Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 29

Registration of transactions affecting registered trade mark

(1) On application being made to the Registrar by-

   (a)  a person claiming to be entitled to an interest in or under a
        registered trade mark by virtue of a registrable transaction; or

   (b)  any other person claiming to be affected by a registrable transaction,
        the prescribed particulars of the transaction shall be entered in the 
        register.

(2) The following are registrable transactions-

   (a)  an assignment of a registered trade mark or any right in it;

   (b)  the grant of a licence under a registered trade mark;

   (c)  the granting of any security interest, whether fixed or floating, over
        a registered trade mark or any right in or under it;

   (d)  the making by personal representatives of an assent in relation to a
        registered trade mark or any right in or under it; and

   (e)  an order of a court, or any authority recognized by the Registrar as a
        competent authority, transferring a registered trade mark or any right
        in or under it.

(3) Until an application has been made for registration of the prescribed
particulars of a registrable transaction-

   (a)  the transaction is ineffective as against a person acquiring a
        conflicting interest in or under the registered trade mark in
        ignorance of the transaction; and

   (b)  a person claiming to be a licensee by virtue of the transaction does
        not have the protection of section 35 (rights of licensees generally),
        section 36 (rights of certain exclusive licensees) or section  37
        (rights of sub-licensees under certain exclusive licences).

(4) Where a person becomes the owner or a licensee of a registered  trade mark
by virtue of a registrable transaction, then unless-

   (a)  an application for registration of the prescribed particulars of the
        transaction is made before the end of the period of 6 months beginning
        on the date of the transaction; or

   (b)  the court is satisfied that it was not practicable for such an
        application to be made before the end of that period and that an
        application was made as soon as practicable thereafter, he is not
        entitled to damages or an account of profits in respect of any
        infringement of the registered trade mark occurring after the date of
        the transaction and before the prescribed particulars of the
        transaction are registered.

(5) Provision may be made by the rules as to-

   (a)  the amendment of registered particulars relating to a licence so as to
        reflect any alteration of the terms of the licence; and

   (b)  the removal of such particulars from the register-

        (i)    where it appears from the registered particulars that the
               licence was granted for a fixed period and that period has
               expired; or

        (ii)   where no such period is indicated and, after such period as may
               be prescribed, the Registrar has notified the parties of his
               intention to remove the particulars from the register.

(6) Provision may also be made by the rules as to the amendment or removal
from the register of particulars relating to a security interest on the
application of, or with the consent of, the person entitled to the benefit of
that interest.