TRADE MARKS ORDINANCE, 1909

TRADE MARKS ORDINANCE, 1909

No. 40 of 1909.

An Ordinance to amend the law relating to trademarks.

[1Oth December, 1909.]

1. This Ordinance inay be cited as the Trade Marks Ordi-
nance, 1909.
Definitions.

2. In this Ordinance,
(a) The court means the Supreme Court, and includes
a judge sitting in court or in chambers and in original or
summary jurisdiction.
(b) Mark Includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, or any combination
thereof.
(c) The Register means the Register of Trade Marks
kept under this Ordinance.
(d) The Registrar mcans such officer as the Governor
may appoint to be Registrar of Trade Marks.
(e) Registered trade mark means a trade mark which is
actually upon the Register.
(f) Registrable trade mark means a trade mark which
is capable of registration under this Ordinance.
(g) The seal of the Registrar means the seal of the
office in which the Register of Trade Marks is kept.
(h) Trade mark means a mark used or proposed to be
used upon or in connexion with goods for the purpose of
indicating that they are the goods of the proprietor of such
trade mark by virtue of manufacture, selection, certification,
dealing with, or offering for sale.
(1) The Tribunal means the Governor, the court, or the
Registrar.
Seal.
3. The.Registrar shall use a seal having a device and
impression of the Royal Arms with a label surrounding the
same and the inscription Registrar of Trade Marks, Hong-
kong , and the use of such seal from and after the 10th day
of December, 1909, is hereby validated and authorised.

As amended by Law Rev. Ord., 1924.
See post s. 63.





Register of Trade Marks.

4. There shall be kept for the purposes of this Ordinance,
at such office as the Governor shall by notification direct, a
book called the Register of Trade Marks, wherein shall be
entered all registered trade niarks with the dates of their
registration, the names and addresses of their proprietors,
notifications of assignments and transmissions, disclaimers,
conditions, limitations, and such other matters relating to
such trade marks as may be prescribed. The register shall
be kept under the control and management of the Registrar.

5. There shall not be entered in the Register any notice
of any trust expressed, implied, or ocnstructive, nor shall any
such notice be receivable by the Registrar.

6. The Register of Trade Marks existing at the coin-
mencement of this Ordinance shall be incorporated with and
form part of the Register. Subiect to the provisions of
sections 36 and 41, the validity of the original entry of any
trade mark upon the Register so incorporated shall be
determined in accordance with the Ordinance in force at the
date of such entry, and such trade mark shall retain its
original date, but for all other purposes it shall be deemed
to be a trade mark regidered under this ordinance.


7. The register shall during office hours be open to the
inspection of the public, subject to such regulations as may
be prescribed; and certified copies, sealed with the seal of
the Registrar, of any entry therein shall be given to any
person requiring the same on payment of the prescribed fee.

Registrable trade marks.

8. A trade mark must be registered in respect of particular
goods or classes of goods.

9. A registrable trade mark must contain or consist of at
least one of the following essential partictilars :-
(1) the name of a company, individual, or firm represented
in a special or particular manner;
(2) the signature (in other than Chinese characters) of the
applicant for registration or of some predecessor in his
business
As amended by law rev. Ord., 1924.





(3) an invented word or invented words;

(4) a word or words having no direct reference to the
character or quality of the goods, and not being according
to its ordinary signification a geographical name or a
surname ;

(5) any other distinctive mark;
but a name, signature, or word or words, other than such as
fall within the descriptions in paragraphs (1), (2), (3), and
(1), shall not, except by order of the Governor or the court,
bc deemed a distinctive mark :

Provided always, that any special or distinctive word
or words, letter, numeral, or combination of letters or
numerals used as a trade mark by the. applicant or his
predecessors in business before the 13th day of August,
1875, which has continued to be used (either in its original
form or with additions or alterations not substantially
affecting the identity of the same) down to the date of the
application for registration, shall be registrable as a trade
niark mider this Ordinance, if it is already registered in the
United Kingdom as an old mark used before the said date.
For the purposes of this section, distinctive shall mean
adapted to distinguish the goods of the proprietor of the trade
mark from those of other persons.

In determining whether a trade mark is so adapted, the
Tribinial may, in the case of a trade mark in actuuse, take
into consideration the extent to which such user has rendered
stich trade mark in fact, distinctive for the goods with respect
to which it is registered or proposed to be registered.

10. A trade mark may be limited in whole or in part to
one or more specified colours, and in such case the fact that
it is so limited shall be taken into consideration by -any
Tribunal having to decide on the distinctive character of such
trade mark. Tf and so far is a trade mark is registered
without limitation of colour, it shall be deemed to be regis-
tered for all colours.

11. It shall not be lawful to register as a trade mark or
part of a trade mark any matter, the use of which would by
reason of its being calculated to deceive or otherwise be
disentitled to protection in a court of justice, or would be
contrary to law or morality, or any scandalous design.





registration of trade marks.

12.-(1) Any person claiming to be the proprietor of a
trade mark who is desirous of registering the same must
apply in writing to the registrar in the prescribed manner.
[(2), rep. No. 21. of 1911.]

(3) Subject to the provisions of this Ordinance, the
registrar may refuse in application, or may accept it,
absolutely or subject to condition amendments, or modifica-
tions.

(4) In case of any such refusal or conditional acceptance,
the Registrar shall, if required by the applicant, state in
writing and communicate to the applicant the grounds of his
decision and the materials used by him in arriving.. at the
same, and such decision shall. be subject to appeal to the
Governor or the court at the option of the applicant. The
Tribunal shall, if required, llear the applicant and the
registrar, and shall make an order determining whether, and
subject to what conditions, amendments, or modifications, if
any, the application is to be accepted.

(5) Appeals under this section shall be heard on the
materials so stated by the Registrar to have been used by
him in arriving at his decision, and no further grounds of
objection to the acceptance of the application shall be allowed
to be taken by the Registrar, other than those stated by him
except by leave of the, Tribunal. hearing the appeal. Where,
any further grounds of objection are taken, the applicant shall
he entitled to withdraw his application without payment of
costs on giving notice.


(6) The Eegistrar or the Governor or the court, as the case
may be, may at any time, whether -before or after acceptance,
correct any error in or in connexion with the application, or
may permit the applicant to amend his application upon such
terms as he or it may think fit.

13. when an application for registration of a trade mark
has been accepted, whether absolutely or subject to condi-
tions, the applicant shall, as soon as may be after such
acceptance, cause the application, as accepted, to be adver-
tised in the prescribed manner. such advertisement shall
set forth all conditions subject to which the application has
been accepted.







14.-(1) Any person may, within the prescribed time from
thedlate of the advertisement of an application for registra-
tion of a trade mark, give notice to the Registrar of opposi-
tion to such registration.

(2) Such notice shall be given in writing in the prescribed
manner and shall include a statement of the grounds of
opposition.

(3)) The Registrar shall sond a copy of such notice to the
applicant and, within the prescribed time after the receipt of
such notice, the, applicant shall send to the Registrar, in the
prsecribed manner, a counter-statement of the grounds on
which he relies for his -application, and if he does not do so
he shall be deemed to have abandoned his application.

(4) If the applicant sends stich counter-statement, the
Registrar shall furnish a copy thereof to the persons giving
notice of opposition, and shall after hearing the parties, if so
required, and considering the evidence, decide whether, and
subject to what conditions, registration is to be permitted.

(5) The decision of the Registrar shall be subject to
appeal to the, court or, with the consent of the parties, to the
governor.

(6) All appeal under this section shall be made in the
prescribed manner, and on such appeal the Tribumal shall,
if required, hear the parties and the Registrar, and shall
make an order determining whether and subject to what
conditions, if any, registration is to be permitted.

(7) On the hearing of any such appeal, any party may,
either in the inanner prescribed or by special leave of the
Tribunal, bring forward further material for the considera-
tion of the Tribunal.

(8) In proceedings under this section, no further ground,-,
of objection to the registration of a trade mark shall be
allowed to be taken by the opponent or the Registrar other
than those stated by the opponent as hereinbefore provided,
except by leave of the Tribunal hearing the appeal. Where
any further grounds of objection are taken, the applicant
shall be entitled to withdraw his application without payment
of the costs of the opponent on giving notice as prescribed.

As amended by Law ev. Ord., 1924.





(9) In any appeal under this section, the Tribunal may,
after hearing the Registrar, permit the trade mark proposed
to be registered to be modified in any manner not substan-
tially affecting the identity of such trade mark, but in such
case the, trade mark as so modified shall be advertised in the
prescribed manner before being registered.

(10) The Registrar or, in the case of an appeal to the
Governor, the Governor, shall have power in proceedings
under this section to award to any party costs of such pro-
ceedings or any part thereof, and to direct how and by what
parties and on what scale they are to be paid. Such costs
shall be taxed before the Registrar of the Supreme court
and shall be recoverable in the same manner as costs in an
action.
(11) If a party giving notice of opposition or of appeal
neither resides nor carries on business in the Colony, the
Registrar or the Tribunal may require stich party to give
security for costs of the proceedings before it relative to such
opposition or appeal and, in default of such security being
duly given, may treat the opposition or appeal as abandoned.

15. If a trade mark contains parts not separately registered
by the proprietor as trade marks, or if it contains matter
common to the trade. or otherwise of a non-distinctive
character, the Registrar or the Governor or the court, in
deciding whether such trade mark shall be entered or shall
remain upon the Register, may require, as a condition of its
being upon the Register, that the proprietor shall disclaim
any right to the exclusive use of any part or parts of stich
trade mark, or of all or any portion of such matter, to the
exclusive use of which the Tribunal holds him not to be
entitled, or that he shall make such other disclaimer as the
Tribunal may consider needful for the purpose of defining
his rights under such registration: Provided always that
no disclaimer upon the Register shall affect any rights of the
proprietor of a trade mark except such as arise out of the
registration of the trade mark in respect of which the
disclaimer is made.

16. When an application for registration of a trade, mark
has been accepted and has not been opposed, and the time
for notice of opposition has expired, or, having been opposed,
the opposition has been decided in favour of the applicant,
the Registrar shall register the said trade mark, and the





trade mark, when registered, shall be registered as of the
date of the application for registration, and such date shall
be deemed for the purposes of this Ordinance to be the date
of registration.

17. On the registration of a trade inark, the Registrar shall
issue to the applicant a certificate In the prescribed form of
the registration of such trade mark under the hand and seal
of the Registrar.


18. Where registration of a trade mark is not completed
within twelve months from the date of the application by
reason of default on the part of the applicant, the Registrar
may, after giving notice of the non-completion to the
applicant in writing In the prescribed manner, treat the
application as abandoned unless it is completed within the
time specified in that behalf in such notice.

Identical trade marks.

19. Kxcept in the case of trade marks in use' before the
13th day of August, 1875, which are registered in the United
Kingdom as old marks used before the said date, no trade
mark shall be registered in respect of any goods or descrip-
tion of goods which is identical with one belonging to a
different proprietor which is already on the Register with
respect, to such goods or deseription of goods, or so nearly
resembling such a trade mark as to be calculated to deceive.

20. Where each of several persons claims to be proprietor
of the same trade mark, or of nearly identical trade marks
in respect of the same goods or description of goods, and to
be registered as such proprietor, the Registrar may refuse
to register any of them until their rights have been de-
termined by the court, or have been settled by agreement in
a manner approved by him or on appeal by the court.

21. The. Registrar may reftise to register any trade mark
if it is proved to his satisfaction by the person opposing the
application for registration that such mark is identical with,
or so nearly resembles as to be calculated to deceive, any
trade mark which is already registered (in respect of goods
of the same description as those in respect of which regis-
tration in Hongkong is applied for) in a country or place
from which goods of that description originate:





Provided always that no application to shall be
refused under this section in the following cases

(a) if the applicant proves that he. or his predecessors in
business have in hongkong in connexion with such goods as,
aforesaid continuously -used the trade mark, the registration
of which is applied for, from a date anterior to the date of
the registration of the other trade mark in such countn, or
place of origin; or

(7)) unless the opponent gives an undertaking to the
satisfaction of the Registrar that he will, within three
inonths from the giving of the notice of opposition, apply
for registration in Hongkong of the trade mark- so registered
in the country or place of origin, and will take all necessarY
steps to complete such registration.

assignment

22. A trade mark when registered shall be assigned and
transmitted only in connexion with the goodwill of the
business concerned in the goods for which it has been
registered, and shall be determinable with that goodwill,
But nothing in this section contained shall be deemed to
affect the right of the proprietor of a registered trade mark
to assign the right to use the same in any British possession
or protectorate or foreign country in connexion with any
goods for which it is registered together with the goodwill
of the business therein in such goods.

23. In any case where from any cause, whether by reason
of dissolution of partnership or otherwise, a person ceases to
carry on business, and the goodwill of such person does not
pass to one successor but is divided, the Registrar may
(subject to the provisions of this Ordinance as to associated
trade marks), ou the application of the parties interested,
permit an apportionment of the reaistered trade inarks of the

person among the persons in fact continuing the business,
subject to such conditions and modifications, if any, as he
may think necessary in the public interest. Any decision
of the Registrar under this section shall be subject to appeal
to the court.





Associated trade marks.

24. if application is inadc for the registration of a trade
mark so closely resemblins, a trade mark of the applicant
already on the Register for the same goods or description of
goods as in the opinion of the Registrar to be calculated to
deceive or cause confusion if used by a person other than the
applicant, the Tribunal hearing the applicant may require
as a condition of registration that such trade marks shall be
entered on the register, associated trade marks.


25. If the proprietor of a trade mark claims to be entitled
to the exchisive use of any portion of such trade mark
separately, he may apply to register the saine as separate
trade marks. Each such separate trade mark must satisfy
all the conditions and shall have all the incidents of an
independent trade mark, except that when registered it and
the trade mark of which it forms a part shall be deemed
to be associated trade marks and shall be entered on the
register as such, but the user of the whole trade mark shall
for the purposes of. this Ordinance be deemed to be also a
user of such registered trade marks belonging to the same
proprietor as it contains.

26. When a person claiming to be the proprietor of
several trade marks for the same description of goods which,
while resembling each other in the material particulars
thereof, yet differ in respect of-

(1) statements of the goods fOr which they are respectively.
used or proposed to be used.; or

(2) statements of number, price, quality , or names of
places; or

(3) other matter of a non-distinctive character which does,
not substantially affect the identity of the trade, mark; or


(4) colour.

seeks to register affect trade marks, they may be registered
as. a series in one registration. All the trade marks in a
seres of trade marks so registered shall be deemed to be,
and shall be registered as, associated trade marks.








27. Associated trade marks shall be assignable or trans-
missible only as a whole and not separately, but they shall
for all other purposes be deemed to have been registered as
separate trade marks: Provided that, where under the
provisions of this Ordinance user of a registered trade mark
is required to be proved for any purpose, the Tribunal may,
if and so far as it shall think right, accept user of an
associated registered trade mark, or of the trade mark with
additions or alterations notsubstantially affecting its
as in equivalent for such user.

Renewal, of registration.

28. The registration of a trade mark shall be for a period
of fourteen years, but may be renewed from time to time in
accordarice with the provisions of this Ordinance.

29. The Registrar shall, on application made by the
registered proprietor of a trade mark in the prescribed man-
ner and within the prescribed period, renew the registration
of such trade mark for a period of fourteen years from the
expiration of the original registration or of the, last renewal
of registration, as the case may be, which date is herein
termed the expiration of the last registration


30. At the prescribed time before the expiration of the
registration of a trade mark, the Registrar shall send notice
in the prescribed manner to the registered proprietor at his
registered address of the date at which the existing registra-
tion will expire and the conditions as to payment of fees and
otherwise upon which a renewal of such registration may be
obtained, and if at the expiration of the tinle prescribed in
that behalf, such conditions have not been duly complied
with, the Registral. may rernove such trade mark from the
register, subject to such conditions (if any) as to its
restoration to the register as may be prescribed.

30A.-(1) Notwithstanding anything contained in this
Ordinance or in the rules made thereunder, neither omission
on the part of the Registrar to send the notice prescribed by
section 30, nor the non-receipt by the registered proprietor of
any such notice, nor omission on the part of the Registrar to
advertise the fact of non-payment of the renewal fee., shall be

As amended by No. 7 of 1920 and Law Rev. Ord., 1924.





any bar to the removal from the register of any trade mark
the registration of which has expired and has not been
renewed, and any such trade mark may be removed from the
register upon or after the expiration of the period for which
it was registered.
(2) This section shall apply only to such trade marks as
were vested in the Custodian of Enemy Property by virtue
of the provisions of section 30 of the Alien Enemies (Wind-
ing up) Ordinance, 1914.
(3) This section shall take effect as from and after the 4th
day of August, 1914.

30B. It shall be. lawful for the Governor in Council to
make any regulations whatsoever which he may think
desirable for the purpose of giving effect to any of the
provisions of the Treaty of Peace between the Allied and
Associated Powers and Germany, signed at Versailles on the
28th day of June, 1919, relating to trade marks.

31. Where a trade mark has been removed from the reg-
ister for non-payment of the fee for renewal, such trade
mark shall, nevertheless, for the purpose of any application
for registration during one year next after the date of such
removal, be deemed to be a trade mark which is already reg-
istered, unless it is shown to the satisfaction of the Registrar
that there has been no bona fide trade user of such trade
mark during the two years immediately preceding such removal.

Correction and rectification of the Register.

32. The Registrar may, on request made in writing by
the registered proprietor or by some person entitled by law
to act in his name,-
(1) correct any error in the name or address of the regis-
tered proprietor of a trade mark; or
(2) enter any change in the name or address of the person
who is registered as proprietor of a trade mark; or
(3) cancel the entry of a trade mark on the register; or
(4) strike out any goods or classes of goods from those for
which a trade mark is registered; or

As amended by No. 7 of 1920 and Law rev. Ord., 1924.





(5) enter a disclaimer or memorandum relating to a trade
mark which does not in any way extend the rights given by
the existing registration of such trade mark.


Any decision of the Registrar under this section shall be
subject to appeal to the court.

33. Subject to the provisions is of this Ordinance, where a
person becomes entitled to a registered trade mark by
assignment, transmission, or other operation of law, the
Registrar shall, on request made in the prescirbed manner
and on proof of title to his satisfaction, cause the name and
address of such person to bc entered on the Rogister as Pro-
prietor of the trade mark.

Any decision of the Registrat. under this section shall be
subject to appeal to the court.

34. The registered proprietor of any trade mark may
apply in writing to the Registrar for leave to add to or alter
such trade mark in any manner not substantially affecting
the identity of the same, and the Registrar may refuse such
leave or may grant the same on such terms as he may think
fit, but any such refusal or conditional permission shall be
subject to appeal to the court. If leave be granted, the
trade mark as altered shall be advertised in the prescribed
manner.

35. Subject to the provisions of this Ordinance,-

(1) the court may, on the application in writing of any
person aggrieved by the non-insertion in or omission from the
Register of any entry, or by any entry made in the Register
without sufficient cause, or by any entry wrongly remaining
on the Register, or by any error or defect in any entry in the
Register, make such order for making, expunging, or varying
such entry, as it may think fit;

(2) the court may in any proceeding under this section
decide any question that it may be necessary or expedient to
decide in connexion with the rectification of the register;

(3) in case of fraud in the registration or transmission of
a registered trade mark, the Registrar may hirnself apply to
the court under the provisions of this section;





(1) any order of the court rectifying the Register shall

direct that notice of the rectification shall be served upon the
Registrar in the prescribed nianner, who shall upon receipt
of stich notice rectify the Register accordingly.

36. No trade mark which is upon the Register at the
commencement of this Ordinance and which under this
ordinance is a registrable trade mark shall be removed from
the register on the ground that it was not registrable under
the Ordinance on force at the date of its registration. But
nothing in this section contained shall subject any person to
any liability in respect of any act or thing done before the
commencement of this ordinance to which he would not,
have been subject under the Ordinance then in force.

37. a registered trade mark may, on the application to
the court of any person aggrieved, be taken off the Register
in respect of any of the goods for which it is registered, on
the ground that it was registered by the proprietor or a
predecessor in title without any bona fide intention to use
the same in connexion with such goods, and that there has
in fact been no bond fide user of the same in connexion
therewith, or on the ground that there has been no bona^ fide
user of such trade mark in connexion with such goods during
the five years immediately preceding the application, unless
in either case such non-user is shown to be due to special
circumstances in the trade, and not to any intention not to
use or to abandon such trade mark in respect of such goods.

effect of registration.

38. subject to provisions of this Ordinatice,-

(1) the person for the time being entered in the Register
as proprietor of a trade mark shall, subject to any rights
appearing from such register to be vested in any other
person, have power to assign the same, and to give effectual
receipts for any consideration for such assignment;
(2) any equities in respect of a trade mark may be enforced
in like manner as in respect of any other property.

39. Subject to the provisions of section 41 and to any
limitations and conditions entered upon the register, the
registration of a person as proprietor of a trade mark shall,
if valid, give to such person the exchisive right to the use of





such trade mark upon or in connexion witb the goods in
respect of which it is registered. Provided always that
where two or more persons are registered proprietors of the
same (or substantially the same) trade mark in respect of the
same goods, no rights of exclusive user of such trade mark
shall, except so far as their respective rights shall have been
defined by the court, be acquired by any one of such persons,
as against any other by the registration thereof, but each of
such persons shall otherwise have the same rights as If he
were the sole registered proprietor thereof.

40. In all legal proceedings relating to a relgistered trade

mark (including applications under section 35), the fact that

a person is registered as proprietor of such trade mark shall
be prima facie evidence of the validity fo the original
registration of such trade mark and of all subsequent assign-
ments and transmissions of the same.

41. In all legal proceedings relating to a registered trade,
mark (including applications under section 35), the original

registration of such trade mark shall after the expiration of
seven years from the date of such original registration (or
seven years from the passing of this Ordinance, whichever
shall last happen) be taken to be valid in all respects unless
slich original registration was obtained by fraud, or unless
the trade mark offends against the provisions of section 11 :

Provided that nothing in this Ordinance shall entitle the
proprietor of a registered trade mark to interfere with or
restrain the user by any person of a similar trade mark upon
or in connexion with goods upon or in connexion with which
siieh person has, by himself or his predecessors in business,
continuously used such trade from a date anterior to
the user of the first-mentioned trade mark by the proprictor
thereof or his predecessors in

42.-(1) The court may, on the application in writing
made within seven years from the registration of a trade
mark in Hongkong by any person aggrieved by such regis-
tration, remove such trade mark from the Register, if it is
proved to the satisfaction of the court that such trade mark
is identical with, or so nearly resembles as to be calculated
to deceive, any trade mark which was, prior to the registra-
tion in Hongkong of the first-mentioned trade mark,
registered (in respect of goods of the same description as





those in respect of which the first-mentioned trade mark is
registered in Hongkong) in a country or place from which.
goods of that description originate:

provided always that no trade mark shall be removed from
the Register under this section in the following cases:-

(a) if the proprietor of the other trade mark consented to
the registration in hongkong or the first-mentioned trade.
mark ; or

(b) If the proprietor of the trade mark registered in
Hongkong proves that he or his predecessors in business
have, continuously used such trade mark in Hongkong in
connexion with such goods as aforesaid from a date anterior
to the date of the registration of the other trade mark in the
country Or place of origin ; or

(c) unless the applicant proves either that within the five
years immediately preceding the making of the application
under this section there has been bona fide user in connexion
with such goods as aforesaid in Hongkong of the trade mark
registered in the comitry or place of origin, or that the
specal circumstances of the trade account for the non-user
of such trade mark in Hongkong within the same period, or
that the trade mark so registered in the country or place of
origina was first registered there within the like, Period
of five years, and in either event gives an undertaking to tbe
satisfaction of the Registrar that he will within three months
from the making of the application under this section apply
for registration in hongkong of the trade mark so registered
in the country or place of origin, and will take all necessary
steps to complete such registration.

(2) All applications under this section shall be' heard in
open court in the supreme court in its original jurisdiction.

43. -No person shall be entitled to institute any proceed-
ings to recover damages for the infringement of a trade mark
not registered in the Colony.

44. In an action for the infringement of a trade mark
the court trying the question of infringement shall admit
evidence of the usages of the trade in respect to the get-up
of the goods for which the trade mark is registered, and of
any trade marks or get-up legitimately used in connexion
with such goods by other persons.





45. No registration under this Ordinance shall interfere.
with any bona fide use by a person of his own name or place
of business, or that of any of his predecessors in business, or
the use by any person of any bond description of the
character or quality of his goods.

46. Nothing in this Ordinance contained shall be deemed.
to affect rights of action against any person for passing, off

goods as those of another person or the remedies in respect
thereof.

Legal proceedings.

47. In any legal- proceeding in which the validity of the
registration of a registered trade mark comes into question
and is decided in favour of the proprietor of such trade
mark, the court may certify the same., and if it so certifies,
then in any stibseqttent legal proceeding in which such
validity comes into question the proprietor of the said trade
mark on obtaining a final order or judgment in his favour
shall have his full costs, charges, and expenses as between
solicitor and client, unless in such subsequent proceeding
the Court cerfifies, that he ought not to have the same.

48. In any legal proceeding in which the relief sought

includes alteration or rectification of the Register, the Reg-
istrar, shall have the right to appear and be heard, and
shall appear if so directed by the court. Unless otherwise
directed by the court,, the registrar in lieu. of appearing and
being heard may submit to the court a statement in writing.
signed -by him, giving particulars of the proceedings before
hini in relation to the matter in issue or of the grounds
of any decision given by him affecting. the same or of the
practice of the office in like cases, or of sneh other matters
relevant to the issues, and within his knowledge as such
registrar, as he shall think fit, and such statement shall be
deemed to form part of the evidence in the proceeding.

Costs.

49. In all proceedings before the court under this ord-
nance, the costs of the Registrar shall be in the discretion of
the court, but the registrar shall not be ordered to pay the
costs of any other of the parties.





evidence

50. In any proceedings mider this Ordinance before the
Registrar or the governor the evidence shall be given by
statutory declaration in the absetice of directions to the
contrary, but, in any case in which he shall think it right
to do, the Registrar or the Governor may (with the consent
of the parties) take evidence viva^ voce in lieu of or in
addition to evidence by declaration. Any such statutory
declanition may in the of appeal be used before the
court in lieu of evidence by affidavit, but if so used shall
have all the incidents and consequences of evidence by
affidavit.

In case any part of the evidence is taken viva voce, the
Registrar or the Governor shall in respect of requiring
the attendance of witnesses and taking evidence on oath
be in the same position in all respects as a special referee of
the Supreme Court.

51. Printed or written copies or extracts of or from the
Register, purporting to be certified by the Registrar under
his seal, shall be admitted in evidence in all courts and in
all proceedings without further proof or production of the
originals.

52. A certificate purporting to bc mider the hand of the
Registrar as to any entry, matter, or thing which he is
withorised by this Ordinance to make or do, shall be prima
facie evidence of the entry having been made, and of the
contents thereof, and of the matter or thing having been
done. or not done.

Powers and dutics of Registrar of Trade Marks.

53. Where any discretionary or other power is given
to the Registrar by this Ordinance, he shall not exercise that
power adversely to the applicant for registration or the
registered proprietor of the trade mark in question without
(if duly required so to do within the prescribed time) giving
Such applicant or registered proprietor all opportunity of
being beard.





54. Except where expressly given by the provisions, of
this Ordinance, there shall. be, no appeal from a decision of
the Registrar otherwise than to the governor, but the court.,
in dealing with any question of the rectification of the
Register (including all applications under section 35) shall
have power to review any decision of the Registrar relating
to the entry in question or the correction sought to be made.

55. When by this Ordinance any act has to be done by or
to any Person in connexion with a trade mark or proposed
trade mark or any procedure relating thereto, such act may,
under and in accordance with rules made under this
Ordinance, be done by or to an agent of such party duly
authorised in the prescribed manner.

Appeals to the Governor.

55A. where under this Ordinance an appeal is made
to the Governor, he may refer such appeal to the court in
lieu of hearing and deciding it himself, but unless the
governor so refers the appeal it shall be heard and decided
by him and his decision shall be final.

Rules.

56. Subject to the provisioms. of this Ordinance, it shall
be lawful for the Governor in Council to make such rules,
prescribe such forms, and generally do such things as he,
thinks expedient,-

(a) for regulating the practice under this Ordinance

(b) for classifying goods for the purposes of registration of
trade marks;

(c) for making or requiring duplicates of trade marks and

other documents;

(d) for securing and regulating the publishing and selling

or distributing, in such manner as the Governor in council
thinks fit, of copies of trade marks and other documents; and

(e) generally, for regulating the business of the office in
relation to trade marks and all things by this ordinance
placed under the, direction or control of the





Fees.

57. There shall be pald in respect of applications and
registration and other matters under this Ordinance such
fees as may be prescribed and notified bY the Governor in
council.
special trade marks

58. where any association or person -undertakes the
examination of any goods in respect of origin, material, mode
of manufacture, qu ality, accuracy, or other characteristic,
and certifies the result of such examination by mark used upon
or in connexion with such goods, the Governor in Council
may, if he shall judge it to be to the public advantage, permit
such association or person to register such mark as a trade
mark in respect of such goods, whether or not such associa-
tion or person. be a trading association or under or possessed
of a goodwill in connexion with such examination and
certifying. When so registered such trade mark shall be
deemed in all respects to be a registered trade mark, and
such association or person to be the proprietor thereof, save
that such trade mark shall be transmissible or assignable
only by permission of the governor in council.

Offences.

59. Every person who makes or causes to be made a false
entry in the Register kept under this Ordinance or a writing
purporting to he a copy of an entry in any such
register, or produces or tenders or cause., to be produced or
rendered in evidence such entry or writing, knowing the
same to be false, shall be guilty of a misderneanor.

60. (1) every person who represents a trade mark as
registered in Hongkong which is not so registered shall upon
summary conviction be liable to a fine not exceeding fifty
dollars.

(2) A person shall be deemed, for the purposes of this
Ordinance, to represent that a trade mark is registered in
hongkong, if he uses In connexion with the trade mark the
words registered in hongkokng, or any words expressing
or implying that registration has been obtained in Hongkong
for the trade mark.

as amended by law rev. ord., 1924.








61. Every person who, in connexion with any trade,
business, calling or profession,

(1) without the authority of His Majesty, uses the Royal
Army (or arms so closely resembling the same as to be
calculated to deceive.) in such manner as to be calculated to
load to the belief that he is duly authorised so to use the
Royal Arms; or

(2) without the authority of His Majesty or a member of
the Royal Family, itses any device, enblem or title. in such
manner as to be calculated to lead to the belief that he is
employed by or supplies goods to his majesty or to such
member of the Royal Family,

may at the suit of any person Who is authorised to use such
arms or such device, emblem, or title, or who is authorised
by the Governor to take proceedings in that behalf, be
restrained by injunction from continuing so to use the same:
Provided that nothing in this section shall be construed as,
affecting. the right, If any, of the proprietor of a trade mark
containing any such arms, device, emblem, or title to continue
to use such trade mark.

[s. 62, rep. No. 12 of 1912.]

68. The Governor may appoint the registrar under this
Ordinance immediately after its commencement and there-
after all matters and things hitherto transacted and done by
the Colonial Secretary under the Trade Marks Ordinance,
1898, may be transacted and done by the registrar, but in
all other respects, this ordinance shall come into operation
on the 1st day of April, 1910.

No. 41 of 1909, incorporated No. 15 of 1901.

No. 42 of 1909, repealed by no. 20 of 1913.

No. 43 of 1909, repealed No. 8 of 19-1.2.

No. 44 of 1909, incorporated in no. 16 of 1901.

No. 45 of 1909, repealed No. 8 of 1.910.

No. 46 of 1909, repealed by No. 9 of 1911.
As amended by Law Rev. Ord., 1924,
[Originally No. 40 of 1909. No. 7 of 1920. Law Rev. Ord., 1924.] Short title. 5 Edw. 7, c. 15, s. 1. Interpretation. 5 Edw. 7, c. 15, s.1. Interpretation. 5 Edw. 7, c. 15, s. 3. Register of Trade Marks. 5 Edw. 7, c. 15, s. 4. Trust not to be entered on Register. 5 Edw. 7, c. 15, s. 5. Incorporation of existing Register. 5 Edw. 7. C. 15,s. 6. Inspectioin of and extract from Register. 5 Edw. 7, c. 15. S. 7. Trade mark must be for particular goods. 5 Edw. 7, c. 15, s. 8. Registrable trade marks. 5 Edw. 7, c. 15, s. 9. Coloured trade marks. 5 Edw. 7, c. 15, s. 10. Restriction on registration 5 Edw. 7, c. 15, s. 11. Application for registration 5 Edw. 7, c. 15, s. 12. Advertisement of registration 5 Edw. 7. C. 15, s. 13. Opposition to registration. 5 Edw. 7, c. 15, s. 14. Disclaimers. 5 Edw. 7, c. 15, s. 15. Date of registation. 5 Edw. 7, c. 15, s. 16. Certificate of registration. 5 Edw. 7, c. 15, s. 17. Non-completion of registration. 5 Edw. 7, c. 15, s. 18. Indentical marks. 5 Edw. 7, c. 15, s. 19. Rival claims to identical marks. 5 Edw. 7, c.15, s. 20. Protection of marks registered in country of origin. Assignment and transmissioin of trade marks. 5 Edw. 7, c. 15, s. 22. Apportionment of marks on dissolution of dissolution of partnership. 5 Edw. 7, c. 15, s. 23. Associated trade marks. 5 Edw. 7, c. 15, s. 24. Combined trade marks. 5 Edw. 7, c. 15, s. 25. Series of trade marks 5 Edw. 7, c. 15, s. 26. Assignment and user of associated trade marks. 5 Edw. 7, c. 15, s. 27. Duration of registration. 5 Edw. 7, c. 15, s. 28. Renewal of registration. 5 Edw. 7, c. 15, s. 29. Procedure on expiry of period of registration. 5 Edw. 7, c. 15, s. 30. Omission to send, and non-receipt of, notice of intended removal no bar to removal of expired trade mark vested in Custodian. Ordinance No. 28 of 1914. Power to make regulations to give effect to certain provisions of the Treaty of Versailles. Status of unrenewed trade marks. 5 Edw. 7, c. 15, s. 31. Correction of Register. 5 Edw. 7,c. 15, s. 32. Resgistration of assignments. 5 Edw. 7, c. 15, s. 33. Alteration of registered trade mark. 5 Edw. 7, c. 15, s. 34. Rectification of Register. 5 Edw. 7, c. 15, s. 35. Trade marks registered under previous enactments. 5 Edw. 7, c. 15, s. 36. [ef. S. 6.] Non-user of trade mark. 5 Edw. 7, c. 15, s. 37. Powers of registered proprietor. 5 Edw. 7 c. 15, s. 38. Rights of proprietor of trade mark. 5 Edw. 7, c. 15, s. 39. Registration to be prima facie evidence of validity. 5 Edw. 7, c. 15, s. 40. Registration to be conclusive after seven years. 5 Edw. 7, c. 15, s. 41. [ef. Ss. 6 and 39.] Removal of mark on proof of prior registration in country of origin. Unregistered trade mark. 5 Edw. 7, c. 15, s. 42. Infringement. 5 Edw. 7, c. 15, s. 43. User of name, address, or description of goods. 5 Edw. 7, c. 15, s. 44. Passing off action. 5 Edw. 7, c. 15, s. 45. Certificate of validity. 5 Edw. 7, c. 15, s. 46. Registrar to have notice of proceeding for rectification 5 Edw. 7, c. 15, s. 47. Costs of proceedings before court. 5 Edw. 7, c. 15, s.48. Mode of giving evidence. 5 Edw. 7, c. 15, s. 49. Sealed copies to be evidence. 5 Edw. 7, c. 15, s. 50. Certificate of Registrar to be evidence. 5 Edw. 7, c. 15, s. 51. Execise of discretionary power by Resgistrar. 5 Edw. 7, c. 15, s, 53. Appeal from Registrar. 5 Edw. 7, c. 15, s. 54. Recognition of agents. 5 Edw. 7, c. 15, s. 55. Appeals to the Governor. Power of Govenor in Council to make rules. 5 Edw. 7, c. 15, s. 60. Fees. 5 Edw. 7, c. 15, s. 61. Standardization trade marks. 5 Edw. 7, c. 15, s. 62. Falsification of entries in Register. 5 Edw. 7, c. 15, s. 66. Penalty on falsely represneting a trade mark as registered. 5 Edw. 7, c. 15, s. 67. Unauthorised assumption of Royal Arms, 5 Edw.7, c. 15, s. 68. Commencement of Ordinance. Ordinance No. 6 of 1898.

[Originally No. 40 of 1909. No. 7 of 1920. Law Rev. Ord., 1924.] Short title. 5 Edw. 7, c. 15, s. 1. Interpretation. 5 Edw. 7, c. 15, s.1. Interpretation. 5 Edw. 7, c. 15, s. 3. Register of Trade Marks. 5 Edw. 7, c. 15, s. 4. Trust not to be entered on Register. 5 Edw. 7, c. 15, s. 5. Incorporation of existing Register. 5 Edw. 7. C. 15,s. 6. Inspectioin of and extract from Register. 5 Edw. 7, c. 15. S. 7. Trade mark must be for particular goods. 5 Edw. 7, c. 15, s. 8. Registrable trade marks. 5 Edw. 7, c. 15, s. 9. Coloured trade marks. 5 Edw. 7, c. 15, s. 10. Restriction on registration 5 Edw. 7, c. 15, s. 11. Application for registration 5 Edw. 7, c. 15, s. 12. Advertisement of registration 5 Edw. 7. C. 15, s. 13. Opposition to registration. 5 Edw. 7, c. 15, s. 14. Disclaimers. 5 Edw. 7, c. 15, s. 15. Date of registation. 5 Edw. 7, c. 15, s. 16. Certificate of registration. 5 Edw. 7, c. 15, s. 17. Non-completion of registration. 5 Edw. 7, c. 15, s. 18. Indentical marks. 5 Edw. 7, c. 15, s. 19. Rival claims to identical marks. 5 Edw. 7, c.15, s. 20. Protection of marks registered in country of origin. Assignment and transmissioin of trade marks. 5 Edw. 7, c. 15, s. 22. Apportionment of marks on dissolution of dissolution of partnership. 5 Edw. 7, c. 15, s. 23. Associated trade marks. 5 Edw. 7, c. 15, s. 24. Combined trade marks. 5 Edw. 7, c. 15, s. 25. Series of trade marks 5 Edw. 7, c. 15, s. 26. Assignment and user of associated trade marks. 5 Edw. 7, c. 15, s. 27. Duration of registration. 5 Edw. 7, c. 15, s. 28. Renewal of registration. 5 Edw. 7, c. 15, s. 29. Procedure on expiry of period of registration. 5 Edw. 7, c. 15, s. 30. Omission to send, and non-receipt of, notice of intended removal no bar to removal of expired trade mark vested in Custodian. Ordinance No. 28 of 1914. Power to make regulations to give effect to certain provisions of the Treaty of Versailles. Status of unrenewed trade marks. 5 Edw. 7, c. 15, s. 31. Correction of Register. 5 Edw. 7,c. 15, s. 32. Resgistration of assignments. 5 Edw. 7, c. 15, s. 33. Alteration of registered trade mark. 5 Edw. 7, c. 15, s. 34. Rectification of Register. 5 Edw. 7, c. 15, s. 35. Trade marks registered under previous enactments. 5 Edw. 7, c. 15, s. 36. [ef. S. 6.] Non-user of trade mark. 5 Edw. 7, c. 15, s. 37. Powers of registered proprietor. 5 Edw. 7 c. 15, s. 38. Rights of proprietor of trade mark. 5 Edw. 7, c. 15, s. 39. Registration to be prima facie evidence of validity. 5 Edw. 7, c. 15, s. 40. Registration to be conclusive after seven years. 5 Edw. 7, c. 15, s. 41. [ef. Ss. 6 and 39.] Removal of mark on proof of prior registration in country of origin. Unregistered trade mark. 5 Edw. 7, c. 15, s. 42. Infringement. 5 Edw. 7, c. 15, s. 43. User of name, address, or description of goods. 5 Edw. 7, c. 15, s. 44. Passing off action. 5 Edw. 7, c. 15, s. 45. Certificate of validity. 5 Edw. 7, c. 15, s. 46. Registrar to have notice of proceeding for rectification 5 Edw. 7, c. 15, s. 47. Costs of proceedings before court. 5 Edw. 7, c. 15, s.48. Mode of giving evidence. 5 Edw. 7, c. 15, s. 49. Sealed copies to be evidence. 5 Edw. 7, c. 15, s. 50. Certificate of Registrar to be evidence. 5 Edw. 7, c. 15, s. 51. Execise of discretionary power by Resgistrar. 5 Edw. 7, c. 15, s, 53. Appeal from Registrar. 5 Edw. 7, c. 15, s. 54. Recognition of agents. 5 Edw. 7, c. 15, s. 55. Appeals to the Governor. Power of Govenor in Council to make rules. 5 Edw. 7, c. 15, s. 60. Fees. 5 Edw. 7, c. 15, s. 61. Standardization trade marks. 5 Edw. 7, c. 15, s. 62. Falsification of entries in Register. 5 Edw. 7, c. 15, s. 66. Penalty on falsely represneting a trade mark as registered. 5 Edw. 7, c. 15, s. 67. Unauthorised assumption of Royal Arms, 5 Edw.7, c. 15, s. 68. Commencement of Ordinance. Ordinance No. 6 of 1898.

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