Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 26

Proceedings for relief from groundless threats of infringement proceedings

(1) Where a person threatens to bring an action against another
person (the "threatened person") for infringement of a registered trade  mark
in respect of any use other than-

   (a)  the application of the trade mark to goods or their packaging; or

   (b)  the supply of services under the trade mark,
any person aggrieved by the threat (the "plaintiff") may bring proceedings
before the court for relief under this section.

(2) The relief which may be applied for is any one or more of the following-

   (a)  a declaration to the effect that the threats are unjustifiable;

   (b)  an injunction against the continuance of the threats; and

   (c)  such damages, if any, as have been sustained by the plaintiff by
        reason of the threats.

(3) The plaintiff is entitled to the relief claimed under subsection (2)
unless the defendant shows that the acts in respect of which the action was
threatened constitute or, if done, would constitute, an infringement of
the registered trade mark concerned.

(4) If the defendant shows that the acts in respect of which the action was
threatened constitute or, if done, would constitute, an infringement of a
registered trade mark, the plaintiff is nevertheless entitled to the relief
claimed under subsection (2) if he shows that the registration of the
trade mark is invalid or liable to be revoked in a relevant respect.

(5) The mere notification that a trade mark is registered, or that an
application for registration has been made, does not constitute a threat to
bring an action for infringement for the purposes of this section.

(6) Proceedings for relief under this section may not be brought, or (if
brought) may not proceed, if-

   (a)  the registered owner of the trade mark; or

   (b)  a licensee having power to bring proceedings for infringement of the
        trade mark, begins an action for infringement of the trade mark
        against the threatened  person within 28 days after the threat was
        first made to him and pursues that action with due diligence.

(7) Nothing in this section makes a barrister or solicitor liable to
proceedings under this section for any act done by him in a professional
capacity on behalf of a client.