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TRADE MARKS ORDINANCE - SCHEDULE 2
DETERMINATION OF WELL-KNOWN TRADE MARKS
[sections 4 & 92]
1. Factors for consideration
(1) In determining for the purposes of section 4 (meaning of "well-known trade mark") whether a trade mark is well known in Hong Kong, the Registrar or the court shall take into account any factors from which it may be inferred that the trade mark is well known in Hong Kong.
(2) In particular, the Registrar or the court shall consider any information submitted to the Registrar or the court from which it may be inferred that the trade mark is, or is not, well known in Hong Kong, including, but not limited to, information concerning the following-(a) the degree of knowledge or recognition of the trade mark in the relevant sectors of the public;
(b) the duration, extent and geographical area of any use of the trade mark;
(c) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the trade mark applies;
(d) the duration and geographical area of any registrations, or any applications for registration, of the trade mark, to the extent that they reflect use or recognition of the trade mark;
(e) the record of successful enforcement of rights in the trade mark, in particular, the extent to which the trade mark has been recognized as a well-known trade mark by competent authorities in foreign jurisdictions; and
(f) the value associated with the trade mark.
(3) The factors mentioned in subsection (2) are intended to serve as guidelines to assist the Registrar and the court to determine whether the trade mark is well known in Hong Kong. It is not a precondition for reaching that determination that information be submitted with respect to any of those factors or that equal weight be given to each of them. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not mentioned in subsection (2). Such additional factors may be relevant alone, or in combination with one or more of the factors mentioned in subsection (2).
(4) For the purpose of subsection (2)(a), "relevant sectors of the public" (有關的公眾界別) includes, but is not limited to-(a) actual or potential consumers of the type of goods or services to which the trade mark applies;
(b) persons involved in channels of distribution of the type of goods or services to which the trade mark applies; and
(c) business circles dealing with the type of goods or services to which the trade mark applies.
(5) Where a trade mark is determined to be well known in at least one relevant sector of the public in Hong Kong, it shall be considered to be well known in Hong Kong.
(6) For the purpose of subsection (2)(e), "competent authorities in foreign jurisdictions" (外地主管當局) means administrative, judicial or quasi-judicial authorities in jurisdictions other than Hong Kong that are competent to determine whether a trade mark is a well-known trade mark, or in enforcing the protection of well-known trade marks, in their respective jurisdictions.
2. Factors not required to be established
For the purpose of determining whether a trade mark is well known in Hong Kong, it is not necessary to establish-(a) that the trade mark has been used, or has been registered, in Hong Kong;
(b) that an application for registration of the trade mark has been filed in Hong Kong;
(c) that the trade mark is well known, or has been registered, in a jurisdiction other than Hong Kong;
(d) that an application for registration of the trade mark has been filed in a jurisdiction other than Hong Kong; or
(e) that the trade mark is well known by the public at large in Hong Kong.