordinance then in force. [cf. 1938 c. 22 s. 69 U. K.]
SCHEDULE [s. 13A]
LIST OF COUNTRIES (EXCLUDING THE UNITED KINGDOM) ADHERING TO THE PARIS
CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY 1883, AS REVISED FROM
TIME TO TIME
-------------------
Algeria Cyprus
Argentina Czechoslovakia
Australia Democratic People's Republic of Korea
Denmark (including
the Faroe Islands)
Bahamas Dominican Republic Bangladesh
Egypt Barbados Finland
Belgium France (including all
Overseas Departments and Territories)
Benin
Brazil Gabon
Bulgaria Germany
Burkina Faso Ghana
Burundi Greece
Cameroon Guinea
Canada Guinea-Bissau
Central African Republic Haiti
Chad Holy See
China Hungary
Congo Iceland
Cote d' Ivoire Indonesia
Cuba Iran (Islamic Republic of)
-------------------
-------------------
Iraq Portugal
Ireland Republic of Korea
Israel Romania
Italy Rwanda
Japan San Marino
Jordan Senegal
Kenya South Africa
Lebanon Soviet Union
Lesotho Spain
Libya Sri Lanka
Liechtenstein Sudan
Luxembourg Suriname
Madagascar Sweden
Malawi Switzerland
Malaysia Syria
Mali Togo
Malta Trinidad and Tobago
Mauritania Tunisia
Mauritius Turkey
Mexico Uganda
Monaco United Republic of Tanzania
Mongolia United States of America
(including the Morocco Commonwealth
of Puerto Rico and all other
territories and possessions)
Netherlands (including Aruba
and the Nether
lands Antilles)
Uruguay
New Zealand (including Cook
Islands, Niue and Tokelau) Viet Nam
Yugoslavia
Niger Zaire
Nigeria Zambia
Norway Zimbabwe
Philippines
Poland
-------------------
(Replaced L. N. 213 of 1987. Amended L. N. 275 of 1991)
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