Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 25

Order for disposal

(1) Where infringing goods, material or articles have been delivered up
pursuant to an order made under section 23 (order for delivery up), an
application may be made to the court-

   (a)  for an order that they be forfeited to such person as the court may
        think fit;

   (b)  for an order that they be destroyed;

   (c)  for an order that they be disposed of outside the channels of commerce
        in such a manner as the court may think fit so as to avoid any harm
        being caused to the owner of the registered trade mark;

   (d)  for an order that they be otherwise dealt with as the court may think
        fit; or

   (e)  for a decision that no such order should be made.

(2) Where there is more than one person interested in the goods, material or
articles, the court may make such order under subsection (1) as it thinks
just, and it may, in particular, direct that the goods, material or articles
be disposed of and the proceeds be divided among them as the court directs.

(3) In considering what order, if any, should be made under subsection (1),
the court shall-

   (a)  take into account the need for proportionality between the seriousness
        of the infringement and the remedies ordered;

   (b)  take into account the interests of third parties; and

   (c)  consider whether other remedies available in proceedings in respect of
        the infringement of the registered trade mark would be adequate to
        compensate the owner of the registered trade mark and any licensee and
        to protect their interests.

(4) The court shall not make an order under subsection (1) permitting the
removal of a registered trade mark from any goods, material or articles to
which it has been unlawfully applied unless the owner of the registered
trade mark consents to the order or, in the absence of such consent, unless
the court is satisfied-

   (a)  that the goods, material or articles will not enter the channels of
        commerce once the registered trade mark has been removed from the
        goods, material or articles; or

   (b)  having regard to the circumstances of the case, that there exist
        exceptional reasons to justify the removal of the registered trade 
        mark from the goods, material or articles without the court being
        satisfied, or wholly satisfied, as to the matter mentioned in
        paragraph

   (a)  .

(5) Provision may be made by rules of court made by the Chief Justice for the
purposes of this section as to the service of notice on persons having an
interest in the goods, material or articles, and any such person is entitled-

   (a)  to appear in proceedings for an order under this section, whether or
        not he was served with notice; and

   (b)  to appeal to the Court of Appeal against any order made under
        subsection (1)(a), (b), (c) or (d), whether or not he appeared.

(6) An order made under subsection (1)(a), (b), (c) or (d) shall not take
effect until the end of the period within which notice of an appeal may, as
provided by those rules of court, be given or, if before the end of that
period notice of appeal is duly given, until the final determination or
abandonment of the proceedings on the appeal.

(7) If the court decides that no order should be made under subsection (1)(a),
(b), (c) or (d), the person who had possession, custody or control of the
goods, material or articles before they were delivered up pursuant to the
order made under section 23 (order for delivery up) is entitled to their
return.

(8) References in this section to a person having an interest in goods,
material or articles include any person in whose favour an order could be made
under this section or under section 54 of the Registered  Designs Ordinance (
Cap 522) or section 111 or 231 of the Copyright  Ordinance ( Cap 528) (which
make similar provision in relation to infringement of registered designs,
copyright and rights in performances).