Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 53

Declaration of invalidity of registration

(1) An application for a declaration of invalidity 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) In the case of bad faith in the registration of a trade mark, the
Registrar himself may apply to the court for a declaration of the invalidity
of the registration.

(3) The registration of a trade mark may be declared invalid on the ground
that the trade mark was registered in contravention of section 11

(absolute grounds for refusal of registration).

(4) Where the trade mark was registered in contravention of section  11
(1)(b), (c) or (d), it shall not be declared invalid if, in consequence of the
use which has been made of it, it has after registration acquired a
distinctive character in relation to the goods or services for which it is
registered.

(5) Subject to subsections (6) and (7), the registration of a trade  mark may
also be declared invalid on the ground-

   (a)  that there is an earlier trade mark in relation to which the
        conditions set out in section 12(1), (2) or (3) (relative grounds for
        refusal of registration) apply; or

   (b)  that there is an earlier right in relation to which the condition set
        out in section 12(4) or (5) (relative grounds for refusal of
        registration) is satisfied.

(6) The registration of a trade mark may not be declared invalid under
subsection (5) if the owner of the earlier trade mark or other earlier right
has consented to the registration.

(7) Where a trade mark has been registered on the ground that there has been
an honest concurrent use of the trade mark and the earlier trade  mark or
other earlier right, as provided for by section 13 (honest concurrent use,
etc.), the registration of a trade mark may not be declared invalid under
subsection (5) unless the Registrar or the court is satisfied that in fact
there had been no honest concurrent use of the trade mark and the
earlier trade mark or other earlier right.

(8) Where the grounds of invalidity exist in respect of only some of the goods
or services for which the trade mark is registered, the trade  mark shall be
declared invalid as regards those goods or services only.

(9) Without affecting transactions past and closed, where the registration of
a trade mark is declared invalid under this section to any extent, the
registration shall to that extent be deemed never to have been made.