TRADE MARKS ORDINANCE, 1909

TRADE MARKS ORDINANCE, 1909

No. 40 of 1909.

An Ordinance to amend the law relating to trade marks.

[1st April, 1910.]

1. This Ordinance may be cited as the Trade Marks
Ordinance, 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 ' means 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;

(i) ' 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 authorized.

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 marks with the dates of their registration,
the names and addresses of their proprietors, notifications of
assignments and transmissions, disclaimers, conditions, limita-
tions 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 constructive, nor shall any such
notice be receivable by the Registrar.





6. The register of trade marks existing at the commence-
ment of this Ordinance shall be incorporated with and form part
of the register. Subject 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 registered 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, scaled 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 particulars-

(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;

(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) hny 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 (4),
shall not, except by order of the Governor or the court, be 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 mark under 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
tribunal may, in the case of a trade mark in actual use, take into
consideration the extent to which such user has rendered such
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. If and
so far as a trade mark is registerod without limitation of colour,
it shall be deemed to be registered for all colour.

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.

Registratioit 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) Subject to the provisions of this Ordinance, the Regis-
trar may refuse an application, or may accept it absolutely or
subject to conditions, amendments or modifications.

(3) 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

As amended by Law Rev. Ord., 1939.





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,
hear the applicant and the Registrar, and shall make an order
determining whether, and subject to what conditions, amend-
ments or modifications, if any, the application is to be accepted.

(4) 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
oi 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 costs on giving notice.

(5) The Registrar or the Governor or the court, as the case
may be, may at any time, whether before or after acceptance,
correct ariv 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 conditions,
the applicant shall, as soon as may be after such acceptance,
cause the application, as accepted, to be advertised in the pre-
scribed 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
the date of the advertisement of an application for registration
of a trade mark, give notice to the Registrar of opposition 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 send 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
prescribed 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 such counter-statement, the Regis-
trar 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) An appeal under this section shall be made in the
prescribed manner, and on such appeal the tribunal 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 manner prescribed or by special leave of the
tribunal, bring forward further material for the consideration of
the tribunal.

(8) In proceedings under this section, no further grounds
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.

(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 substantially affect-
ing 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 proceedings 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 such 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 such 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 applica-
tion 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 mark, 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. Except 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 description of
goods which is identical with one belonging to a different
proprietor which is already on the register with respect to such
goods or description 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 determined 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 refuse 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 registration in Hong
Kong is applied for) in a country or place from which goods of
that description originate:

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

(a) if the applicant proves that he or his predecessors in
business have in Hong Kong 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 country or place of
origin ; or

(b) unless the opponent gives an undertaking to the satis-
faction of the Registrar that he will, within three months from
the giving of the notice of opposition, apply for registration in
Hong Kong 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),
on the application of the parties interested, permit an appor-
tionment of the registered trade marks 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 made for the registration of a trade mark
so closely resembling 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 entereci on the register
as associated trade marks.

25. If the proprietor of a trade mark claims to be entitled
to the exclusive use of any portion of such trade mark separately,
he may apply to register the same 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 one another 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 such trade marks, they may be registered as a
series in one registration. All the trade marks in a series 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 addition or alterations not substantially
affecting its identity, as an 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
accordance with the provisions of this Ordinance.

29. The Registrar shall, on application made by the regis-
tered proprietor of a trade mark in the prescribed manner 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 regis-
tration 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 registration 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 time prescribed in that behalf, such con-
ditions have not been duly complied with, the Registrar may
remove such trade mark from the register, subject to such con-
ditions (if any) as to its restoration to the register as may be
prescribed.

[ss. 30A and 30B, rep. Law Revision Ordinance, 1939.]

31. Where a trade mark has been removed from the register
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 registered, unless it is
shown to the satisfaction of the Registrar that there has been no
bond 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 registered
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

(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 of this Ordinance, where a
person becomes entitled to a registered trade mark by assign-
ment, transmission or other operation of law, the Registrar
shall, on request made in the prescribed manner and on proof
of title to his satisfaction, cause the name and address of such
person to be entered on the register as proprietor of the trade
mark.

Any decision of the Registrar 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 ot 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-

(i) 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 himself apply to the
court under the provisions of this section;

(4) any order of the court rectifying the register shall direct
that notice of the rectification shall be served upon the Registrar
in the prescribed manner, who shall upon receipt of such notice
rectify the register accordingly.





36. No trade mark which is upon the register at the com-
mencement 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
in 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 bonal 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 registiation.

38. Subject to the provisions of this Ordinance-

(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 con-
sideration 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 regis-
tration of a person as proprietor of a trade mark shall, if valid,
give to such person the exclusive right to the use of such
trade mark upon or in connexion with 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 lie were the sole registered proprietor
thereof.

40. In all legal proceedings relating to a registered trade
mark (including applications under section 35), the fact that a
person is registered as proprietor of such trade mark shall be
P.rimd facie evidence of the validity of the original registration
of such trade mark and of all subsequent assignments 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 be taken to, be
valid in all respects unless such 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 such
person has, by himself or his predecessors in business, con-
tinuously used such trade mark from a date anterior to the user
of the first-mentioned trade mark by the proprietor thereof or
his predecessors in business.

42.-(1) The court may, on the application in writing made
within seven years from the registration of a trade mark in
Hong Kong by any person aggrieved by such registration,
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 registration in Hong Kong 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 Hong Kong) in a country or place
from which goods of that description originate:

As amended by Law Rev. Ord., 1939.





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 Hong Kong of the first-mentioned trade mark; or

(b) if the proprietor of the trade mark registered in Hong Kong proves
that he or his predecessors in business have continuously used such trade
mark in Hong Kong 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 bond fide user in connexion with such goods as aforesaid in Hong
Kong of the trade mark registered in the country or place of origin, or that
the special circumstances of the trade account for the non-user of such trade
mark in Hong Kong within the same period, or that the trade mark so
registered in the country or place of origin was first registered there within
the like period of five years, and in either event gives an undertaking to the
satisfaction of the Registrar that he will within three months from the making
of the applictaion under this section apply for registration in Hong Kong 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 proceedings 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 of 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 bond
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 fide description of the character
or quality of his goods.

46. Nothing in this Ordinance contained shall b c 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
subsequent 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 certifies 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 Registrar
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 him 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 such
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 Ordinance,
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 under this Ordinance before the
Registrar or the Governor, the evidence shall, be given by
statutory declaration in the absence of directions to the contrary,
but in any case in which lie shall think it right so to do, the





Registrar or the isovernor may (with the consent of the parties)
take evidence vivii voce in lieu of or in addition to evidence by
declaration. Any such statutory declaration may in the case 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 vivd 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 be under the hand of the
Registrar as to any entry, matter or thing which he is authorized
by this Ordinance to make or do, shall be primd 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 duties of Registrar of Trade Marks.

53. Where any discretionary or other power is given to the
Registrar by this OrdLnance, 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 an opportunity of being heard.

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 authorized 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 provisions 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 Registrar.

Fees.

57. There shall be paid in respect of applications and regis-
tration 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 examina-
tion of any goods in respect of origin, material, mode of manu-
facture, quality, 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 association or person
be a trading association or trader 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 trans-
missible 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
falsely purporting to be a copy of an entry in any such register,
or produces or tenders or causes to be produced or tendered in
evidence any such entry or, writing, knowing the same to be
false, shall be guilty of a misdemeanor.

60.-(1) Every person who represents a trade diark as
registered in Hong Kong which is not so registered shall upon
summary conviction be liable to a fine not exceeding one hundred
dollars.

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

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

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

(2) without the authority of His Majesty or a member of the
Royal Family, uses any device, emblem or title in such manner
as to be calculated to lead to the belief that he is employed by

As amended by Law Rev. Ord., 1939.





or supplies goods to His Majesty or to such member of the Royal
Family,

may at the suit of any person who is authorized to use such arms
or such device, emblem or title, or who is authorized 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.

Is. 62, rep. No. 12 of 1912.]

[s. 63, rep. Law Revision Ordinance, 1939.]

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

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

No. 43 of 1909, repealed by No. 8 of 1912.

No. 44 of 1909, incorpordted in No. 16 of 1901,
repealed by No. 8 of 1921.

No. 45 of 1969, repealed by No. 8 of 1910.

No. 46 of 1909, repealed by No. 9 of 1911.





1910.

No. 1 of 1910, incorporated in No. 2 of 1862,
repealed by No. 21 of 1932.

No. 2 of 1910, repealed by No. 9 of 1911.

No. 3 of 1910, repealed by No. 20 of 1922.

No. 4 of 1910, incorporated in No. 1 of 1888,
repealed by No. 37 Of 1935.

No. 5 of 1910, incorporated in No. 3 of 1901
and No. 31 of 1911.

No. 6 of 1910, incorporated in No. 10 of 1899.

No. 7 of 1910, iizcorporated in No. 3 of 1890,
repealed by No. 41 of 1932.

No. 8 of 1910, incorporated in No. 5 of 1890.

No. 9 of 1910, repealed by No. 9 of 1916.

No. 10 of 1910, repealed by No. 6 of 1917.

No. 11 of 1910, incorporated in No. 23 of 1909,
repealed by No. 4 of 1914.

No. 12 of 1910, incorporated generally.

No. 13 of 1910, ittcorporated in No. 6 of 1909.
repealed by No. 1 of 1932.
[Originally No. 40 of 1909. Law Rev Ord., 1939.] Short title. 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. Inspection 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 registration. 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. Identical 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 transmission of trade marks. 5 Edw. 7, c. 15, s. 22. Apportionment of marks on 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. Status of unrenewed trade marks. 5 Edw. 7, c. 15, s. 31. Correction of register. 5 Edw. 7, c. 15, s. 32. Registration 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. [cf. 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. [cf. 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. Exercise of discretionary power by Registrar. 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 Governor 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 representing a trade mark as registered. 5 Edw. 7, c. 15, s. 67. Unauthorized assumption of Royal Arms. 5 Edw. 7, c. 15, s. 68.

[Originally No. 40 of 1909. Law Rev Ord., 1939.] Short title. 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. Inspection 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 registration. 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. Identical 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 transmission of trade marks. 5 Edw. 7, c. 15, s. 22. Apportionment of marks on 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. Status of unrenewed trade marks. 5 Edw. 7, c. 15, s. 31. Correction of register. 5 Edw. 7, c. 15, s. 32. Registration 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. [cf. 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. [cf. 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. Exercise of discretionary power by Registrar. 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 Governor 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 representing a trade mark as registered. 5 Edw. 7, c. 15, s. 67. Unauthorized assumption of Royal Arms. 5 Edw. 7, c. 15, s. 68.

https://oelawhk.lib.hku.hk/items/show/1506

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