TRADE MARKS ORDINANCE - CHAPTER 43 TRADE MARKS ORDINANCE - LONG TITLE Long title (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 Please refer to the Trade Marks Ordinance (Cap 559) which comes into operation on 4 April 2003. TRADE MARKS ORDINANCE - LONG TITLE Long title VerDate:30/06/1997 To amend and consolidate the law relating to the registration of trade marks. [1 January 1955] G.N.A. 143 of 1954 (Originally 47 of 1954) TRADE MARKS ORDINANCE - SECT 1 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 1 Short title VerDate:30/06/1997 This Ordinance may be cited as the Trade Marks Ordinance. [cf. 1938 c. 22 s. 71 U.K.] TRADE MARKS ORDINANCE - SECT 2 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 2 Interpretation VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 (1) In this Ordinance, unless the context otherwise requires- "assignment" (轉讓) means assignment by act of the parties concerned; "certification trade mark" (證明商標) means a mark registered or deemed to have been registered under section 64; (Added 44 of 1991 s. 2) "defensive trade mark" (防禦商標) means a mark registered under section 55 or 55A; (Added 44 of 1991 s. 2) "limitations" (限制) 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" (標記) means any sign that is visually perceptible and capable of being represented graphically and may, in particular, consist of words, personal names, letters, numerals, figurative elements or combination of colours, and includes any combination of such signs; (Replaced 11 of 1996 s. 18) "permitted use" (許可使用) has the meaning assigned to it by section 58(1); "prescribed" (訂明) 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" (提供), in relation to services, means their provision, whether or not for money or money's worth; (Added 44 of 1991 s. 2) "register" (註冊紀錄冊) means the register of trade marks kept under this Ordinance; "registered trade mark" (註冊商標) means a trade mark which is actually on the register; "registered user" (註冊使用人) means a person who is for the time being registered as such under section 58; "registrable trade mark" (可註冊商標) means a trade mark which is capable of registration under the provisions of this Ordinance; "Registrar" (處長) means the Registrar of Trade Marks appointed by the Chief Executive; (Replaced 35 of 1990 s. 10. Amended 22 of 1999 s. 3) "seal" (印章) means the seal of the Registrar kept in the Trade Marks Registry Hong Kong; (Amended 22 of 1999 s. 3) "trade mark" (商標) 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" (貨品商標) 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" (服務商標) 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" (傳轉) 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" (審裁處) 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.] "assignment" (轉讓) "certification trade mark" (證明商標) "defensive trade mark" (防禦商標) "limitations" (限制) "mark" (標記) "permitted use" (許可使用) "prescribed" (訂明) "provision" (提供) "register" (註冊紀錄冊) "registered trade mark" (註冊商標) "registered user" (註冊使用人) "registrable trade mark" (可註冊商標) "Registrar" (處長) "seal" (印章) "trade mark" (商標) "trade mark relating to goods" (貨品商標) "trade mark relating to services" (服務商標) "transmission" (傳轉) "tribunal" (審裁處) TRADE MARKS ORDINANCE - SECT 2 Interpretation VerDate:30/06/1997 (1) In this Ordinance, unless the context otherwise requires- "assignment" (轉讓) means assignment by act of the parties concerned; "certification trade mark" (證明商標) means a mark registered or deemed to have been registered under section 64; (Added 44 of 1991 s. 2) "defensive trade mark" (防禦商標) means a mark registered under section 55 or 55A; (Added 44 of 1991 s. 2) "limitations" (限制) 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" (標記) means any sign that is visually perceptible and capable of being represented graphically and may, in particular, consist of words, personal names, letters, numerals, figurative elements or combination of colours, and includes any combination of such signs; (Replaced 11 of 1996 s. 18) "permitted use" (許可使用) has the meaning assigned to it by section 58(1); "prescribed" (訂明) 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" (提供), in relation to services, means their provision, whether or not for money or money's worth; (Added 44 of 1991 s. 2) "register" (註冊紀錄冊) means the register of trade marks kept under this Ordinance; "registered trade mark" (註冊商標) means a trade mark which is actually on the register; "registered user" (註冊使用人) means a person who is for the time being registered as such under section 58; "registrable trade mark" (可註冊商標) means a trade mark which is capable of registration under the provisions of this Ordinance; "Registrar" (處長) means the Registrar of Trade Marks appointed by the Governor; (Replaced 35 of 1990 s. 10) "seal" (印章) 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" (商標) 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" (貨品商標) 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" (服務商標) 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" (傳轉) 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" (審裁處) 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.] "assignment" (轉讓) "certification trade mark" (證明商標) "defensive trade mark" (防禦商標) "limitations" (限制) "mark" (標記) "permitted use" (許可使用) "prescribed" (訂明) "provision" (提供) "register" (註冊紀錄冊) "registered trade mark" (註冊商標) "registered user" (註冊使用人) "registrable trade mark" (可註冊商標) "Registrar" (處長) "seal" (印章) "trade mark" (商標) "trade mark relating to goods" (貨品商標) "trade mark relating to services" (服務商標) "transmission" (傳轉) "tribunal" (審裁處) TRADE MARKS ORDINANCE - SECT 3 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 3 Register of trade marks VerDate:30/06/1997 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) TRADE MARKS ORDINANCE - SECT 4 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 4 Division of register into 2 parts VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 5 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 5 Trust not to be entered in register VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 6 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 6 Inspection of register VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 7 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 7 Copies and extracts from register VerDate:30/06/1997 (1) Any person who applied 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" (核證副本) and "certified extract" (核證摘錄) 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.] "certified copy" (核證副本) and "certified extract" (核證摘錄) TRADE MARKS ORDINANCE - SECT 8 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 8 Trade mark must be for particular goods or services VerDate:30/06/1997 REGISTRABLE TRADE MARKS (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. (Amended 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.] TRADE MARKS ORDINANCE - SECT 9 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 9 Trade marks registrable in Part A VerDate:30/06/1997 (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" (顯著) 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.] "distinctive" (顯著) TRADE MARKS ORDINANCE - SECT 10 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 10 Trade marks registrable in Part B VerDate:30/06/1997 (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 connection 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.] TRADE MARKS ORDINANCE - SECT 11 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 11 Coloured trade marks VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 12 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 12 Restriction on registration VerDate:30/06/1997 (1) It shall not be lawful to register as a trademark 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. 15(3) 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. 11 U.K.] (3) A sign shall not be registered as a trade mark relating to goods if it consists exclusively of- (a) the shape that results from the nature of the goods themselves; (b) the shape of goods that is necessary to obtain a technical result; or (c) the shape that gives substantial value to the goods. (Added 11 of 1996 s. 19) TRADE MARKS ORDINANCE - SECT 13 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 13 Application for registration VerDate:30/06/1997 REGISTRATION OF TRADE MARKS (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 connection 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.] TRADE MARKS ORDINANCE - SECT 13A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 13A Priority for application made in Convention country VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 (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" (公約國) means- (a) the China; (Amended 22 of 1999 s. 3) (b) any country for the time being specified in the Schedule; (Replaced 11 of 1996 s. 20) (c) 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; (Added 11 of 1996 s. 20) (d) any other territory, or any area, for the time being specified in the Schedule. (Added 11 of 1996 s. 20) (7) The Chief Executive may by order published in the Gazette- (Amended 22 of 1999 s. 3) (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, or territory administered by another country, on behalf of which such other country has acceded to the said Convention; (Amended 22 of 1999 s. 3) (iii) the name of any country, territory or area which has acceded to the World Trade Organization Agreement done at Marrakesh in 1994, and as the same may be revised from time to time; (Added 11 of 1996 s. 20) (b) delete from the Schedule the name of- (i) any country which has denounced the said Convention; (ii) any colony, protectorate or territory on behalf of which the said Convention has been denounced; (iii) any country, territory or area which has denounced the said Agreement; (Replaced 11 of 1996 s. 20) (c) otherwise amend the Schedule. (Added 55 of 1977 s. 2) [cf. 1907 c. 29 s. 91 U.K.] "Convention country" (公約國) TRADE MARKS ORDINANCE - SECT 13A Priority for application made in Convention country VerDate:30/06/1997 (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" (公約國) means- (a) the United Kingdom; (b) any country for the time being specified in the Schedule; (Replaced 11 of 1996 s. 20) (c) 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; (Added 11 of 1996 s. 20) (d) any other territory, or any area, for the time being specified in the Schedule. (Added 11 of 1996 s. 20) (7) The Governor may by 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; (iii) the name of any country, territory or area which has acceded to the World Trade Organization Agreement done at Marrakesh in 1994, and as the same may be revised from time to time; (Added 11 of 1996 s. 20) (b) delete from the Schedule the name of- (i) any country which has denounced the said Convention; (ii) any colony, protectorate or territory on behalf of which the said Convention has been denounced; (iii) any country, territory or area which has denounced the said Agreement; (Replaced 11 of 1996 s. 20) (c) otherwise amend the Schedule. (Added 55 of 1977 s. 2) [cf. 1907 c. 29 s. 91 U.K.] "Convention country" (公約國) TRADE MARKS ORDINANCE - SECT 14 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 14 Advertisement of application VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 15 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 15 Opposition to registration VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 16 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 16 Registration subject to disclaimer VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 17 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 17 Registration, and failure to complete VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 (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 Chief Executive 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; 22 of 1999 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.] TRADE MARKS ORDINANCE - SECT 17 Registration, and failure to complete VerDate:30/06/1997 (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) [cf. 1938 c. 22 s. 19(1) U.K.] 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 Geo. 6 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.] TRADE MARKS ORDINANCE - SECT 18 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 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 VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 19 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 19 Jointly owned trade marks relating to goods VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 19A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 19A Jointly owned trade marks relating to services VerDate:30/06/1997 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 marks, 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) TRADE MARKS ORDINANCE - SECT 19B (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 19B Registration of joint proprietors VerDate:30/06/1997 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) TRADE MARKS ORDINANCE - SECT 20 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 20 Prohibition of registration of identical and resembling trade marks VerDate:30/06/1997 IDENTICAL 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 good 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 the description. (Replaced 44 of 1991 s. 13) TRADE MARKS ORDINANCE - SECT 21 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 21 Applications for registration of identical or resembling trade marks VerDate:30/06/1997 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) TRADE MARKS ORDINANCE - SECT 22 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 22 Concurrent use VerDate:30/06/1997 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) TRADE MARKS ORDINANCE - SECT 23 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 23 Protection of marks registered in country of origin VerDate:30/06/1997 (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 or 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) TRADE MARKS ORDINANCE - SECT 24 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 24 Associated trade marks VerDate:30/06/1997 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. 15) (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. 15) (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) TRADE MARKS ORDINANCE - SECT 25 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 25 Combined trade marks VerDate:30/06/1997 (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. 2(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.] TRADE MARKS ORDINANCE - SECT 26 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 26 Series of trade marks VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 27 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 27 Right given by registration in Part A in respect of goods, and infringement thereof VerDate:30/06/1997 EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT (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, or in relation to goods of the same description where such use would result in a likelihood of confusion, and in such manner as to render the use of the mark likely to be taken either- (Amended 44 of 1991 s. 17; 11 of 1996 s. 21) (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 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 connection 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 ss. 17 & 53) [cf. 1938 c. 22 s. 4 U.K.] TRADE MARKS ORDINANCE - SECT 27A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 27A Right given by registration in Part A in respect of services, and infringement thereof VerDate:30/06/1997 (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, or in relation to services of the same description where such use would result in a likelihood of confusion, and in such manner as to render the use of the mark likely to be taken either- (Amended 11 of 1996 s. 22) (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 aforesaid 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 relation 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) TRADE MARKS ORDINANCE - SECT 28 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 28 Right given by registration in Part B, and infringement thereof VerDate:30/06/1997 (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 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 trade mark. [cf. 1938 c. 22 s. 5 U.K.] TRADE MARKS ORDINANCE - SECT 28A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 28A Right given by registration in Part B in respect of services, and infringement thereof VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 29 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 29 Registration to be prima facie evidence of validity VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 30 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 30 Registration in Part A to be conclusive as to validity after 7 years VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 31 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 31 Equities in respect of trade marks VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 32 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 32 Infringement by breach of certain restrictions VerDate:30/06/1997 (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 connection 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 a 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" (上) includes in relation to any goods a reference to physical relation thereto. [cf. 1938 c. 22 s. 6 U.K.] "upon" (上) TRADE MARKS ORDINANCE - SECT 33 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 33 Saving for vested rights VerDate:30/06/1997 (1) Nothing in this Ordinance shall entitle the proprietor or a registered user 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 or services 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 or 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. (Amended 44 of 1991 ss. 22) TRADE MARKS ORDINANCE - SECT 34 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 34 Saving for use of name, address or description of goods VerDate:30/06/1997 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 a 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.] TRADE MARKS ORDINANCE - SECT 35 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 35 No action for infringement of unregistered trade mark VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 36 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 36 "Passing off" action VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 37 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 37 Removal from register and imposition of limitations on ground of non-use VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 USE AND NON-USE OF TRADE MARKS (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 regards 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 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, territory or place 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, territory or place, 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. Amended 22 of 1999 s. 3) (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.] TRADE MARKS ORDINANCE - SECT 37 Removal from register and imposition of limitations on ground of non-use VerDate:30/06/1997 USE AND NON-USE OF TRADE MARKS (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 regards 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 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.] TRADE MARKS ORDINANCE - SECT 38 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 38 Use of one of associated trade marks equivalent to use of another VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 39 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 39 Use of trade mark for export trade constitutes use of the trade mark VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 40 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 40 Use of trade mark after change in form of trade connection VerDate:30/06/1997 (1) The use of a registered trade mark in relation to goods between which and the person using it any form of connection 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 connection 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. (Amended 44 of 1991 s. 27) TRADE MARKS ORDINANCE - SECT 41 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 41 Powers of, and restrictions on, assignment and transmission of trade marks relating to goods VerDate:30/06/1997 ASSIGNMENT AND TRANSMISSION (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 connection 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 or services 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 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. (Amended 44 of 1991 ss. 28, 53 & 54) [cf. 1938 c. 22 s. 22 U.K.] TRADE MARKS ORDINANCE - SECT 41A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 41A Assignment and transmission of trade marks relating to services VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 (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, territory or place outside Hong Kong or in relation to services available for acceptance in Hong Kong (wherever they are to be used). (Amended 22 of 1999 s. 3) (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) TRADE MARKS ORDINANCE - SECT 41A Assignment and transmission of trade marks relating to services VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 42 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 42 Power of registered proprietor to assign, and give receipts VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 43 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 43 Registration of assignments and transmissions VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 44 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 44 Assignments and transmissions of associated trade marks VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 45 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 45 Renewal of registration VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 46 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 46 Procedure on expiry of period of registration VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 47 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 47 Status of unrenewed trade mark VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 48 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 48 General power to rectify entries in register VerDate:30/06/1997 RECTIFICATION AND CORRECTION OF 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.] TRADE MARKS ORDINANCE - SECT 49 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 49 Power to expunge or vary registration for breach of condition VerDate:30/06/1997 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.] TRADE MARKS ORDINANCE - SECT 50 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 50 Correction of register VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 51 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 51 Alteration of registered trade mark VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 52 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 52 Words used as name or description of an article or substance VerDate:30/06/1997 (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.] TRADE MARKS ORDINANCE - SECT 52A (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 52A Words used as name or description of an activity VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 53 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 53 Removal of trade mark from register on proof of prior registration in country of origin VerDate:30/06/1997 (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) TRADE MARKS ORDINANCE - SECT 54 (Repealed 35 of 2000 s. 99) VerDate:04/04/2003 TRADE MARKS ORDINANCE - SECT 54 Adaptation of entries in register to amended or substituted classification of goods VerDate:01/07/1997 Adaptation amendments retroactively made - see 22 of 1999 s. 3 (1) The Chief Executive 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; 22 of 1999 s. 3) (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 pre