Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 12

Relative grounds for refusal of registration

(1) A trade mark shall not be registered if-

   (a)  the trade mark is identical to an earlier trade mark; and

   (b)  the goods or services for which the application for registration is
        made are identical to those for which the earlier trade  mark is
        protected.

(2) A trade mark shall not be registered if-

   (a)  the trade mark is identical to an earlier trade mark;

   (b)  the goods or services for which the application for registration is
        made are similar to those for which the earlier trade mark is
        protected; and

   (c)  the use of the trade mark in relation to those goods or services is
        likely to cause confusion on the part of the public.

(3) A trade mark shall not be registered if-

   (a)  the trade mark is similar to an earlier trade mark;

   (b)  the goods or services for which the application for registration is
        made are identical or similar to those for which the
        earlier trade mark is protected; and

   (c)  the use of the trade mark in relation to those goods or services is
        likely to cause confusion on the part of the public.

(4) Subject to subsection (6), a trade mark which is-

   (a)  identical or similar to an earlier trade mark; and

   (b)  proposed to be registered for goods or services which are not
        identical or similar to those for which the earlier trade mark is
        protected, shall not be registered if, or to the extent that, the
        earlier trade mark is entitled to protection under the
        Paris Convention as a well-known trade  mark and the use of the later
        trade mark without due cause would take unfair advantage of, or be
        detrimental to, the distinctive character or repute of the
        earlier trade mark.

(5) Subject to subsection (6), a trade mark shall not be registered if, or to
the extent that, its use in Hong Kong is liable to be prevented-

   (a)  by virtue of any rule of law protecting an unregistered trade  mark or
        other sign used in the course of trade or business (in particular, by
        virtue of the law of passing off); or

   (b)  by virtue of an earlier right other than those referred to in
        paragraph (a) or in subsections (1) to (4) (in particular, by virtue
        of the law of copyright or registered designs), and a person thus
        entitled to prevent the use of a trade mark is referred
to in this Ordinance as the owner of an "earlier right" in relation to the
trade mark.

(6) A trade mark may be refused registration on any one or more of the grounds
mentioned in subsections (4) and (5) only if an objection on those grounds is
raised in proceedings in opposition to the registration under section 44
(opposition proceedings) by the owner of the earlier  trade mark or other
earlier right.

(7) Where the grounds for the refusal of registration exist in respect of only
some of the goods or services for which the application for registration is
made, the refusal shall apply to those goods or services only.

(8) Nothing in this section prevents the registration of a trade  mark where
the owner of the earlier trade mark or other earlier right consents to the
registration.