Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 52

Revocation of registration

PART VII

PROCEEDINGS AFFECTING REGISTRATION

Revocation, invalidity and variation

(1) An application for the revocation of the registration of a trade mark may
be made by any person, and may be made either to the Registrar or to the
court.

(2) The registration of a trade mark may be revoked on any of the following
grounds, namely-

   (a)  that the trade mark has not been genuinely used in Hong Kong by the
        owner or with his consent, in relation to the goods or services for
        which it is registered, for a continuous period of at least 3 years,
        and there are no valid reasons for non-use (such as import
        restrictions on, or other governmental requirements for, goods or
        services protected by the trade mark);

   (b)  that the trade mark consists of a sign that, in consequence of the
        acts or the inactivity of the owner-

        (i)    has become the common name in the trade for goods or services
               for which the trade mark is registered; or

        (ii)   has become generally accepted within the trade as the sign that
               describes goods or services for which the trade mark is
               registered;

   (c)  that in consequence of the use made of it by the owner or with his
        consent, in relation to the goods or services for which it is
        registered, the trade mark is liable to mislead the public,
        particularly as to the nature, quality or geographical origin of those
        goods or services; or

   (d)  that there has been a contravention of or a failure to observe any
        condition entered in the register in relation to its registration.

(3) For the purposes of subsection (2)-

   (a)  use of a trade mark includes use in a form which differs in elements
        which do not alter the distinctive character of the trade mark in the
        form in which it was registered;

   (b)  use of a trade mark in Hong Kong includes applying the trade  mark to
        goods or to the packaging of goods in Hong Kong solely for export
        purposes; and

   (c)  use of a trade mark in Hong Kong includes, where the trade mark is
        registered in respect of services, use in relation to services
        provided or to be provided outside Hong Kong.

(4) Subject to subsection (5), the registration of a trade mark shall not be
revoked on the ground mentioned in subsection (2)(a) if the use described in
that subsection is commenced or resumed after the expiry of the 3-year period
and before the application for revocation is made.

(5) Any commencement or resumption of the use described in subsection (2)(a)
after the expiry of the 3-year period but within the period of 3 months before
the making of the application for revocation shall be disregarded unless
preparations for the commencement or resumption began before the owner of
the registered trade mark became aware that the application might be made.

(6) Where grounds for revocation exist in respect of only some of the goods or
services for which the trade mark is registered, revocation shall relate to
those goods or services only.

(7) Where the registration of a trade mark is revoked to any extent, the
rights of the owner shall be deemed to have ceased to that extent as from-

   (a)  the date of the application for revocation; or

   (b)  if the Registrar or the court is satisfied that the grounds for
        revocation existed at an earlier date, that earlier date.

(8) For the purposes of subsection (2)(a), the 3-year period may begin at any
time on or after the actual date on which particulars of the trade mark were
entered in the register under section 47(1)

   (registration) .