TRADE MARKS ORDINANCE

TRADE MARKS ORDINANCE

CHAPTER 43.
THE TRADE MARKS ORDINANCE.

ARRANGEMENT OF SECTIONS,

Section ......................
Paye

1. Short title ........................... ... ... ... ... ... ... 347

Definitions.

2. Interpretation............. . ... ... ... ... ... ... 347

Seal.

3........Seal .............................. ... ... ... ... ... ... 347

Register of trade marks.

4. Register of trade marks ................. ... ... ... 348

5. Trust not to be entered on register ...... ... ... ... ... 348

6. Incorporation of existing register ...... ... ... 348

7. Inspection of and extract from register ... ... ... 348

Registrable trade marks.

8. Trade mark must be for particular goods ... ... ... 348

9. Registrable trade marks ................. ... ... ... ... 348

10. Coloured trade marks ..................... ... ... ... ... 349
11. Restriction on registration ............... ... ... ... ... 350

Registration of trade marks.

12. Application for registration ........... ... ... ... ... ... 350

13. Advertisement of registration........... ... ... ... ... ... 351

14. Opposition to registration ............. ... ... ... ... ... 351

15. Disclaimers ............................ ... ... ... ... ... ... 352

16. Date of registration .................. ... ... ... ... ... ... 353

17. Certificate of registration ............ ... ... ... ... ... 353

18. Non-completion of registration.......... ... ... ... ... ... 353

Identical trade marks.

19. Identical marks ........................... ... ... ... ... 353

20. Rival claims to identical marks ........ ... ... 354

21. Protection of marks registered in country of origin ... 354

Assignment.

22. Assignment and transmission of trade marks .... ... 354







23. Apportionment of marks on dissolution of partnership ... 355

Associated trade marks.

24. Associated trade marks ................. ... ... ... ... ... 355
25. Combined trade marks ................ ... 355
26. Series of trade marks .................. ... ... ... ... ... 355

27. Assignment and user of associated trade marks ... ... 356

Renewal of registration.

28. Duration of registration ............... ... ... ... ... ... 356
29. Renewal of registration ................ ... ... ... --- ... 356

30. Procedure on expiry of period of registration ... ... ... 353

31. Status of unrenewed trade marks ... ... ... 357





Correction and rectification of the register.

Section Page

32. Correction of register ... ... ... ... ... ... ... ... ... 357

33. Registration of assignments ... ... ... ... ... ... ... ... 357

34. Alteration of registered trade Mark ... ... ... ... ... ... 358

35. Rectification of register ... ... ... ... ... ... ... ... ... 358

36. Trade marks registered under previous enactments ... ... 359

37. Non-user of trade mark ... ... ... ... ... ... ... ... 359

Effect of registration.

38. Powers of registered proprietor ... ... ... ... ... ... ... 359

39. Rights of proprietor of trade mark ... ... ... ... ... ... 360

40. Registration to be prima facie evidence of validity ... ... 360

41. Registration to be conclusive after seven years ... ... ... 360

42. Removal of mark on proof of prior registration in country

of origin ... ... ... ... ... ... ... ... ... ... ... 361
43. Unregistered trade mark ... ... ... ... ... ... ... ... 362

44. infringement ... ... ... ... ... ... ... ... ... ... ... 362

45. Userof name, address or description of goods ... ... ... 362

46. Passing oT action ... ... ... ... ... ... ... ... ... ... 362

Legal proceedings.

47. Certificate of validity ... ... . ..... 362

48. Registrar to have notice of proceeding for rectification 363

Costs.
49. Costs of proceeding before court........ ... ... ... 363

Evidence.
50. Mode of giving evidence ... ... ... ... ... ... '063

51. Sealed copies to bc evidence ... ... ... ... ... .. 1 ... 363
52. Certificate of Registrar to be evidence ... ... ... ... ... 364

Powers and duties of Registrar of Trade Marks.

53. Exercise of discretionary power by Registrar ... ... ... ... 364
54. Appeal from Registrar ... ... ... ... ... ... ... ... ... 364
55. Recognition of agents ... ... ... ... . ... ... ... ... ... 364

Appeals to the Governor.
56. Appeals to the Governor ... ... 364

Rules.
57. Power of Governor in Council to make rules ... ... ... ... 365







Fees.

58. Fees .................................... ... ... ... ... 365

Special trade marks.

59. Standardization trade marks ............. ... ... ... ... 365

Offences.
60. Falsification of entries in Register ... ... ... ... ... ... 366

61. Penalty on falsely representing a trade mark as registered 366

62. Unauthorized assumption of Royal Arms ... .. 366





CHAPTER 43.

TRADE MARKS.

To amend the law relating to trade marks.

April, 1910

1. This Ordinance may be cited as the Trade Marks

Ordinance.

Definitions.

2. In this Ordinance

'court' means the Supreme Court, and includes a judge sitting in court
or in chambers and in original or summary jurisdiction;

'mark' includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral or any combination thereof ;

'register'' means the register kept under this Ordinance and any
register kept for the purpose of complying with the provisions of
the Trade Marks Register (Reconstruction) Ordinance, 1947 ;

'registered trade mark' means a trade mark which is actually upon the

register;

'registrable trade mark' means a trade mark which is



capable of registration under this Ordinance;

'Registrar' means such officer as the Governor may appoint to be
Registrar of Trade Marks;

'seal of the Registrar' means the seal of the office in which the
register of trade marks is kept;

'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;

'tribunal' means the Governor, the court or the Registrar.

Seal.

3. The Registrar shall use a seal having a device and

impression of tfie 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, 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 constructive, nor shall any such notice be
receivable by the Registrar.

6. The register of trade marks existing at the commencement 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 Fegister 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





(a)the name of a company, individual or firm represented
in a special or particular manner;

(b)the signature (in other than Chinese characters) of the
applicant for registration or of some predecessor in his
business;

(c) an invented word or invented words;

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

(e)any other distinctive mark, but a name, signature, or
word or words, other than such as fall within the
descriptions in paragraphs (a), (b), (c) and (d), 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 one 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 registered without limitation of colour, it
shall be deemed to be registered 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) Subject to the provisions of this Ordinance, the
Registrar 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 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 deter-
mining 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 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 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 any error in or in connexion with tfie
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 prescribed manner. Such advertis-
ement 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 stich 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 lie shall be deemed to have
abandoned his application.

(4) If the applicant sends such counter-staternent, 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) An appeal under this section shall be made in the prescribed
manner, and on stich appeal the tribunal shall, If required, hear the
parties and the Registrar, and shall make in 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 sub-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 beingy registered.

(10) The Registrar or, in the case of an appeal to the Governor, the
Governor, shall have power in proccediting 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 part), 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 whetlier 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 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 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 cornpleted 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.

Idenlical 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 in 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 therm 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 bis satisfaction by the person opposing tfie 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, froin 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
satisfaction 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 apportionment 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 tfie 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 rnarks shall be
entered 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

(a)statements of the goods for which they are respectively
used or proposed to be used; or

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

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

(d) colour, seeks to register stich 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 transmissible
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 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 tfie registered
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 fast 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 registratton will
expire aiid 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 conditions have
not been duly complied with, the Registrar may remove such trade
mark from the register, subject to such conditions (if any)



as to its restoration to the register as may be prescribed.

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 bona fide trade user of such
trade mark during the two years immediately preceding such removal.

Correction and rectifcation 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-

(a)correct any error in the name or address of the registered
proprietor of a trade mark; or

(b) enter any change in the name or address of the
person who is registered as proprietor of a trade
mark ; or

(c) cancel the entry of a trade mark on the register; or

(d) strike out any goods or classes of goods from those for
which a trade mark is registered; or

(c)enter a disclaimer or mernorandum 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 assignment,
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 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. (1) 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, may apply in the prescribed manner to the court
or, at the option of the applicant, to the Registrar, and any such
tribunal may make such order for making, expunging or varying
the entry as such tribunal may think fit.

(2) Such tribunal 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, assignment 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 in the prescribed
prescribed manner on the Registrar, and the Registrar shall on receipt of
the notice rectify the register accordingly.

(5) If an action concerning the trade mark is pending, the
application must be made to the court. In any other case if the
application is made to the Registrar, he may, at any stage of the
proceedings, refer the applica-





tion to the court, or he may, after hearing the parties,



determine the question between them subject to appeal to the
court.

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 in force at the date of its registration. But nothing in
this section contained shall subject any person to any liabilily 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 talken 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
bona 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 : Provided always that no part of
the period 8th day of December, 1941, to the August 31st day of
August, 1945, both inclusive, shall in any way be taken into
account in computing the said period of five year, and that for
the purpose of any application made before the 2nd day, of
September, 1950, on the ground of non-user during the five years
immediately pre-
ceding such application, the 1st day of September, 1945, shall be
deemed to follow immedlately the 7th day of December, 1941.

Effect of registration

38. subject to the provisions of this Ordinance-

(a)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;

(b)any equities in respect of a trade mark may be enforced
in like nianner 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 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 pro-
prietors 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 other-



wise have the same right as if he were the sole registered proprietor thereof.

49. In all legal proceedings relating to a registered

trade mark (including applications under section 35), the fact
that, a person is registered is proprietor of such trade mark shall
be prima facie evidence of the validity of the original registration
of such trade mark and of all sub-assignments and transmissions
of the same.

41. In all legal proceedings relating to a registered trade
mark (including applications under section 35), the original
registrafion 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, of 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, continuously 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 or 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 Hong Kong of the first-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 interior
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 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 application 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 infringernent of a trade mark the court
trying the question of infringement shall admit evidence of the usages
of the trade in respect of the getup 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 persoii 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 bona fide description of the character or quality of his goods.

46. Nothing in this Ordinance contained shall be deemed to affect
rights of action against in 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 cerlify 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 is 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 film, 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 thee 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 decaration in the absence of directions to the
contrary, but in any case in which he shall think it right
so 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 statu-
tory 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 incidtnts 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 be under the hand of the Registrar
as to any entry, matter or thing which he is


authorifed by this Ordinance to make or do, shall be prima
jacie 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 Ordinance, he shall not exercise that power adversely
to the applicant for registration or the registered proprietor of the trade
mark in quesfion 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 in 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 Ordin-
ance, be done by or to agent of such party duly authorized
in the prescribed manner.

Appeals to the Governor.

56. Where under this Ordinance in 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. [55A





Rules.

57. 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;

(e)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) general, 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. [56

Fees.

58. There shall be paid 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. [57

Special trade marks.

59. Where any association or person undertakes the examination
of any goods in respect of origin, material, mode of manufacture,
quality, accuracy or other characteristic aiid 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 transmissible or assignable only by
permission of the Governor in

Council. [58





Offences.

60. Any person who makes or causes to be made a faise
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. [59

61. (1) Any person who represents a trade mark as registered in
Hong Kong which is not so registered shall upon summary conviction
be liable to a fine of five 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. [60

62. Any person who, in connexion with any trade, business,
calling or profession-

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

(b) 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 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 aulhorized


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

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. [61
Originally 40 of 1909. Fraser 40 of 1909. 33 of 1947. 9 of 1950. 22 of 1950. Short title. 5 Edw. 7, c. 15, s. 1. Interpretation. 5 Edw. 7, c. 15, s. 3. 9 of 1950, Schedule. (Cap. 262.) Seal. [s. 3 cont.] 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 fore particular goods. ibid. 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. [s. 14 cont.] 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. [s. 26 cont.] 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. [s. 33 cont.] Alteration of registered trade mark. 5 Edw. 7, c. 15, s. 34. Rectification of register. 33 of 1947, s. 10. Trade marks registered under previous enactments. 5 Edw. 7, c. 15, s. 36. Non-user of trade mark. 5 Edw. 7, c. 15, s. 37. Effect of non-user during period. 33 of 1947, s. 11. Powers of registered proprietor. 5 Edw. 7, c. 15, s. 38. [s. 38 cont.] 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. Removal of mark on proof of prior registration in country of origin. [s. 42 cont.] 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. 45. 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. [s. 51 cont.] 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. 14, 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. 22 of 1950, Schedule. Unauthorized assumption of Royal Arms. 5 Edw. 7, c. 15, s. 68.

Originally 40 of 1909. Fraser 40 of 1909. 33 of 1947. 9 of 1950. 22 of 1950. Short title. 5 Edw. 7, c. 15, s. 1. Interpretation. 5 Edw. 7, c. 15, s. 3. 9 of 1950, Schedule. (Cap. 262.) Seal. [s. 3 cont.] 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 fore particular goods. ibid. 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. [s. 14 cont.] 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. [s. 26 cont.] 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. [s. 33 cont.] Alteration of registered trade mark. 5 Edw. 7, c. 15, s. 34. Rectification of register. 33 of 1947, s. 10. Trade marks registered under previous enactments. 5 Edw. 7, c. 15, s. 36. Non-user of trade mark. 5 Edw. 7, c. 15, s. 37. Effect of non-user during period. 33 of 1947, s. 11. Powers of registered proprietor. 5 Edw. 7, c. 15, s. 38. [s. 38 cont.] 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. Removal of mark on proof of prior registration in country of origin. [s. 42 cont.] 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. 45. 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. [s. 51 cont.] 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. 14, 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. 22 of 1950, Schedule. Unauthorized assumption of Royal Arms. 5 Edw. 7, c. 15, s. 68.

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