TRADE MARKS ORDINANCE

TRADE MARKS ORDINANCE

LAWS OF HONG KONG

TRADE MARKS ORDINANCE

CHAPTER 43





CHAPTER 43

TRADE MARKS ORDINANCE

ARRANGEMENT OF SECTIONS

Section Page

1 Short title ... ... ... ... . ... ... ... ... ... ... ... ... ... 5

2. Interpretation ... ... ... ... ... ... ... ... ... ... ... ... ... ... 5

REGISTER OF TRADE
MARKS

3................Register of trade marks ...... ... ... ... ... ... ... ... ... ... ... 6

4...................Division of register into 2 parts ... ... ... ... ... ... ... ... ... ... 6
5...................Trust not to be entered in register ... ... ... ... ... ... ... ... ... ... 6

6..............Inspection of register ......... ... ... ... ... ... ... ... ... ... ... 6
7..............Extracts from register ......... ... ... ... ... ... ... ... ... ... ... 6

REGISTRABLE TRADE
MARKS

8. Trade mark must be for particular goods ..... ... ... ... ... ... ... ... 7

9. Trade marks registrable in Part A ........... ... ... ... ... ... ... ... 7
10.....................Trade marks registrable in Part B ... ... ... ... ... ... ... ... ... 7

11...............Coloured trade marks ........ ... ... ... ... ... ... ... ... ... 8
12...............Restriction on registration ... ... ... ... ... ... ... ... ... ... ... 8

REGISTRATION OF TRADE
MARKS

13................Application for registration ... ... ... ... ... ... ... ... ... ... ... 8

13A. Priority for application made in Convention country ... ... ... ... 9

14..................Advertisement of application ... ... ... ... ... ... ... ... ... ... 11

15................Opposition to registration ... ... ... ... ... ... ... ... ... ... ... 11

16.........Disclaimers ........................ ... ... ... ... ... ... ... ... ... 12

17....................Registration, and failure to complete ... ... ... ... ... ... ... ... ... 12

18. Application for registration of mark not to be used by applicant but to be assigned

to corporation to be constituted or to be used by registered user ... ... 13

19................Jointly owned trade marks ... ... ... ... ... ... ... ... ... ... ... 14

IDENTICAL TRADE
MARKS

20. Prohibition of registration of trade mark identical with or resembling a registered

trade mark ............................... ... ... ... ... ... ... ... 14

21. Applications for registration of identical or resembling trade marks ... ... 14

22............Concurrent use .................. .... ... ... ... ... ... ... ... ... 14







23...........................Protection of marks registered in country of origin ... ... ... ... ... ... 15

ASSOCIATED TRADE
MARKS

24. Associated trade marks ... ... ... ... ... ... ... ... ... ... ... ... 15





Section...................................... Page

25. Combined trade marks ...................... ... ... ... ... ... ... 15

26. Series of trade marks .................. ... ... ... ... ... ... ... 16

EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT

27..................................Right given by registration in Part A, and infringement thereof ... ... ... 16
28..................................Right given by registration in Part B, and infringement thereof ... ... ... 17

29...........................Registration to be prima facie evidence of validity ... ... ... ... ... ... 18

30. Registration in Part A to be conclusive as to validity after 7 years ... ... ... 18

31....................Equities in respect of trade marks ... ... ... ... ... ... ... ... ... 18

32. Infringement by breach of certain restrictions . ... ... 18

33................Saving for vested rights .... ... ... ... ... ... ... ... ... ... ... 19

34.............................Saving for use of name, address or description of goods ... ... ... ... ... 19
35.............................No action for infringement of unregistered trade mark ... ... ... ... 20

36..............'Passing off' action .... ... ... ... ... ... ... ... ... ... ... 20

USE AND NON-USE OF TRADE MARKS

37......................................Removal from register and imposition of limitations on ground of non-use ... 20

38....................................Use of one of associated trade marks equivalent to use of another ... ... 21
39....................................Use of trade mark for export trade constitutes use of the trade mark ... ... 21

40................................Use of trade mark after change in form of trade connexion ... ... ... ... 21

ASSIGNMENT AND TRANSMISSION

41. Powers of, and restrictions on, assignment and transmission of trade marks ... 22

42................................Power of registered proprietor to assign, and give receipts ... ... ... ... 23

43.........................Registration of assignments and transmissions ... ... ... ... ... ... ... 23

44..................................Assignments and transmissions of associated trade marks ... ... ... 24

RENEWAL OF REGISTRATION

45................Renewal of registration .. ... ... ... ... ... ... ... 24

46.............................Procedure on expiry of period of registration ... ... ... ... ... 24

47..................Status of unrenewed trade mark ... ... ... ... ... ... ... ... ... ... 24

RECTIFICATION AND CORRECTION OF REGISTER

48.........................General power to rectify entries in register ... ... ... ... ... ... ... 24

49. Power to expunge or vary registration for breach of condition ... ... ... ... 25

50..............Correction of register ........ ... ... ... ... ... ... ... ... ... ... 25

51....................Alteration of registered trade mark ... ... ... ... ... ... ... ... ... 26

52. Words used as name or description of an article or substance ... ... ... ... 26







53. Removal of trade mark from register on proof of prior registration in country

of origin ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... 27

54. Adaptation of entries in register to amended or substituted classification of

goods ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... ... 28





Section...................................... Page

DEFENSIVE TRADE
MARKS

55. Defensive registration of trade marks ..... ... ... ... ... ... ... ... 29

56. Defensive trade marks to be registered as associated trade marks ... ... ... 29

57. Removal of defensive trade marks from the register ... ... ... ... ... 30

REGISTERED USERS

58. Registration as a registered user. Meaning of -permitted use' ... ... ... ... 30

59...................Proceedings for infringement ... ... ... ... ... ... ... ... ... ... 31

60.................................Variation or cancellation of registration as a registered user ... ... ... ... 32

61. Notification of registration as registered user and of application for variation or

cancellation of such registration .... ... ... ... ... ... ... ... ... 32

62..........................Registrar's decision subject to appeal to Court ... ... ... ... ... ... ... 32
63..........................Right to use not assignable or transmissible ... ... ... ... ... ... ... 33

CERTIFICATION TRADE
MARKS

64.........................Marks registrable as certification trade marks ... ... ... ... ... ... ... 33

65.............................Application for registration as certification trade mark ... ... ... ... ... 33
66.............................Advertisement of application. Opposition to registration ... ... ... ... 34
67.............................Right given by registration, and infringement thereof ... ... ... ... ... 35

68. Alteration of deposited regulations, or expunging or varying of entry in register

relating to certification trade mark ..... ... ... ... ... ... ... ... ... 36

69. Certification trade mark assignable or transmissible only with Registrar's consent 36

70................................Registrar not empowered to award costs on appeals to him ... ... ... ... 37

71.............................Provisions not applicable to certification trade marks ... ... ... ... ... 37

72, Trade mark registered under section 59 of Trade Marks Ordinance 1909, to be

deemed registered as a certification trade mark under this Ordinance ... ... 37

POWERS AND DUTIES OF
REGISTRAR

73.............................Preliminary advice by Registrar as to distinctiveness ... ... ... ... ... 37
74.............................Hearing before exercise of discretionary power of Registrar ... ... ... ... 38

LEGAL PROCEEDINGS AND
APPEALS

75..............Certificate of validity ....... ... ... ... ... ... ... ... ... ... ... ... 38

76....................Trade usage, etc., to be considered ... ... ... ... ... ... ... ... ... 38

77................................Registrar's appearance in proceedings involving rectification ... ... ... ... 38

78..............Appeal from Registrar ......... ... ... ... ... ... ... ... ... ... ... 38







79................................Appeal to Court of Appeal. Discretion of Court in appeals ... ... ... ... 39
80................................Procedure in case of option to apply to Court or Registrar ... ... ... ... 39

COSTS

81.......................Costs of proceedings before the Court ... ... ... ... ... ... ... ... 39
82.......................Costs of proceedings before the Registrar ... ... ... ... ... ... ... ... 39





Section Page

EVIDENCE

83. Mode of giving evidence . ... ... 1 .. ... ... ... ... ... ... ... 39

84..................................Evidence of entries in Hong Kong or United Kingdom Register ... ... ... 40

85. Evidence of entries made or of things done by Registrar, or Comptroller-General

of U.K. Patent Office ... ... ... ... ... ... ... ... ... ... ... ... 40

OFFENCES, AND RESTRAINT OF USE OF ROYAL
ARMS

86....................Falsification of entries in register ... ... ... ... ... ... ... ... ... 40

87.............................Falsely representing a trade mark as registered, etc. ... ... ... ... ... 40

88..................Restraint of use of Royal Arms ... ... ... ... ... ... ... ... ... 41

AGENTS

89..............Recognition of agents ......... ... ... ... ... ... ... ... ... 41

RULES

90.........................Power of Governor in Council to make rules ... ... ... ... ... 41

TRANSITIONAL
PROVISIONS

91...........................Validity of registrations under pervious enactments ... ... ... ... ... ... 42
Schedule. List of Countries (excluding the United Kingdom) adhering to the Paris
Convention for the Protection of Industrial Property 1883, as revised from
time

to time.................................. ... ... ... ... ... ... ... 42





CHAPTER 43

TRADE MARKS

To amend and consolidate the law relating to the registration of trade marks.

[1 January 1955.1

1. This Ordinance may be cited as the Trade Marks Ordinance.

2. (1) In this Ordinance, unless the context otherwise requires

,,assignment' means assignment by act of the parties concerned;

'limitations' means any limitations of the exclusive right to the use of a
trade mark given by the registration of a person as proprietor
thereof, including limitations of that right as to mode of use, as to
use in relation to goods to be sold, or otherwise traded in, within
the Colony, or as to use in relation to goods to be exported to any
market outside the Colony;

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

'permitted use' has the meaning assigned to it by section 58(1);

'prescribed' means, in relation to proceedings before the Court or
preliminary thereto or connected therewith, prescribed by this
Ordinance or by the rules made thereunder or by rules of court and,
in other cases, prescribed by this Ordinance or by the rules made
thereunder;

'register' means the register of trade marks kept under this Ordinance;

'registrable trade mark' means a trade mark which is capable of
registration under the provisions of this Ordinance;

'registered trade mark means a trade mark which is actually on the
register;

'registered user' means a person who is for the time being registered as
such under section 58;

'Registrar' means such officer as the Governor may appoint to be
Registrar General under the provisions of the Registrar
General (Establishment) Ordinance;

'seal' means the seal of the Registrar kept in the Trade Marks Registry
Hong Kong, 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 hitherto used by the Registrar of
Trade Marks since 10 December 1909;





'trade mark' means, except in relation to a defensive or a certifica-
tion trade mark, a mark used or proposed to be used in relation
to goods for the purpose of indicating, or so as to indicate, a
connexion in the course of trade between the goods and some
person having the right either as proprietor or as registered user
to use the mark, whether with or without any indication of the
identity of that person, and means, in relation to a defensive
trade mark, a mark registered under section 55, and, in relation
to a certification trade mark, a mark registered or deemed to
have been registered under section 64;
'transmission' means transmission by operation of law, devolution
on the personal representative of a deceased person, and any
other mode of transfer not being assignment;

'tribunal' means the Court or the Registrar.
(2) References in this Ordinance to the use of a mark shall be
construed as references to the use of a printed or other visual
representation of the mark, and references therein to the use of a
mark in relation to goods shall be construed as references to the use
thereof upon, or in physical or other relation to, goods.

REGISTER OF TRADE MARKS

3. The Registrar shall for the purposes of this Ordinance
keep a record called the register of trade marks, wherein shall be
entered all registered trade marks, with the dates of their registra-
tion, the names, addresses and descriptions of their proprietors,
notifications of assignments and transmissions, the names, addresses
and descriptions of all registered users, disclaimers, conditions,
limitations, and such other matters relating to such registered trade
marks as may be prescribed.

4. (1) The register shall be divided into 2 parts, called Part A
and Part B.
(2) Part A of the register shall comprise all trade marks
entered in the register of trade marks at the commencement of this
Ordinance and all trade marks which after the commencement of
this Ordinance shall be registered in that Part under the provisions
of this Ordinance.
(3) Part B shall comprise all trade marks registered in that Part
under the provisions of this Ordinance.

5. There shall not be entered in the register any notice of any
trust express, implied or constructive, nor shall any such notice be
receivable by the Registrar.

6. The register shall at all convenient times be open to the
inspection of the public, subject to such rules as may be prescribed.

7. Certified copies, sealed with the seal of the Registrar, of
any entry in the register shall be given to any person requiring the
same on payment of the prescribed fees.





REGISTRABLE TRADE MARKS

8. (1) A trade mark must be registered in respect of par-
ticular goods or classes of goods.

(2) Any question arising as to the class within which any goods
fall shall be determined by the Registrar, whose decision shall be
final.

9. (1) A trade mark (other than a certification trade mark)
to be registrable in Part A of the register shall 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 the 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 be registrable
under the provisions of this paragraph except upon
evidence of its distinctiveness.

(2) For the purposes of this section 'distinctive' means
adapted, in relation to the goods in respect of which a trade mark
is registered or proposed to be registered, to distinguish goods with
which the proprietor of the trade mark is or may be connected in the
course of trade from goods in the case of which no such connexion
subsists, either generally or, where the trade mark is registered or
proposed to be registered subject to limitations, in relation to use
within the extent of the registration.

(3) In determining whether a trade mark is adapted to dis-
tinguish as aforesaid the tribunal may have regard to the extent to
which-

(a)the trade mark is inherently adapted to distinguish as
aforesaid; and

(b)by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact adapted to dis-
tinguish as aforesaid.

10. (1) A trade mark to be registrable in Part B of the register
must be capable, in relation to the goods in respect of which it is
registered or proposed to be registered, of distinguishing goods with
which the proprietor of the trade mark is or may be connected in the
course of trade from goods in the case of which no such connexion





subsists, either generally or, where the trade mark is registered or
proposed to be registered subject to limitations, in relation to the use
within the extent of the registration.

(2) In determining whether a trade mark is capable of distinguishing
as aforesaid the tribunal may have regard to the extent to which

(a)a trade mark is inherently capable of distinguishing as
aforesaid; and

(b)by reason of the use of the trade mark or of any other
circumstances, the trade mark is in fact capable of
distinguishing as aforesaid.

(3) A trade mark may be registered in Part B notwithstanding any
registration in Part A in the name of the same proprietor of the same
trade mark or any part or parts thereof.

(Replaced, 3 of 1985, s. 2)

11. (1) A trade mark may be limited in whole or in part to one or
more specified colours, and in any 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 the trade mark.

(2) If and so far as a trade mark is registered without limitation of
colour, it shall be deemed to be registered for all colours.

12. (1) It shall not be lawful to register as a trade mark or part of a
trade mark any matter the use of which would be likely to deceive or
would be disentitled to protection in a court of justice or would be
contrary to law or morality, or any scandalous design.

(2) No word which is the commonly used and accepted name of
any single chemical element or single chemical compound, as
distinguished from a mixture, shall be registered as a trade mark in
respect of a chemical substance or preparation, and any such
registration in force at the commencement of this Ordinance or thereafter
shall, notwithstanding anything in section 30, be deemed for the
purposes of section 48 to be an entry made in the register without
sufficient cause, or an entry wrongly remaining on the register, as the
circumstances may require:

Provided that the foregoing provisions of this subsection shall not
have effect in relation to a word which is used to denote only a brand or
make of the element or compound as made by the proprietor or a
registered user of the trade mark, as distinguished from the element or
compound as made by others, and in association with a suitable name or
description open to the public use.

REGISTRATION OF TRADE MARKS

13. (1) Any person claiming to be entitled to be registered as the
proprietor of a trade mark used or proposed to be used by him who is
desirous of registering it must apply in writing to the Registrar in the
prescribed manner for registration either in Part A or Part B of the
register.





(2) Subject to the provisions of this Ordinance, the Registrar may
refuse the application, or accept it absolutely or subject to such
conditions, amendments, modifications, or limitations, if any, as he may
think right.

(3) In the case of an application for registration of a trade mark
(other than a certification trade mark) in Part A of the register, the
Registrar may, if the applicant is willing, instead of refusing the
application, treat it as an application for registration in Part B and deal
with the application accordingly.

(4) In the case of a refusal or conditional acceptance, the Registrar
shall, if required by the applicant, state in writing the grounds of his
decision and the materials used by him in arriving thereat, and the
decision shall be subject to appeal to the Court.

(5) An appeal under this section shall be made in the prescribed
manner, and on such appeal the Court shall, if required, hear the
applicant and the Registrar, and shall make an order determining
whether, and subject to what amendments, modifications, conditions or
limitations, if any, the application is to be accepted.

(6) Appeals under this section shall be heard on the materials
stated as aforesaid 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 so stated as aforesaid by him, except by leave of the Court. Where
any further grounds of objection are taken, the applicant shall be
entitled to withdraw his application without payment of costs on giving
notice as prescribed.

(7) The Registrar or the Court, as the case may be, may at any time,
whether before or after acceptance, correct any error in or in connexion
with the application, or may permit the applicant to amend his
application upon such terms as the Registrar or the Court may think fit.

13A. (1) Subject to subsection (2), any person who has applied for
protection for any trade mark in a Convention country, or his legal
representative or assignee, shall be entitled to registration of his trade
mark under this Ordinance in priority to other applicants and the
registration shall have the same date as the date of the application in the
Convention country.

(2) For the purposes of obtaining priority under subsection (1), the
application for registration of the trade mark under this Ordinance must
be made within 6 months from

(a)the date of application for protection in the Convention
country; or

(b)where more than one such application for protection has been
made, from the date of the first application.

(3) Nothing in subsection (1) shall entitle the proprietor of a trade
mark to recover damages for any infringement happening





prior to the actual date on which his trade mark is registered under
this Ordinance.

(4) An application for the registration of a trade mark under
this section shall, subject to such further requirements as may be
prescribed-

(a)be made in the same manner as an ordinary application
under this Ordinance; and

(b) specify-
(i) the Convention country in which the application for
protection, or the first such application, Was made; and
(ii) the date on which such application for protection
was made.

(5) Where a person has applied for protection for any trade
mark by an application which-

(a)in accordance with the terms of a treaty subsisting between
any 2 or more Convention countries, is equivalent to an
application duly made in any one of those Convention
countries; or

(b)in accordance with the law of any Convention country, is
equivalent to an application duly made in that Convention
country,

he shall be deemed for the purposes of this section to have applied in
that Convention country.

(6) In this section 'Convention country' means-

(a) the United Kingdom;

(b)any country (including any colony, protectorate or terri-
tory subject to the authority or under the suzerainty of
another country, or territory administered by another
country) for the time being specified in the Schedule.

(7) The Governor may by order published in the Gazette-

(a) add to the Schedule-
(i) the name of any country which has acceded to the
Paris Convention for the Protection of Industrial Property
1883, as revised at Brussels in 1900, at Washington in 1911,
at the Hague in 1925, at London in 1934, at Lisbon in 1958
and at Stockholm in 1967, and as the same may be revised
from time to time;
(ii) the name of any colony, protectorate or territory
subject to the authority or under the suzerainty of another
country (other than the United Kingdom), or territory
administered by another country (other than the United
Kingdom), on behalf of which such other country has
acceded to the said Convention;

(b)delete from the Schedule the name of any country which
has denounced the said Convention, or the name of any





colony, protectorate or territory on behalf of which the said
Convention has been denounced;

(e) otherwise amend the Schedule.

(Added, 55 of 1977, s. 2)

14. When an application for registration of a trade mark has been
accepted, whether absolutely or subject to conditions or limitations, the
Registrar shall require the applicant to advertise it, as accepted, in the
prescribed manner. The advertisement shall set forth all conditions and
limitations subject to which the application has been accepted:

Provided that the Registrar may require an application for
registration of a trade mark to be advertised by the applicant before
acceptance

(a) if it be made under section 9(1)(e); or

(b)in any other case where it appears to him that it is expedient by
reason of any exceptional circumstances so to do,

and where an application has been so advertised the Registrar may, if he
thinks fit, require the applicant to advertise it again when it has been
accepted but shall not be bound so to do.

15. (1) Any person may, within the prescribed time from the date of
the advertisement of an application, give notice to the Registrar of
opposition to the registration.

(2) The 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 the notice to the applicant,
and, within the prescribed time after the receipt thereof, 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 a counter statement, the Registrar
shall furnish a copy thereof to the person giving notice of opposition,
and shall, after hearing the parties, if so required, and considering the
evidence, decide whether, and subject to what conditions or limitations,
if any, registration is to be permitted.

(5) The decision of the Registrar shall be subject to appeal to the
Court.

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





(7) On the hearing of an appeal under this section any party
may, either in the prescribed manner or by special leave of the
Court, bring forward further material for the consideration of the
Court.

(8) On an appeal 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 Court.
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) On an appeal under this section the Court may, after
hearing the Registrar, permit the trade mark proposed to be
registered to be modified in any manner not substantially affecting
the identity thereof, but in any such case the trade mark as so
modified shall be advertised in the prescribed manner before being
registered.

(10) If a person giving notice of opposition or an applicant
sending a counter-statement after receipt of a copy of the notice, or
an appellant, neither resides nor carries on business in the Colony,
the tribunal may require him to give security for costs of the
proceedings before it relative to the opposition or to the appeal, as
the case may be, and in default of such security being duly given may
treat the opposition or application, or the appeal, as the case may be,
as abandoned.

16. 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 Court, in deciding whether such trade mark shall be entered or
shall remain on the register, may require, as a condition of its being
on 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 necessary for the purpose of
defining his rights under such registration:

Provided that no disclaimer on 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.

17. (1) When an application for registration of a trade mark
in Part A or in Part B of the register 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, unless the application has been
accepted in error or unless the Governor otherwise directs, register
the trade mark in Part A or Part B, as the case may be, 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:
(Amended, 55 of 1977, s. 3)

Provided that, in relation to the date as of which a trade mark
shall be registered and to the date to be deemed the date of
registration, this subsection shall, as respects an application to
which section 13A applies, have effect subject to that section.
(Added, 55 of 1977, s. 3)

(2) The registration of a trade mark shall be for a period of 7
years, but may be renewed according to the provisions of section 45:

Provided that, in relation to a registration as of a date before
the commencement of this Ordinance, this subsection shall have
effect with the substitution of a period of 14 years for the said period
of 7 years.

(3) On the registration of a trade mark the Registrar shall issue
to the applicant a certificate in the prescribed form of the registra-
tion thereof under the hand and seal of the Registrar.

(4) When the 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 the notice.

18. (1) An application for the registration of a trade mark in
respect of any goods shall not be refused, nor shall permission for
such registration be withheld, on the ground only that it appears
that the applicant does not use or propose to use the trade mark-

(a)if the Registrar is satisfied that a body corporate is about
to be constituted, and that applicant intends to assign the
trade mark to the corporation with a view to the use
thereof in relation to those goods by the corporation; or

(b)if the application is accompanied by an application for the
registration of a person as a registered user of the trade
mark, and the Registrar is satisfied that the proprietor
intends it to be used by that person in relation to those
goods and the Registrar is also satisfied that that person
will be registered as a registered user thereof immediately
after the registration of the trade mark.

(2) The Registrar may, as a condition of the exercise of the
power conferred by subsection (1) in favour of an applicant who
relies on intention to assign to a corporation as aforesaid, require
him to give security for the costs of any proceedings relative to any
opposition, and in default of such security being duly given may
treat the application as abandoned.





(3) Where a trade mark is registered in respect of any goods
under the power conferred by subsection (1) in the name of an
applicant who relies on intention to assign to a corporation as
aforesaid, then, unless within such period as may be prescribed, or
within such further period not exceeding 6 months as the Registrar
may on application being made to him in the prescribed manner
allow, the corporation has been registered as the proprietor of the
trade mark in respect of those goods, the registration shall cease to
have effect in respect thereof at the expiration of that period, and the
Registrar shall amend the register accordingly.

19. Where the relations between 2 or more persons interested
in a trade mark are such that no one of them is entitled as between
himself and the other or others of them to use it except-

(a) on behalf of both or all of them, or

(b)in relation to an article with which both or all of them are
connected in the course of trade,

those persons may be registered as joint proprietors of the trade
mark, and this Ordinance shall have effect in relation to any rights to
the use of the trade mark vested in those persons as if those rights
had been vested in a single person.

Subject as aforesaid, nothing in this Ordinance shall authorize
the registration of 2 or more persons who use a trade mark
independently, or propose so to use it, as joint proprietors thereof.

IDENTICAL TRADE MARKS

20. Except as provided by section 22 no trade mark shall be
registered in respect of any goods or description of goods that is
identical with a trade mark belonging to a different proprietor and
already on the register in respect of the same goods or description of
goods, or that so nearly resembles such a trade mark as to be likely
to deceive or cause confusion.

21. Where separate applications are made by different persons
to be registered as proprietors respectively of trade marks that are
identical or nearly resemble each other, in respect of the same goods
or description of goods, 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 an
appeal, by the Court.

22. In case of honest concurrent use, or of other special
circumstances which in the opinion of the Court or of the Registrar
make it proper to do so, the Court or the Registrar may permit the
registration of trade marks that are identical or nearly resemble each
other in respect of the same goods or description of goods by more
than one proprietor subject to such conditions and limitations, if
any, as the Court or the Registrar, as the case may be, may think it
right to impose.





23. 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 or cause confusion, a trade mark which
is already registered in respect of the same goods or description of
goods in a country or place from which such goods originate:
Provided that no application to register shall be refused under
this section-

(a)if the applicant proves that he or his predecessors in
business have in Hong Kong, in relation to such goods,
continuously used the trade mark for the registration of
which he has made application from a date anterior to the
date of the registration of the other mark in such country
or place of origin; or

(b)if the opponent does not give an undertaking to the
satisfaction of the Registrar that he will, within 3 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.

ASSOCIATED TRADE MARKS

24. (1) Where a trade mark which is registered, or is the
subject of an application for registration, in respect of any goods
is identical with another trade mark which is registered, or is the
subject of an application for registration, in the name of the same
proprietor in respect of the same goods or description of goods, or
so nearly resembles it as to be likely to deceive or cause confusion if
used by a person other than the proprietor, the Registrar may at any
time require that the trade marks shall be entered on the register as
associated trade marks.

(2) On application made in the prescribed manner by the
registered proprietor of 2 or more trade marks registered as
associated trade marks, the Registrar may dissolve the association
as respects any of them if he is satisfied that there would be no
likelihood of deception or confusion being caused if that trade
mark were used by another person in relation to any of the goods
in respect of which it is registered, and he may amend the register
accordingly.
(3) Any decision of the Registrar under the provisions of
subsections (1) and (2) shall be subject to appeal to the Court.

25. (1) 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 whole and any such part as separate trade
marks. Each such separate trade mark must satisfy all the conditions
of an independent trade mark and shall, subject to the provisions of
subsection (2) hereof and section 38(2), have all the incidents of an
independent trade mark.





(2) Where a trade mark and any part or parts thereof are
thus registered as separate trade marks in the name of the same
proprietor, they shall be deemed to be, and shall be registered as,
associated trade marks.

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

(a)statements of the goods in relation to 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 such trade marks, they may be registered as a series
in one registration.
(2) All trade marks so registered shall be deemed to be, and
shall be registered as, associated trade marks.

EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT

27. (1) Subject to the provisions of subsections (2) to (4)
hereof, and of sections 33 and 34, the registration (whether before or
after the commencement of this Ordinance) of a person in Part A of
the register as proprietor of a trade mark (other than a certification
trade mark) in respect of any goods shall, if valid, give or be deemed
to have given to that person the exclusive right to the use of the trade
mark in relation to those goods and, without prejudice to the
generality of the foregoing words, that right shall be deemed to be
infringed by any person who, not being the proprietor of the trade
mark or a registered user thereof using by way of the permitted use,
uses a mark identical with it or so nearly resembling it as to he likely
to deceive or cause confusion, in the course of trade, in relation to
any goods in respect of which it is registered, and in such manner as
to render the use of the mark likely to be taken either-

(a) as being use as a trade mark; or

(b)in a case in which the use is use upon the goods or in
physical relation thereto or in an advertising circular or
other advertisement issued to the public, as importing a
reference to some person having the right either as pro-
prietor or as registered user to use the trade mark or to
goods with which such a person as aforesaid is connected
in the course of trade.

(2) The right to the use of a trade mark given by registration as
aforesaid shall be subject to any conditions or limitations entered on
the register, and shall not be deemed to be infringed by the use of





any such mark as aforesaid in any mode, in relation to goods to be
sold or otherwise traded in in any place, in relation to goods to be
exported to any market, or in any other circumstances, to which,
having regard to any such limitations, the registration does not
extend.

(3) The right to the use of a trade mark given by registration as
aforesaid shall not be deemed to be infringed by the use of any
such mark as aforesaid by any person-

(a)in relation to goods connected in the course of trade with
the proprietor or a registered user of the trade mark if,
as to those goods or a bulk of which they form part,
the proprietor or the registered user conforming to the
permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time
expressly or impliedly consented to the use of the trade
mark; or

(b)in relation to goods adapted to form part of, or to be
accessory to, other goods in relation to which the trade
mark has been used without infringement of the right given
as aforesaid or might for the time being be so used, if the
use of the mark is reasonably necessary in order to indicate
that the goods are so adapted and neither the purpose nor
the effect of the use of the mark is to indicate otherwise
than in accordance with the fact a connexion in the course
of trade between any person and the goods.

(4) The use of a registered trade mark, being one of 2 or more
registered marks which are identical or nearly resemble each other,
in exercise of the right to the use of that trade mark given by
registration as aforesaid, shall not be deemed to be an infringement
of the right so given to the use of any other of those trade marks.
Each registered proprietor of such a trade mark shall otherwise have
the same rights as if he were the sole registered proprietor thereof.

28. (1) Except as provided by subsection (2), the registration
of a person in Part B of the register as proprietor of a trade mark in
respect of any goods shall, if valid, give or be deemed to have given
to that person the like right in relation to those goods as if the
registration had been in Part A of the register, and the provisions of
section 27 shall have effect in like manner in relation to a trade mark
registered in Part B of the register as they have effect in relation to a
trade mark registered in Part A of the register.

(2) In any action for infringement of the right to the use of a
trade mark given by registration as aforesaid in Part B of the
register, otherwise than by an act that is deemed to be an infringe-
ment by virtue of section 32, no injunction or other relief shall be
granted to the plaintiff if the defendant establishes to the satisfac-
tion of the Court that the use of which the plaintiff complains is
not likely to deceive or cause confusion or to be taken as indicating





a connexion in the course of trade between the goods and some
person having the right either as proprietor or as registered user to
use the trade mark.

29. In all legal proceedings relating to a registered trade mark
(including applications under section 48) the fact that a person is
registered as proprietor of such trade mark shall be prima facie
evidence of the validity of the original registration of such trade
mark and of all subsequent assignments and transmissions thereof.

30. (1) In all legal proceedings relating to a trade mark
registered in Part A of the register (including applications under
section 48) the original registration of the trade mark in Part A of
the register shall, after the expiration of 7 years from the date of that
registration, be taken to be valid in all respects, unless-

(a) that registration was obtained by fraud; or

(b)the trade mark offends against the provisions of sec-
tion 12(1).

(2) Nothing in section 28(1) shall be construed as making
applicable to a trade mark registered in Part B of the register the
provisions of subsection (1) relating to a trade mark registered in
Part A of the register.

31. Subject to the provisions of this Ordinance, equities in
respect of a trade mark may be enforced in like manner as in respect
of any other personal property.

32. (1) Where, by a contract in writing made with the
proprietor or a registered user of a registered trade mark, a
purchaser or owner of goods enters into an obligation to the effect
that he will not do, in relation to the goods, an act to which this
section applies, any person who, being the owner for the time being
of the goods and having notice of the obligation, does that act, or
authorizes it to be done, in relation to the goods, in the course of
trade or with a view to any dealing therewith in the course of trade,
shall be deemed thereby to infringe the right to the use of the trade
mark given by the registration thereof, unless that person became
the owner of the goods by purchase for money or money's worth in
good faith before receiving notice of the obligation or by virtue of
a title derived through another who so became the owner thereof.

(2) The acts to which this section applies are-

(a)the application of the trade mark upon the goods after they
have suffered alteration in any manner specified in the
contract as respects their state or condition, get-up or
packing;

(b) in a case in which the trade mark is upon the goods, the
alteration, part removal or part obliteration thereof,





(c)in a case in which the trade mark is upon the goods, and there
is also there on other matter, being matter indicating a
connexion in the course of trade between the proprietor or
registered user and the goods, the removal or obliteration,
whether wholly or partly, of the trade mark unless that other
matter is wholly removed or obliterated;

(d)in a case in which the trade mark is upon the goods, the
application of any other trade mark to the goods;

(e)in a case in which the trade mark is upon the goods, the
addition to the goods of any other matter in writing that is
likely to injure the reputation of the trade mark.

(3) In this section references in relation to any goods to the
proprietor, to a registered user, and to the registration, of a trade mark
shall be construed, respectively, as references to the proprietor in whose
name the trade mark is registered, to a registered user who is registered,
and to the registration of the trade mark, in respect of those goods, and
the expression 'upon' includes in relation to any goods a reference to
physical relation thereto.

33. Nothing in this Ordinance shall entitle the proprietor or a
registered user of a registered trade mark to interfere with or restrain the
use by any person of a trade mark identical with or nearly resembling it
in relation to goods in relation to which that person or a predecessor in
title of his has continuously used that trade mark from a date anterior

(a)to the use of the first mentioned trade mark in relation to those
goods by the proprietor or a predecessor in title of his, or

(b)to the registration of the first-mentioned trade mark in respect
of those goods in the name of the proprietor or a predecessor
in title of his,

whichever is the earlier, or to object (on such use being proved) to that
person being put on the register for that identical or nearly resembling
trade mark in respect of those goods under section 22.

34. No registration of a trade mark shall interfere with-

(a)any bona fide use by a person of his own name or of the name
of his place of business, or of the name, or of the name of the
place of business, of any of his predecessors in business; or

(b)the use by any person of any bona fide description of the
character or quality of his goods, not being a description that
would be likely to be taken as importing any such reference as
is mentioned in section 27(1)(b) or in section 67(1)(b).





35. No person shall be entitled to institute any proceeding to
prevent, or to recover damages for, the infringement of an unregis-
tered trade mark.

36. Nothing in this Ordinance contained shall be deemed to
affect rights of action against any person for passing off goods as
those of another person or the remedies in respect thereof.

USE AND NON-USE OF TRADE MARKS

37. (1) Subject to the provisions of section 55(1) and sec-
tion 57(1), a registered trade mark may be taken off the register in
respect of any of the goods in respect of which it is registered on
application by any person aggrieved to the Court, or, at the option
of the applicant and subject to the provisions of section 80, to the
Registrar, on the ground either-

(a)that the trade mark was registered without any bona fide
intention on the part of the applicant for registration that
it should be used in relation to those goods by him or, if it
was registered under section 18(1), by the corporation or
registered user concerned, and that there has in fact been
no bona fide use of the trade mark in relation to those
goods by any proprietor thereof for the time being up to
the date one month before the date of the application; or

(b)that up to the date one month before the date of the
application a continuous period of 5 years or longer
elapsed during which the trade mark was a registered trade
mark and during which there was no bona fide use thereof
in relation to those goods by any proprietor thereof for the
time being:

Provided that (except where the applicant has been permitted
under section 22 to register an identical or nearly resembling trade
mark in respect of the goods in question or where the tribunal is of
opinion that he might properly be permitted so to register such a
trade mark) the tribunal may refuse an application made under
paragraph (a) or (b) in relation to any goods, if it is shown that there
has been, before the relevant date or during the relevant period, as
the case may be, bona fide use of the trade mark by any proprietor
thereof for the time being in relation to goods of the same descrip-
tion, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade
mark is registered-

(a)the matters referred to in subsection (1)(b) are shown so far
as regards non-use of the trade mark in relation to goods
to be sold, or otherwise traded in, in the Colony (otherwise
than for export from the Colony), or in relation to goods
to be exported to a particular market outside the Colony;
and





(b)a person has been permitted under section 22 to register an
identical or nearly resembling trade mark in respect of
those goods under a registration extending to use in
relation to goods to be sold, or otherwise traded in, in the
Colony (otherwise than for export from the Colony), or in
relation to goods to be exported to that market, or the
tribunal is of opinion that he might properly be permitted
so to register such a trade mark,

on application by that person to the Court or, at the option of
the applicant and subject to the provisions of section 80, to the
Registrar, the tribunal may impose on the registration of the first-
mentioned trade mark such limitations as the tribunal thinks proper
for securing that that registration shall cease to extend to such use
as last aforesaid.

(3) An applicant shall not be entitled to rely for the purposes
of subsection (1)(b) or for the purposes of subsection (2) on any
non-use of a trade mark which is shown to have been due to special
circumstances in the trade and not to any intention not to use or
to abandon the trade mark in relation to the goods to which the
application relates.

38. (1) Where under the provisions of this Ordinance use of a
registered trade mark is required to be proved for any purpose, the
tribunal may, if and so far as the tribunal thinks right, accept use
of an associated registered trade mark, or of the trade mark with
additions or alterations not substantially affecting its identity, as an
equivalent for the use required to be proved.

(2) The use of the whole of a registered trade mark shall for
the purposes of this Ordinance be deemed to be also use of any
registered trade mark, being a part thereof, registered in the name of
the same proprietor by virtue of section 25(1).

39. (1) The application in the Colony of a trade mark to
goods to be exported from the Colony, and any other act done in
the Colony in relation to goods to be so exported which, if done
in relation to goods to be sold or otherwise traded in within the
Colony, would constitute use of a trade mark therein, shall be
deemed to constitute use of the trade mark in relation to those goods
for any purpose for which such use is material under this Ordinance
or at common law.

(2) Subsection (1) shall be deemed to have effect in relation to
an act done before, as it has effect in relation to an act done after, the
commencement of this Ordinance.

40. The use of a registered trade mark in relation to goods
between which and the person using it any form of connexion in the
course of trade subsists shall not be deemed to be likely to cause
deception or confusion on the ground only that the trade mark has
been, or is, used in relation to goods between which and that person





or a predecessor in title of his a different form of connexion in the
course of trade subsisted or subsists.

ASSIGNMENT AND TRANSMISSION

41. (1) Notwithstanding any rule of law or equity to the
contrary, a registered trade mark shall be, and shall be deemed
always to have been, assignable and transmissible either in con-
nexion with the goodwill of a business or not.

(2) A registered trade mark shall be, and shall be deemed
always to have been, assignable and transmissible in respect either of
all the goods in respect of which it is registered, or was registered, as
the case may be, or of some (but not all) of those goods.

(3) The provisions of subsections (1) and (2) shall have effect
in the case of an unregistered trade mark used in relation to any
goods as they have effect in the case of a registered trade mark
registered in respect of any goods, if at the time of the assignment or
transmission of the unregistered trade mark it is or was used in the
same business as a registered trade mark, and if it is or was assigned
or transmitted at the same time and to the same person as that
registered trade mark and in respect of goods all of which are goods
in relation to which the unregistered trade mark is or was used in
that business and in respect of which that registered trade mark is or
was assigned or transmitted.

(4) Notwithstanding anything in subsections (1), (2) and (3), a
trade mark shall not be, or be deemed to have been, assignable or
transmissible in a case in which as a result of an assignment or
transmission there would in the circumstances subsist, or have
subsisted, whether under the common law or by registration, exclu-
sive rights in more than one of the persons concerned to the use, in
relation to the same goods or description of goods, of trade marks
nearly resembling each other or of identical trade marks, if, having
regard to the similarity of the goods and of the trade marks, the use
of the trade marks in exercise of those rights would be, or have been,
likely to deceive or cause confusion:

Provided that, where a trade mark is, or has been, assigned or
transmitted in such a case as aforesaid, the assignment or transmis-
sion shall not be deemed to be, or to have been, invalid under this
subsection if the exclusive rights subsisting as a result thereof in
the persons concerned respectively are, or were, having regard to
limitations imposed thereon, such as not to be exercisable by two or
more of those persons in relation to goods to be sold, or otherwise
traded in, within the Colony (otherwise than for export therefrom),
or in relation to goods to be exported to the same market outside the
Colony.

(5) The proprietor of a registered trade mark who proposes to
assign it in respect of any goods in respect of which it is registered
may submit to the Registrar in the prescribed manner a statement of





case setting out the circumstances, and the Registrar may issue to him a
certificate stating whether, having regard to the similarity of the goods
and of the trade marks referred to in the case, the proposed assignment
of the first-mentioned trade mark would or would not be invalid under
subsection (4), and a certificate so issued shall, subject to the
provisions of this section as to appeal and unless it is shown that the
certificate was obtained by fraud or misrepresentation, be conclusive as
to the validity or invalidity under subsection (4) of the assignment in so
far as such validity or invalidity depends upon the facts set out in the
case, but, as regards a certificate in favour of validity, only if application
for the registration under section 43 of the title of the person becoming
entitled is made within 6 months from the date on which the certificate is
issued.

(6) Where an assignment in respect of any goods of a trade mark
that is at the time of the assignment used in a business in those goods
is made on or after the commencement of this Ordinance otherwise than
in connexion with the goodwill of that business, the assignment shall
not take effect until the following requirements have been satisfied, that
is to say, the assignee must, not later than the expiration of 6 months
from the date on which the assignment is made or within such extended
period, if any, as the Registrar may allow, apply to him for directions
with respect to the advertisement of the assignment, and must advertise
it in such form and manner and within such period as the Registrar may
direct.

(7) Any decision of the Registrar under this section shall be
subject to appeal to the Court.

42. Subject to the provisions of this Ordinance, the person for the
time being entered in the register as proprietor of a trade mark shall,
subject to any rights appearing from the register to be vested in any
other person, have power to assign the trade mark, and to give effectual
receipts for any consideration for an assignment.

43. (1) Where a person becomes entitled by assignment or
transmission to a registered trade mark, he shall make application to
the Registrar to register his title, and the Registrar shall, on receipt
of such application and on proof of title to his satisfaction, register
him as the proprietor of the trade mark in respect of the goods in
respect of which the assignment or transmission has effect, and shall
cause particulars of the assignment or transmission to be entered on
the register.

(2) Any decision of the Registrar under this section shall be
subject to appeal to the Court.

(3) Except for the purposes of an appeal under this section or of an
application under section 48, a document or instrument in respect of
which no entry has been made in the register in accordance with the
provisions of subsection (1) shall not be admitted in evidence in any
Court in proof of the title to a trade mark unless the Court otherwise
directs.





44. Trade marks that are registered as, or that are deemed by
virtue of this Ordinance to be, associated trade marks shall be
assignable and 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.

RENEWAL OF REGISTRATION

45. The Registrar shall, on application made by the 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 14 years from the date of expiration of the original
registration as stated in section 17(2) or of the last renewal of
registration, as the case may be, which date is hereinafter referred to
as 'the expiration of the last registration'.

46. At the prescribed time before the expiration of the last
registration of a trade mark, the Registrar shall send notice in the
prescribed manner to the registered proprietor 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 registration may be
obtained, and, if at the expiration of the time prescribed in that
behalf those 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.

47. Where a trade mark has been removed from the register for
non-payment of the fee for renewal. it shall, nevertheless, for the
purpose of any application for registration of a trade mark during
one year next after the date of such removal, be deemed to be a trade
mark that is already on the register:

Provided that the foregoing provisions of this section shall not
have effect when the Registrar is satisfied either-

(a)that there has been no bona fide trade use of the trade
mark that has been removed during the 2 years immedi-
ately preceding its removal; or

(b)that no deception or confusion would be likely to arise
from the use of the trade mark that is the subject of the
application for registration by reason of any previous use
of the trade mark that has been removed.

RECTIFICATION AND CORRECTION OF REGISTER

48. (1) Subject to the provisions of this Ordinance-

(a)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 and subject
to the provisions of section 80, to the Registrar, and the
tribunal may make such order for making, expunging or
varying the entry as the tribunal may think fit;

(b)the 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;

(c)in case of fraud in the registration, assignment or transmis-
sion of a registered trade mark, the Registrar may himself
apply to the Court under the provisions of this section;

(d)any order of the Court rectifying the register shall
direct that notice of the rectification shall be served in
the prescribed manner on the Registrar, and the Regis-
trar shall on receipt of the notice rectify the register
accordingly.

(2) The power to rectify the register conferred by this section
shall include power to remove a registration in Part A of the register
to Part B.

49. On application by any person aggrieved to the Court, or,
at the option of the applicant and subject to the provisions of
section 80, to the Registrar, or on application by the Registrar to
the Court, the tribunal may make such order as the tribunal may
think fit for expunging or varying the registration of a trade mark
on the ground of any contravention of, or failure to observe, a
condition entered on the register in relation thereto.

50. (1) The Registrar may, on request made in the prescribed
manner by the registered proprietor-

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

(b)enter any change in the name, address or description 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 in
respect of which a trade mark is registered; or

(e)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.

(2) The Registrar may, on request made in the prescribed
manner by a registered user of a trade mark, correct any error,
or enter any change, in the name, address or description of the
registered user.

(3) Any decision of the Registrar under this section shall be
subject to appeal to the Court.





51. (1) The registered proprietor of a trade mark may apply in the
prescribed manner to the Registrar for leave to add to or alter the trade
mark in any manner not substantially affecting the identity thereof, and
the Registrar may refuse such leave or may grant it on such terms and
subject to such limitations as he may think fit.

(2) The Registrar may cause an application under this section to be
advertised in the prescribed manner in any case where it appears to him
that it is expedient so to do, and where he does so, if within the
prescribed time from the date of the advertisement any person gives
notice to the Registrar in the prescribed manner of opposition to the
application, the Registrar shall, after hearing the parties if so required,
decide the matter.

(3) Any decision of the Registrar under this section shall be subject
to appeal to the Court.

(4) Where leave as aforesaid is granted, the trade mark as altered
shall be advertised in the prescribed manner, unless it has already been
advertised, in the form to which it has been altered, in an advertisement
under subsection (2).

52. (1) The registration of a trade mark shall not be deemed to have
become invalid by reason only of any use, after the date of the
registration, of a word or words which the trade mark contains, or of
which it consists, as the name or description of an article or substance:

Provided that, if it is proved either

(a)that there is a well-known and established use of the word or
words as the name or description of the article or substance
by a person or persons carrying on a trade therein, not being
use in relation to goods connected in the course of trade with
the proprietor or a registered user of the trade mark or (in the
case of a certification trade mark) goods certified by the
proprietor; or

(b)that the article or substance was formerly manufactured under
a patent, that a period of 2 years or more after the cesser of the
patent has elapsed, and that the word or words is or are the
only practicable name or description of the article or
substance,

the provisions of subsection (2) shall have effect.

(2) Where the facts mentioned in paragraph (a) or (b) of the
proviso to subsection (1) are proved with respect to any word or words,
then

(a)if the trade mark consists solely of that word or those words,
the registration of the trade mark, so far as regards registration
in respect of the article or substance in question or of any
goods of the same description, shall be deemed for the
purposes of section 48 to be an entry wrongly remaining on
the register;





(b)if the trade mark contains that word or those words and
other matter, the Court or the Registrar, in deciding
whether the trade mark shall remain on the register, so far
as regards registration in respect of the article or substance
in question and of any goods of the same description, may,
in case of a decision in favour of its remaining on the
register, require as a condition thereof that the proprietor
shall disclaim any right to the exclusive use in relation to
that article or substance and any goods of the same
description of that word or those words, so, however, that
no disclaimer on 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; and

(c)for the purposes of any other legal proceedings relating to
the trade mark-
(i) if the mark consists solely of that word or those
words, all rights of the proprietor, whether under the
common law or by registration, to the exclusive use of the
trade mark in relation to the article or substance in
question or to any goods of the same description, or
(ii) if the trade mark contains that word or those words
and other matter, all such rights of the proprietor to the
exclusive use of that word or those words in such relation
as aforesaid,

shall be deemed to have ceased on the date at which the use
mentioned in paragraph (a) of the proviso to subsection (1) first
became well-known and established, or at the expiration of 2 years
mentioned in paragraph (b) of that proviso.

53. The Court may, on application in writing made within 7
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 or cause confusion, a 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 such goods originate:

Provided 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 5 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 5 years, and in
either event gives an undertaking to the satisfaction of the
Registrar that he will within 3 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 or
origin, and will take all necessary steps to complete the
registration.

54. (1) The Governor in Council may from time to time make such
rules, prescribe such forms and generally do such things as he thinks
expedient, for empowering the Registrar to amend the register, whether
by making or expunging or varying entries therein, so far as may be
requisite for the purpose of adapting the designation therein of the
goods or classes of goods in respect of which trade marks are registered
to any amended or substituted classification that may be prescribed.

(2) The Registrar shall not, in exercise of any power conferred on
him for the purpose aforesaid, make any amendment of the register that
would have the effect of adding any goods or classes of goods to those
in respect of which a trade mark is registered (whether in one or more
classes) immediately before the amendment is to be made, or of
antedating the registration of a trade mark in respect of any goods:

Provided that this subsection shall not have effect in relation to
goods as to which the Registrar is satisfied that compliance with this
subsection in relation thereto would involve undue complexity and that
the addition or antedating, as the case may be, would not affect any
substantial quantity of goods and would not substantially prejudice the
rights of any person.

(3) A proposal for the amendment of the register for the purpose
aforesaid shall be notified to the registered proprietor of the trade,mark
affected, shall be subject to appeal by the registered proprietor to the
Court, shall be advertised with any modifications, and may be opposed
before the Registrar by any person aggrieved on the ground that the
proposed amendment contravenes the provisions of subsection (2). The
decision of the Registrar on any such opposition shall be subject to
appeal to the Court.





DEFENSIVE TRADE MARKS

55.(1) (a) Where a trade mark consisting of an invented word or
invented words, or a device or devices, or a combination of
them, has become so exceptionally well known as respects any
goods in respect of which it is registered and in relation to
which it has been used that the use thereof in relation to other
goods would be likely to detract from its distinctive character
in respect of the first-mentioned goods, then, notwithstanding
that such use would not be likely to be taken as indicating a
connexion in the course of trade between those other goods
and a person entitled to use the trade mark in relation to the
firstmentioned goods and that the proprietor registered in
respect of the first-mentioned goods does not use or propose
to use the trade mark in relation to those other goods, and
notwithstanding anything in section 37, the trade mark may,
on the application in the prescribed manner of the proprietor
registered in respect of the first-mentioned goods, be
registered in his name in respect of those other goods as a
defensive trade mark and, while so registered, shall not be
liable to be taken off the register in respect of those other
goods under section 37.

(b)In determining whether a trade mark is exceptionally well
known and whether its use in relation to other goods would be
likely to detract from its distinctive character in respect of the
goods for which it is registered, the tribunal shall have regard
to all related circumstances, including the length of time the
trade mark has been in use, the extent to which it has become
well known in relation to the goods in respect of which it is
registered, the nature of those goods, and whether the
notoriety of the mark is limited because of its use,on goods
that are not of wide distribution.

(2) The registered proprietor of a trade mark may apply for the
registration thereof in respect of any goods as a defensive trade mark
notwithstanding that it is already registered in his name in respect of
those goods otherwise than as a defensive trade mark, or may apply for
the registration thereof in respect of any goods otherwise than as a
defensive trade mark notwithstanding that it is already registered in his
name in respect of those goods as a defensive trade mark, in lieu in each
case of the existing registration.

(3) Except as otherwise expressly provided in this section and in
sections 56 and 57, the provisions of this Ordinance shall apply in
respect of the registration of trade marks as defensive trade marks and
of trade marks so registered as they apply in other cases.

56. A trade mark registered as a defensive trade mark and that trade
mark as otherwise registered in the name of the same proprietor shall,
notwithstanding that the respective registrations are in respect of
different goods, be deemed to be, and shall be registered as, associated
trade marks.





57. (1) On application by any person aggrieved to the Court, or, at
the option of the applicant and subject to the provisions of section 80,
to the Registrar, the registration of a trade mark as a defensive trade
mark may be cancelled on the ground that the requirements of section
55(1) are no longer satisfied in respect of any goods in respect of which
the trade mark is registered in the name of the same proprietor otherwise
than as a defensive trade mark, or may be cancelled as respects any
goods in respect of which it is registered as a defensive trade mark on
the ground that there is no longer any likelihood that the use of the
trade mark in relation to those goods would detract from its distinctive
character in respect of the goods first-mentioned in section 55(1).

(2) The Registrar may at any time cancel the registration as a
defensive trade mark of a trade mark of which there is no longer any
registration in the name of the same proprietor otherwise than as a
defensive trade mark.

REGISTERED USERS

58.(1) (a) Subject to the provisions of this section and sections
59 to 63, a person other than the proprietor of a trade mark
may be registered as a registered user thereof in respect of all
or any of the goods in respect of which it is registered
(otherwise than as a defensive trade mark) and either with or
without conditions or restrictions.

(b)The use of a trade mark by a registered user thereof in relation
to goods with which he is connected in the course of trade
and in respect of which for the time being the trade mark
remains registered and he is registered as a registered user,
being use such as to comply with any conditions or
restrictions to which his registration is subject, is in this
Ordinance referred to as the 'permitted use' thereof.

(2)(a) The permitted use of a trade mark shall be deemed to be
use by the proprietor thereof, and shall be deemed not to be
use by a person other than the proprietor, for the purposes of
section 37 and for any other purpose for which such'use is
material under this Ordinance or at common law.

(b)Where a person is registered as a registered user of a trade
mark on an application made within one year from the
commencement of this Ordinance, this subsection shall have
effect in relation to any previous use (whether before or after
the commencement of this Ordinance) of the trade mark by
that person, being use in relation to the goods in respect of
which he is registered and, where he is registered subject to
conditions or restrictions, being use such as to comply
substantially therewith, as if such previous use had been
permitted use.
,'00000001.TIF'
,'00000002.TIF'
,'00000003.TIF'
,'00000004.TIF'
,'00000005.TIF'
'Originally 47 of 1954. 92 of 1975. 55 of 1977. 3 of 1985. G.N.A. 143/54. Short title. 1938 c. 22, s. 71. Interpretation. 1938 c. 22, s. 68. (Cap. 100.)','00000006.TIF'
'Register of trade marks. 1938 c. 22, s. 1(1) and (4). Division of register into 2 parts. 1938 c. 22, s. 1(2). [cf. 1919 c. 79, s. 1.] Trust not to be entered in register. 1938 c. 22, s. 64(1). Inspection of register. 1938 c. 22, s. 1(3). Extracts from register. [cf. 1905 c. 15, s. 7.]','00000007.TIF'
'Trade mark must be for particular goods. 1938 c. 22, s. 3. Trade marks registrable in Part A. 1938 c. 22, s. 9. Trade marks registrable in Part B. 1938 c. 22, s. 10.','00000008.TIF'
'Coloured trade marks. 1938 c. 22, s. 16. Restriction on registration. 1938 c. 22, s. 11. 1938 c. 22, s. 15(3). Application for registration. 1938 c. 22, s. 17.','00000009.TIF'
'Priority for application made in Convention country. [cf. 1907 c. 29, s. 91.]','00000010.TIF'
'Schedule.','00000011.TIF'
'Advertisement of application. 1938 c. 22, s. 18(1). Opposition to registration. 1938 c. 22, s. 18(2) to (11).','00000012.TIF'
'Disclaimers. 1938 c. 22, s. 14. Registration, and failure to complete. 1938 c. 22, s. 19(1).','00000013.TIF'
'[cf. 1938 Geo. 6 c. 22, s. 19(1).] 1938 c. 22, s. 20(1). 1938 c. 22, s. 19(2). 1938 c. 22, s. 19(3). Application for registration of mark not to be used by applicant but to be assigned to corporation to be constituted or to be used by registered user. 1938 c. 22, s. 29.','00000014.TIF'
'Jointly owned trade marks. 1938 c. 22, s. 63. Prohibition of registration of trade mark identical with or resembling a registered trade mark. 1938 c. 22, s. 12(1). Applications for registration of identical or resembling trade marks. 1938 c. 22, s. 12(3). Concurrent use. 1938 c. 22, s. 12(2).','00000015.TIF'
'Protection of marks registered in country of origin. Associated trade marks. 1938 c. 22, s. 23(2). 1938 c. 22, s. 23(5). Combined trade marks. 1938 c. 22, s. 21(1).','00000016.TIF'
'1938 c. 22, s. 23(3). Series of trade marks. 1938 c. 22, s. 21(2). 1938 c. 22, s. 23(4). Right given by registration in Part A, and infringement thereof. 1938 c. 22, s. 4.','00000017.TIF'
'Right given by registration in Part B, and infringement thereof. 1938 c. 22, s. 5.','00000018.TIF'
'Registration to be prima facie evidence of validity. 1938 c. 22, s. 46. Registration in Part A to be conclusive as to validity after 7 years. 1938 c. 22, s. 13. Equities in respect of trade marks. 1938 c. 22, s. 64(2). Infringement by breach of certain restrictions. 1938 c. 22, s. 6.','00000019.TIF'
'Saving for vested rights. 1938 c. 22, s. 7. Saving for use of name, address or description of goods. 1938 c. 22, s. 8.','00000020.TIF'
'No action for infringement of unregistered trade mark. 1938 c. 22, s. 2. ''Passing off'' action. 1938 c. 22, s. 2. Removal from register and imposition of limitations on ground of non-use. 1938 c. 22, s. 26.','00000021.TIF'
'Use of one of associated trade marks equivalent to use of another. 1938 c. 22, s. 30. Use of trade mark for export trade constitutes use of the trade mark. 1938 c. 22, s. 31. 1938 c. 22, THIRD SCHEDULE, Para. 6. Use of trade mark after change in form of trade connexion. 1938 c. 22, s. 62.','00000022.TIF'
'Powers of, and restrictions on, assignment and transmission of trade marks. 1938 c. 22, s. 22.','00000023.TIF'
'Power of registered proprietor to assign, and give receipts. 1938 c. 22, s. 24. Registration of assignments and transmissions. 1938 c. 22, s. 25.','00000024.TIF'
'Assignments and transmissions of associated trade marks. 1938 c. 22, s. 23(1). Renewal of registration. 1938 c. 22, s. 20(2). Procedure on expiry of period of registration. 1938 c. 22, s. 20(3). Status of unrenewed trade mark. 1938 c. 22, s. 20(4). General power to rectify entries in register. 1938 c. 22, s. 32.','00000025.TIF'
'Power to expunge or vary registration for breach of condition. 1938 c. 22, s. 33. Correction of register. 1938 c. 22, s. 34.','00000026.TIF'
'Alteration of registered trade mark. 1938 c. 22, s. 35. Words used as name or description of an article or substance. 1938 c. 22, s. 15(1) and (2).','00000027.TIF'
'Removal of trade mark from register on proof of prior registration in country of origin.','00000028.TIF'
'Adaptation of entries in register to amended or substituted classification of goods. 1938 c. 22, s. 36.','00000029.TIF'
'Defensive registration of trade marks. 1938 c. 22, s. 27(1) and (2). 1938 c. 22, s. 27(6). Defensive trade marks to be registered as associated trade marks. 1938 c. 22, s. 27(3).','00000030.TIF'
'Removal of defensive trade marks from the register. 1938 c. 22, s. 27(4) and (5). Registration as a registered user. Meaning of ''permitted use''. 1938 c. 22, s. 28(1) and (2).','00000031.TIF'
'1938 c. 22, s. 28(4) to (7). Proceedings for infringement. 1938 c. 22, s. 28(3).','00000032.TIF'
'Variation or cancellation of registration as a registered user. 1938 c. 22, s. 28(8) and (10). Notification of registration as registered user and of application for variation or cancellation of such registration. 1938 c. 22, s. 28(9). Register's decision subject to appeal to Court. 1938 c. 22, s. 28(11).','00000033.TIF'
'Right to use not assignable or transmissible. 1938 c. 22, s. 28(12). Marks registrable as certification trade marks. 1938 c. 22, s. 37(1) and (2). Application for registration as certification trade mark. 1938 c. 22, FIRST SCHEDULE, Para. 1. 1938 c. 22, s. 37(7).','00000034.TIF'
'1938 c. 22, FIRST SCHEDULE, Para. 1. Advertisement of application. Opposition to registration. 1938 c. 22, FIRST SCHEDULE, Para. 2.','00000035.TIF'
'Right given by registration, and infringement thereof. 1938 c. 22, s. 37(3) to (6).','00000036.TIF'
'Alteration of deposited regulations, or expunging or varying of entry in register relating to certification trade mark. 1938 c. 22, FIRST SCHEDULE, Paras. 3 and 4. Certification trade mark assignable or transmissible only with Registrar's consent. 1938 c. 22, s. 37(8).','00000037.TIF'
'Registrar not empowered to award costs on appeals to him. 1938 c. 22, FIRST SCHEDULE, Para. 5. Provisions not applicable to certification trade marks. 1938 c. 22, FIRST SCHEDULE, Para. 6. Trade mark registered under section 59 of Trade Marks Ordinance 1909, to be deemed registered as a certification trade mark under this Ordinance. 1938 c. 22, THIRD SCHEDULE, Para. 7. (40 of 1909, See Cap. 43, 1950 Ed.) Preliminary advice by Registrar as to distinctiveness. 1938 c. 22, s. 42.','00000038.TIF'
'Hearing before exercise of discretionary power of Registrar. 1938 c. 22, s. 43. Certificate of validity. 1938 c. 22, s. 47. Trade usage, etc., to be considered. 1938 c. 22, s. 49. Registrar's appearance in proceedings involving rectification. 1938 c. 22, s. 50. Appeal from Registrar. 1938 c. 22, s. 51.','00000039.TIF'
'Appeal to Court of Appeal. Discretion of Court in appeals. 1938 c. 22, s. 52. Procedure in case of option to apply to Court or Registrar. 1938 c. 22, s. 54. Costs of proceedings before the Court. 1938 c. 22, s. 48. Costs of proceedings before the Registrar. 1938 c. 22, s. 44. Mode of giving evidence. 1938 c. 22, s. 55.','00000040.TIF'
'Evidence of entries in Hong Kong or United Kingdom Register. 1938 c. 22, s. 57. Evidence of entries made or of things done by Registrar, or Comptroller-General of U.K. Patent Office. 1938 c. 22, s. 58. Falsification of entries in register. 1938 c. 22, s. 59. Falsely representing a trade mark as registered, etc. 1938 c. 22, s. 60.','00000041.TIF'
'Restraint of use of Royal Arms. 1938 c. 22, s. 61. Recognition of agents. 1938 c. 22, s. 65. Power of Governor in Council to make rules. 1938 c. 22, s. 40.','00000042.TIF'
'Validity of registrations under previous enactments. 1938 c. 22, s. 69.','00000043.TIF'
,'00000044.TIF'
,'00000045.TIF'
,'00000046.TIF'
,'00000047.TIF'
,'00000048.TIF'
,'00000049.TIF'
,'00000050.TIF'
,'00000051.TIF'
,'00000052.TIF'
,'00000053.TIF'
,'00000054.TIF'
,'00000055.TIF'
,'00000056.TIF'
,'00000057.TIF'
,'00000058.TIF'
,'00000059.TIF'
,'00000060.TIF'
,'00000061.TIF'
,'00000062.TIF'
,'00000063.TIF'
,'00000064.TIF'
,'00000065.TIF'
,'00000066.TIF'
,'00000067.TIF'
,'00000068.TIF'
,'00000069.TIF'
,'00000070.TIF'
,'00000071.TIF'
,'00000072.TIF'
,'00000073.TIF'
,'00000074.TIF'
,'00000075.TIF'
,'00000076.TIF'
,'00000077.TIF'
,'00000078.TIF'
,'00000079.TIF'
,'00000080.TIF'
,'00000081.TIF'
,'00000082.TIF'
,'00000083.TIF'
,'00000084.TIF'
,'00000085.TIF'
,'00000086.TIF'
,'00000087.TIF'
,'00000088.TIF'
,'00000089.TIF'
,'00000090.TIF'
,'00000091.TIF'
,'00000092.TIF'
,'00000093.TIF'
'(a) Here insert full name and address. (b) Here specify the goods. Only goods included in one class should be specified. A separate Form of Request is required for each class. (c) Here insert the number of the class (if known). In case of doubt, the Registrar's direction may be obtained. (d) Signature. *The Registrar's direction should be obtained if the class is not known. (a) Here specify the goods (in the class stated) in respect of which the search is to be made. (b) Signature. (c) Address.','00000094.TIF'
'(a) Here insert full name and address. (b) Signature.','00000095.TIF'
,'00000096.TIF'
,'00000097.TIF'
'(a) Insert words and number identifying the matter or proceeding.','00000098.TIF'
'(b) Signature. (a) Here insert full name and address. (b) If registration is opposed on the ground that the marks resembles marks already on the register, the numbers of those marks and of the Gazettes in which they have been advertised are to be set out. (c) Signature. ','00000099.TIF'
'(a) Signature. (a) Here insert full name and address. (b) Strike out words here that are not applicable, so as to state one of the cases (1) to (5) only. ( c) Signature. (d) Address. ','00000100.TIF'
'(a) Signature.','00000101.TIF'
,'00000102.TIF'
'(a) Signature. (a) Name and address of registered proprietor, or other assignor or transmitter. (b) Full name, trade address and nationality of transferee. ( c) Name of transferee. (d) Description of transferee. (e) Trade or business address of transferee. *Additional numbers may be given in a signed schedule on the back of the Form. (f) Date of acquisition of proprietorship. (g) Full particulars of the instrument of assignment or transmission, if any, or statement of case. (h) Strike out any words not applicable (see rule 45). (i) Signature of assignor or transmitter. (j) Signature of transferee.','00000103.TIF'
'(a) Here insert full name, trade or business address, nationality and description. *Additional numbers may be given in a signed schedule on the back of the Form. (b) Date of acquisition of proprietorship. ( c) Here insert full particulars of the instrument of assignment or transmission, if any, or statement of case. (d) Strike out any words not applicable (See rule 45). (e) Signature. ','00000104.TIF'
'(a) (1) This paragraph is not required when the declaration is made elsewhere than in Hong Kong. (2) When the declaration is made by a person who does not understand the English language the requirements of the Oaths and Declarations Ordinance (Chapter 11 of the Laws of Hong Kong) must be complied with when the declaration is made in Hong Kong, and if made elsewhere a proper clause must be added. (b) To be signed here by the person making the declaration. ( c) Signature and title of authority before whom the declaration is made. (a) Here insert full name and address of the applicant. (b) Here insert ''2'', or ''4'', or ''6''.','00000105.TIF'
'(c) Additional numbers may be given in a signed schedule on the back of the Form. (d) Signature. (a) Here insert the name and trade or business address of the registered proprietor. (b) Here insert the name and trade or business address of the proposed assignee. (c) Signature.','00000106.TIF'
'(a) Here insert the name and trade or business address of the assignee. (applicant). (b) Here insert the name and trade or business address of the proprietor (assignor). (c) Only those unregistered Trade Marks passing by the one assignment and used in the same business and for the same goods as those for which one or more of the registered marks are registered may be stated here. (d) Signature.','00000107.TIF'
'(a) Here insert the name and trade or business address of the assignee. (applicant). (b) Here insert: ''1'', or ''2'' or ''3''. (c) Here insert the name and trade or business address of the proprietor (assignor). (d) Signature.','00000108.TIF'
'(a) Here specify the goods. Only goods included in one class should be specified. A separate application form is required for each class. (b) Here insert the full name, description and nationality of the applicant. If the applicant is a body corporate, the kind and country of incorporation should be stated. ( c) Here insert full address of the applicant. (d) Signature. (a) Delete whichever is inapplicable.','00000109.TIF'
'(a) Here insert full name/s and address/es. (b) The grounds should be limited to matters referred to in section 65(5) of the Ordinance. ( c) Signature. (a) Here insert full name of opponent. (b) Here insert full name/s and address/es.','00000110.TIF'
'(c) Signature. (a) Here insert full name/s and address/es. (b) Signature. (c) Address.','00000111.TIF'
'(a) Here state name and address of the proprietor(s) as registered. (b) If the same regulations apply to more than one registration, the numbers of all the registrations should be stated. (c) Here state the specifications of the respective registrations. (d) 3 copies should be furnished. (e) Signature. *Additional numbers and specifications may be given in a signed schedule on the back of the Form. (a) Here insert full name/s and address/es.','00000112.TIF'
'(b) Strike out whichever paragraph is inapplicable. (c) Strike out whichever line is inapplicable. (d) Signature. (a) Here insert full name/s and address/es. *If the fee is left by the proprietor himself, this passage should be struck out. (b) If the fee is not left by the proprietor himself, insert his name and address here. (c) Signature of the person leaving the fee. (d) Address of the person signing.','00000113.TIF'
'(a) Signature. (b) Address. (a) Signature. (b) Address.','00000114.TIF'
'(a) Here insert full name and address. (b) Strike out the word/words that is/are not applicable. (c) Signature. (a) Here insert full name and address.','00000115.TIF'
'(b) Signature. *Additional numbers may be given in a signed schedule on the back of the Form. (a) Strike out one of those words. (b) Strike out whichever is inapplicable. ( c) Signature. (a) Here insert the name of the public authority ordering the change and the date thereof. (b) Signature of the registered proprietor or user as the case may be.','00000116.TIF'
'(a) Here insert words and reference number identifying the entry or application. (b) Signature. (a) Here insert present name, address and description of registered proprietor or registered user. (b) Strike out words which are inapplicable. *Additional numbers may be given in a signed schedule on the back of the Form.','00000117.TIF'
'(c) Here state the circumstances under which the change of name took place. (d) Signature. (a) Here insert the trade or business address and description of the applicant/s or his/their firm. (b) Signature.','00000118.TIF'
'(a) Here insert the trade or business address and description of the applicant/s or his/their firm. (b) Here designate the goods to be struck out. (c) Signature. (a) Here insert the name, trade or business address and description of the registered proprietor.','00000119.TIF'
'(b) Signature. (a) Here insert the full name and trade or business address of the person making the request. (b) Strike out from the words in italics those that are not applicable and strike out one of the words ''proprietor'' or ''user'' as the case may be. *Additional numbers may be given in a signed schedule on the back of the Form. (c) Cancel words which are inapplicable. (d) State here the precise entry or changed entry desired. (e) Signature. (a) Here insert the name of the public authority ordering the change, and the date thereof.','00000120.TIF'
'(b) Signature of the registered proprietor or user, as the case may be. (a) Here state the name/s and address/es of the registered proprietor. (b) Here state the nature of the proceedings, with the names of the parties to them, in which the certificate was given. (c) Signature.','00000121.TIF'
'(a) Here insert name, trade or business address and description. (b) Here fill in full particulars. (c) Signature. (a) Here state full name and address. (b) Signature.','00000122.TIF'
'(a) Here insert the name and trade or business address of the registered proprietor (applicant). (b) Cancel the words ''and the specification/s of the registered user/s thereunder'' if there are no registered users. (c) Signature.','00000123.TIF'
'(a) Here insert full name/s and address/es. (b) Signature. *Write distinctly here ''A'' or ''B'', according to the registration desired. (a) Here specify the goods. Only goods included in one and the same class should be specified. (b) Here insert legibly the full name, description and nationality of the individual, firm or body corporate making the application. The names of all partners in a firm must be given in full. If the applicant is a body corporate, the kind and country of incorporation should be stated. (c) Here insert the full trade or business address of the applicant. (d) Here insert the trading style (if any). (e) To be furnished in duplicate. (f) Signature. ','00000124.TIF'
'(a) Here insert full name/s, trade or business address/es and description of the registered proprietor/s. *Additional numbers may be given in a signed schedule on the back of the Form. (b) Here insert the specification in the register. (c) Here insert the full name, description and nationality of the individual, firm, or body corporate, proposed as registered user. The names of all partners in a firm must be given in full. In the case of a body corporate brief particulars of the kind and country of incorporation should be stated. (d) Here insert the full trade or business address of the proposed registered user. (e) Here insert trading style (if any). (f) Here insert designation of goods (which must be comprised within the specification). (g) Write ''NONE'' if there are no conditions or restrictions. (h) Strike out the words that are not applicable. (i) Signatures of registered proprietor and proposed registered user.','00000125.TIF'
'(a) Here insert the full name, description and trade or business address of the registered proprietor. *Additional numbers may be given in a signed schedule on the back of the Form. (b) Here insert the specification in the register. ( c) Here insert the full name, description and trade or business address of the registered user. (d) Here insert the goods in respect of which the user is registered. (e) Here state in terms the manner in which it is requested that the entry should be varied. (f) Signature. (a) Here insert the full name/s, description/s and trade or business address/es of the applicant or of the applicants.','00000126.TIF'
'(b) Strike out the words that are not applicable. *Additional numbers may be given in a signed schedule on the back of the Form. (c) Here insert the specification in the register. (d) Here insert the full name, description and trade or business address of the registered user whose entry is sought to be cancelled. (e) Here insert goods in respect of which that registered user is entered. (f) Signature/s. *Additional numbers may be given in a signed schedule on the back of the Form. (a) Here insert the name, trade or business address and description of the registered proprietor as entered in the register. (b) Here insert the name and address of the applicant for cancellation. (c) Here insert the name, trade or business address and description of the registered user as entered in the register. (d) Here insert the goods in respect of which the registered user is entered. (e) Here insert one or more of the subparagraphs or paragraph (c) of section 60(1) number (i), (ii), (iii). (f) Signature.','00000127.TIF'
'(a) Insert here the name of the registered proprietor. (b) Insert here the name and trade or business address of the registered user. (c) Signature. *The full names of all the partners in a firm must be inserted, and the kind and country of incorporation of bodies corporate stated. (a) Here insert name and address of agent. (b) Here state the particular matter or proceeding for which the agent is appointed, giving the reference number, if known. ','00000128.TIF'
'(c) Here state nationality. (d) To be signed by the person appointing the agent. (e) Here insert the full trade or business address of the person appointing the agent. *
'(a) Here strike out words that are not applicable. (b) Specify document to be inspected. (See rule 108). *To be signed by the person interested or his agent.','00000130.TIF'
,'00000131.TIF'
,'00000132.TIF'
,'00000133.TIF'
,'00000134.TIF'





institute proceedings for infringement in his own name as if he were
the proprietor, making the proprietor a defendant.

(2) A proprietor so added as defendant shall not be liable for
any costs unless he enters an appearance and takes part in the
proceedings.

60. (1) Without prejudice to the provisions of section 48, the
registration of a person as a registered user-

(a)may be varied by the Registrar as regards the goods in
respect of which, or any conditions or restrictions subject
to which, it has effect, on the application in writing in the
prescribed manner of the registered proprietor of the trade
mark to which the registration relates;

(b)may be cancelled by the Registrar on the application in
writing in the prescribed manner of the registered pro-
prietor or of the registered user or of any other registered
user of the trade mark; or

(c)may be cancelled by the Registrar on the application in
writing in the prescribed manner of any person on any of
the following grounds, that is to say-
(i) that the registered user has used the trade mark
otherwise than by way of the permitted use, or in such a
way-as to cause, or to be likely to cause, deception or
confusion;
(ii) that the proprietor or the registered user misrepre-
sented, or failed to disclose, some fact material to the
application for the registration, or that the circumstances
have materially changed since the date of the registration;
or
(iii) that the registration ought not to have been effected
having regard to rights vested in the applicant by virtue of
a contract in the performance of which he is interested.

(2) The Registrar may at any time cancel the registration of a
person as a registered user of a trade mark in respect of any goods in
respect of which the trade mark is no longer registered.

61. Provision shall be made by the rules for the notification
of the registration of a person as a registered user to any other
registered user of the trade mark, and for the notification of an
application under section 60 to the registered proprietor and each
registered user (not being the applicant) of the trade mark, and for
giving to the applicant on such an application, and to all persons
to whom such an application is notified and who intervene in the
proceedings in accordance with the rules, an opportunity of being
heard.

62. Any decision of the Registrar under sections 58 and 60
shall be subject to appeal to the Court.





63. Nothing in sections 58, 59 and 60 shall confer on a
registered user of a trade mark any assignable or transmissible right
to the use thereof.

CERTIFICATION TRADE MARKS

64. (1) A mark adapted in relation to any goods to dis-
tinguish in the course of trade goods certified by any person
in respect of origin, material, mode of manufacture, quality,
accuracy or other characteristic, from goods not so certified shall
be registrable as a certification trade mark in Part A of the register
in respect of those goods in the name, as proprietor thereof, of that
person:

Provided that a mark shall not be so registrable in the name of a
person who carries on a trade in goods of the kind certified.

(2) In determining whether a mark is adapted to distinguish as
aforesaid, the tribunal may have regard to the extent to which-

(a)the mark is inherently adapted to distinguish as aforesaid
in relation to the goods in question; and

(b)by reason of the use of the mark or of any other circum-
stances, the mark is in fact adapted to distinguish as
aforesaid in relation to the goods in question.

65. (1) An application for the registration of a mark under
section 64 shall be made to the Registrar in writing in the prescribed
manner by the person proposed to be registered as the proprietor
thereof.

(2) The provisions of section 13(2) and of section 13(4) to (7)
shall have effect in relation to an application under this section as
they have effect in relation to an application under section 13(1).

(3) In dealing under the said provisions with an application
under this section the tribunal shall have regard to the like considera-
tions, so far as relevant, as if the application were an application
under section 13 and to any other considerations relevant to
applications under this section, including the desirability of securing
that a certification trade mark shall comprise some indication that it
is such a trade mark.

(4) An applicant for the registration of a mark under this
section shall transmit to the Registrar draft regulations for govern-
ing the use thereof, which shall include provisions as to the cases in
which the proprietor is to certify goods and to authorize the use of
the trade mark, and may contain any other provisions that Registrar
may require or permit to be inserted therein (including provisions
conferring a right of appeal to the Registrar against any refusal of
the proprietor to certify goods or to authorize the use of the
trade mark in accordance with the regulations). The regulations, if
approved, shall be deposited with the Registrar and shall be open
to inspection in like manner as the register.





(5) The Registrar shall consider the application with regard to
the following matters-

(a)whether the applicant is competent to certify the goods in
respect of which the mark is to be registered;

(b) whether the draft regulations are satisfactory; and

(c)whether in all the circumstances the registration applied
for would be to the public advantage;

and may either-

(i) refuse to accept the application; or

(ii) accept the application, and approve the regulations, either
without modification and unconditionally or subject to
any conditions or limitations, or to any amendments or
modifications of the application or of the regulations,
which he may think requisite having regard to any of the
matters aforesaid;

but, except in the case of acceptance and approval without modifica-
tion and unconditionally, the Registrar shall not decide the matter
without giving to the applicant an opportunity of being heard:

Provided that the Registrar may, at the request of the applicant,
consider the application with regard to any of the matters aforesaid
before the application has been accepted, so however that the
Registrar shall be at liberty to reconsider any matter on which he has
given a decision under this proviso if any amendment or modifica-
tion is thereafter made in the application or in the draft regulations.

(6) Any decision of the Registrar under this section shall be
subject to appeal to the Court.

66. (1) When an application for the registration of a certifica-
tion trade mark has been accepted, whether absolutely or subject
to conditions and limitations, the Registrar shall require the
applicant to advertise it, as accepted, in the prescribed manner, and
the provisions of section 15 shall have effect in relation to the
registration of the mark as if the application had been an application
under section 13:

Provided that, in deciding under the said provisions, the
Registrar shall have regard only to the considerations referred to in
section 65(3), and a decision under the said provisions in favour of
the applicant shall be conditional on the determination in his favour
by the Registrar under subsection (2) of any opposition relating to
any of the matters referred to in section 65(5).

(2) When notice of opposition is given relating to any of the
matters referred to in section 65(5), the Registrar shall, after hearing
the parties, if so required, and considering any evidence, decide
whether, and subject to what conditions and limitations, or amend-
ments or modifications of the application or of the regulations, if
any, registration is, having regard to those matters, to be permitted.





67. (1) Subject to the provisions of subsections (2) to (4)
hereof, and of sections 33 and 34, the registration of a person as
proprietor of a certification trade mark in respect of any goods,
shall, if valid, give to that person the exclusive right to the use of the
trade mark in relation to those goods, and, without prejudice to the
generality of the foregoing words, that right shall be deemed to be
infringed by any person who, not being the proprietor of the trade
mark or a person authorized by him under the regulations in that
behalf using it in accordance therewith, uses a mark identical with
it or so nearly resembling it as to be likely to deceive or cause
confusion, in the course of trade, in relation to any goods in respect
of which it is registered, and in such manner as to render the use of
the mark likely to be taken either-

(a) as being use as a trade mark; or

(b)in a case in which the use is use upon the goods or in
physical relation thereto or in an advertising circular or
other advertisement issued to the public, as importing a
reference to some person having the right either as pro-
prietor or by his authorization under the relevant regula-
tions to use the trade mark or to goods certified by the
proprietor.

(2) The right to the use of a certification trade mark given by
registration as aforesaid shall be subject to any conditions or
limitations entered on the register, and shall not be deemed to be
infringed by the use of any such mark as aforesaid in any mode, in
relation to goods to be sold or otherwise traded in in any place, in
relation to goods to be exported to any market, or in any other
circumstances, to which, having regard to any such limitations, the
registration does not extend.

(3) The right to the use of a certification trade mark given by
registration as aforesaid shall not be deemed to be infringed by the
use of any such mark as aforesaid by any person-

(a)in relation to goods certified by the proprietor of the trade
mark if, as to those goods or a bulk of which they form
part, the proprietor or another in accordance with his
authorization under the relevant regulations has applied
the trade mark and has not subsequently removed or
obliterated it, or the proprietor has at any time expressly or
impliedly consented to the use of the trade mark; or

(b)in relation to goods adapted to form part of, or to be
accessory to, other goods in relation to which the trade
mark has been used without infringement of the right given
as aforesaid or might for the time being be so used, if the
use of the mark is reasonably necessary in order to indicate
that the goods are so adapted and neither the purpose nor
the effect of the use of the mark is to indicate otherwise
than in accordance with the fact that the goods are certified
by the proprietor:





Provided that paragraph (a) hereof shall not have effect in the
case of use consisting of the application of any such mark as
aforesaid to any goods, notwithstanding that they are such goods as
are mentioned in that paragraph, if such application is contrary to
the relevant regulations.
(4) Where a certification trade mark is one of 2 or more
registered trade marks which are identical or nearly resemble each
other, the use of any of those trade marks in exercise of the right to
the use of that trade mark given by registration shall not be deemed
to be an infringement of the right so given to the use of any other of
those trade marks.

68.(1) (a) The regulations deposited in respect of a certifica-
tion trade mark may, on the application of the registered
proprietor, be altered by the Registrar.
(b)The Registrar may, before granting an application, cause it
to be advertised in any case where it appears to him that it
is expedient so to do, and, where the Registrar causes an
application to be advertised, if within the prescribed time
from the date of the advertisement any person gives notice
to the Registrar of opposition to the application, the
Registrar shall not decide the matter without giving the
parties an opportunity of being heard.
(2)(a) On application by any person aggrieved to the Court,
or at the option of the applicant and in the prescribed
manner and subject to the provisions of section 80, to the
Registrar, or on application by the Registrar to the Court,
the tribunal may make such order as the tribunal thinks
fit for expunging or varying any entry in the register
relating to a certification trade mark, or for varying the
deposited regulations, on the ground-
(i) that the proprietor is no longer competent, in the
case of any of the goods in respect of which the trade mark
is registered, to certify those goods;
(ii) that the proprietor has failed to observe a provision
of the deposited regulations to be observed on his part;
(iii) that it is no longer to the public advantage that the
trade mark should be registered; or
(iv) that it is requisite for the public advantage that, if
the trade mark remains registered, the regulations should
be varied.
(b)The Registrar shall rectify the register or the deposited
regulations in such manner as may be requisite for giving
effect to an order made under paragraph (a) hereof.

69. (1) A certification trade mark shall not be assignable or
transmissible otherwise than with the consent of the Registrar, who
before giving his decision shall consider-
(a)whether the person to whom it is proposed to assign or
transmit the mark is competent to certify the goods in
respect of which the mark is registered; and





(b)whether in all the circumstances the proposed assignment or
transmission would be to the public advantage.

(2) A certification trade mark shall not be assignable or
transmissible to a person who carries on a trade in goods of the kind
certified.

(3) Any decision of the Registrar under this section shall be
subject to appeal to the Court.

70. Notwithstanding anything in section 82, the Registrar shall not
have any jurisdiction to award costs to or against any party on an
appeal to him against a refusal of the proprietor of a certification trade
mark to certify goods or to authorize the use of the trade mark.

71. The following provisions of this Ordinance shall not have effect
in relation to a certification trade mark, that is to say, section 9, sections
13 to 15 (except as expressly applied by sections 65 and 66), sections 19,
27, 32, 37, 40, 41(4) to (7) and 55 to 63, and any provisions the operation
of which is limited by the terms thereof to registration in Part B of the
register.

72. Sections 64 to 71 shall have effect, in relation to a trade mark
that immediately before the commencement of this Ordinance was on the
register by virtue of section 59 of the Trade Marks Ordinance 1909, as if
the sections had been in force at the date of the registration of the trade
mark and it had been registered under those sections, subject however
to the following modifications, that is to say

(a) that the proviso to section 64(1) shall not apply;

(b)that sections 64 to 71 shall have effect as if references therein
to the regulations governing the use of certification trade
marks had been omitted; and

(c)that the proprietor shall be at liberty, or may be required by
the.Registrar as a condition of the continuance of the
registration, to deposit at any time after the commencement of
this Ordinance such regulations as the Registrar may permit or
require.

POWERS AND DUTIES OF REGISTRAR

73. (1) The power to give to a person who proposes to apply for
the registration of a trade mark in Part A or Part B of the register advice
as to whether the trade mark appears to the Registrar prima facie to be
inherently adapted to distinguish, or capable of distinguishing, as the
case may be, shall be a function of the Registrar under this Ordinance.

(2) Any person who is desirous of obtaining advice as aforesaid
shall make application to the Registrar in the prescribed manner.





(3) If on an application for the registration of a trade mark as
to which the Registrar has given advice as aforesaid in the affirma-
tive, made within 3 months after the advice is given, the Registrar,
after further investigation or consideration, gives notice to the
applicant of objection on the ground that the trade mark is not
adapted to distinguish, or capable of distinguishing, as the case may
be, the applicant shall be entitled, on giving notice of withdrawal of
the application within the prescribed period, to have repaid to him
any fee paid for the filing of the application.

74. Where any discretionary or other power is given to the
Registrar by this Ordinance or by the rules, 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 to the applicant or registered
proprietor an opportunity of being heard.

LEGAL PROCEEDINGS AND APPEALS

75. 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 the trade mark, the Court may
certify to that effect, and if it so certifies then in any subsequent legal
proceeding in which the validity of the registration comes into
question the proprietor of the 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 the subsequent
proceeding the Court certifies that he ought not to have them.

76. In any action or proceeding relating to a trade mark or
trade name the tribunal shall admit evidence of the usages of the
trade concerned and of any relevant trade mark or trade name or
get-up legitimately used by other persons.

77. (1) 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.

(2) 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 it or of the practice of
his office in like cases, or of such other matters relevant to the issues,
and within his knowledge as Registrar, as he thinks fit, and the
statement shall be deemed to form part of the evidence in the
proceeding.

78. Except when expressly given by the provisions of this
Ordinance or the rules there shall be no appeal from a decision of
the Registrar, but the Court in dealing with any question of the
rectification of the register (including all applications under the





provisions of section 48) shall have power to review any decision of the
Registrar relating to the entry in question or the correction sought to be
made.

79. (1) Every order of the Court shall be subject to appeal to the
Court of Appeal. The appeal shall be commenced within 21 days from
the time when the decision appealed against is pronounced or made.
(Amended, 92 of 1975, s. 59)

(2) In any appeal from a decision of the Registrar to the Court
under this Ordinance, the Court shall have and exercise the same
discretionary powers as under this Ordinance are conferred upon the
Registrar.

80. Where under any of the provisions of this Ordinance an
applicant has an option to make an application either to the Court or to
the Registrar

(a) if an action concerning the trade mark in question is
pending, the application must be made to the Court;

(b)if in any other case the application is made to the Registrar, he
may, at any stage of the proceedings, refer the application to
the Court, or he may, after hearing the parties, determine the
question between them, subject to appeal to the Court.

COSTS

81. In all proceedings before the Court under this Ordinance the
Court may award to any party such costs as it may consider reasonable
and 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.

82. Save as otherwise provided in this Ordinance, in all proceedings
before the Registrar, he shall have power to award to any party such
costs as he may consider reasonable, and to direct how and by what
parties they are to be paid, and any such order may, by leave of the
Court or a judge thereof, be enforced in the same manner as a judgment
or order of the Court to the same effect.

EVIDENCE

83. (1) In any proceeding under this Ordinance before the Registrar,
the evidence shall be given by statutory declaration in the absence of
directions to the contrary, but, in any case in which he shall think it
right to do so, he may take evidence viva 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.





(2) In case any part of the evidence is taken viva voce, the
Registrar 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 appointed by the Court.

84. A printed or written copy of any entry in the register,
purporting to be certified by the Registrar and sealed with his seal,
or of any entry in the United Kingdom Register, purporting to be
certified by the Comptroller-General of the United Kingdom Patent
Office and scaled with the seal of the Patent Office, shall be admitted
in evidence in all Courts, and in all proceedings, without further
proof or production of the original.

85. A certificate purporting to be under the hand of the
Registrar, or of the Comptroller-General of the United Kingdom
Patent Office, as to any entry, matter or thing which he is authorized
to make or do, shall be prima facie evidence of the entry having been
made, and of the contents thereof, and of the matter or thing having
been done or not done.

OFFENCES, AND RESTRAINT OF USE OF ROYAL ARMS

86. If any person makes or causes to be made a false entry in
the register, or a writing falsely purporting to be a copy of an entry
in the register, or produces or tenders or causes to be produced or
tendered in evidence any such writing, knowing the entry or writing
to be false, he shall be guilty of a misdemeanor.

87. (1) Any person who makes a representation-

(a)with respect to a mark not being a registered trade mark, to
the effect that it is a registered trade mark; or

(b)with respect to a part of a registered trade mark not being a
part separately registered as a trade mark, to the effect that
it is so registered; or

(c)to the effect that a registered trade mark is registered in
respect of any goods in respect of which it is not registered;
or

(d)to the effect that the registration of a trade mark gives an
exclusive right to the use thereof in any circumstances in
which, having regard to limitations entered on the register,
the registration does not give that right,

shall be liable to a fine of $500.

(2) For the purposes of this section, the use in the Colony in
relation to a trade mark of the word 'registered', or of any word
referring whether expressly or impliedly to registration, shall be
deemed to import a reference to registration in the register, except-

(a)where that word is used in physical association with other
words delineated in characters at least as large as those in





which that word is delineated and indicating that the
reference is to registration as a trade mark under the law
of a country outside the Colony, being a country under the
law of which the registration referred to is in fact in force;

(b)where that word (being a word other than the word
'registered') is of itself such as to indicate that the
reference is to such registration as last aforesaid; or

(e)where that word is used in relation to a mark registered
as a trade mark under the law of a country outside the
Colony and in relation to goods to be exported to that
country.

88. If any person, without the authority of Her Majesty, uses,
in connexion with any trade, business, calling or profession, 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 if
any person, without the authority of Her Majesty or of a member of
the Royal Family, uses, in connexion with any trade, business,
calling or profession, 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, Her Majesty or such member of the Royal
Family, he 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.

AGENTS

89. Where 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, the act may, under and in
accordance with the rules, or in particular cases by special leave of
the Registrar, be done by or to an agent of that person duly
authorized in the prescribed manner.

RULES

90. The Governor in Council may by rules prescribe or pro-
vide for-

(a)regulating the practice under this Ordinance, including the
service of documents;

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





(c)making or requiring duplicates of trade marks and other
documents;

(d)securing and regulating the publishing and selling or
distributing, in such manner as the Governor in Council may
think fit, of copies of trade marks and other documents;

(e)forms which shall be used for carrying out the provisions of
this Ordinance;

(f)fees which shall be paid in respect of applications and
registrations and other matters under this Ordinance;

(g)regulating the business of the registry in relation to trade
marks and all things by this Ordinance placed under the
direction or control of the Registrar;

(h)generally, carrying into effect the provisions of this
Ordinance.

TRANSITIONAL PROVISIONS

91. (1) Nothing in this Ordinance shall be taken to invalidate the
original registration of a trade mark that immediately before the
commencement of this Ordinance was validly on the register.

(2) No trade mark which was on 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.

is

(3) Nothing e& this section shall be construed as having subjected
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.

SCHEDULE [s. 13A.]

LIST OF COUNTRIES (EXCLUDING THE UNITED
KINGDOM)

ADHERING TO THE PARIS CONVENTION FOR THE
PROTECTION OF

INDUSTRIAL PROPERTY 1883, AS REVISED FROM TIME
TO TIME

Algeria Central African Republic
Argentine Chad
Australia (including Papua, New Congo (People's Republic)
Guinea, Norfolk Island, Nauru) Caba
Austria Cyprus
Bahamas Czechoslovakia
Belgium Dahomey
Brazil Denmark (including the Farce Islands)
Bularia Dominican Republic
Cameroon Egypt
Canada Finland






France(including the Departments of New Zealand
Guadeloupe, Guiana, Martinique and Niger
Reunion and Overseas Territories) Nigeria
Gabon Norway
Germany (Democratic Republic) Philippines
Germany (Federal Republic) Poland
Greece Portugal (including the Azores and
Haiti Madeira)
Holy See Romania
Hungary San Marino
Iceland Senegal
Indonesia South Africa
Iran Spain
Iraq Sri Lanka
Irish Republic Sweden
Israel Switzerland
Italy Syrian Arab Republic
Ivory Coast Tanzania (Tanganyika only)
Japan Togo
Jordan Trinidad and Tobago
Kenya Tunisia
Lebanon Turkey
Liechtenstein Uganda
Luxembourg Union of Soviet Socialist Republics
Madagascar United States of America (including
Malawi Puerto Rico, Virgin Islands (US),
Malta Eastern Samoa, Guam)
Mauritania Upper Volta
Mexico Uruguay
Monaco Viet-Nam
Morocco Yugoslavia
Netherlands (including Curacao, Zaire
Surinam) Zambia
(Added, 55 of 1977, s. 4)
Originally 47 of 1954. 92 of 1975. 55 of 1977. 3 of 1985. G.N.A. 143/54. Short title. 1938 c. 22, s. 71. Interpretation. 1938 c. 22, s. 68. (Cap. 100.) Register of trade marks. 1938 c. 22, s. 1(1) and (4). Division of register into 2 parts. 1938 c. 22, s. 1(2). [cf. 1919 c. 79, s. 1.] Trust not to be entered in register. 1938 c. 22, s. 64(1). Inspection of register. 1938 c. 22, s. 1(3). Extracts from register. [cf. 1905 c. 15, s. 7.] Trade mark must be for particular goods. 1938 c. 22, s. 3. Trade marks registrable in Part A. 1938 c. 22, s. 9. Trade marks registrable in Part B. 1938 c. 22, s. 10. Coloured trade marks. 1938 c. 22, s. 16. Restriction on registration. 1938 c. 22, s. 11. 1938 c. 22, s. 15(3). Application for registration. 1938 c. 22, s. 17. Priority for application made in Convention country. [cf. 1907 c. 29, s. 91.] Schedule. Advertisement of application. 1938 c. 22, s. 18(1). Opposition to registration. 1938 c. 22, s. 18(2) to (11). Disclaimers. 1938 c. 22, s. 14. Registration, and failure to complete. 1938 c. 22, s. 19(1). [cf. 1938 Geo. 6 c. 22, s. 19(1).] 1938 c. 22, s. 20(1). 1938 c. 22, s. 19(2). 1938 c. 22, s. 19(3). Application for registration of mark not to be used by applicant but to be assigned to corporation to be constituted or to be used by registered user. 1938 c. 22, s. 29. Jointly owned trade marks. 1938 c. 22, s. 63. Prohibition of registration of trade mark identical with or resembling a registered trade mark. 1938 c. 22, s. 12(1). Applications for registration of identical or resembling trade marks. 1938 c. 22, s. 12(3). Concurrent use. 1938 c. 22, s. 12(2). Protection of marks registered in country of origin. Associated trade marks. 1938 c. 22, s. 23(2). 1938 c. 22, s. 23(5). Combined trade marks. 1938 c. 22, s. 21(1). 1938 c. 22, s. 23(3). Series of trade marks. 1938 c. 22, s. 21(2). 1938 c. 22, s. 23(4). Right given by registration in Part A, and infringement thereof. 1938 c. 22, s. 4. Right given by registration in Part B, and infringement thereof. 1938 c. 22, s. 5. Registration to be prima facie evidence of validity. 1938 c. 22, s. 46. Registration in Part A to be conclusive as to validity after 7 years. 1938 c. 22, s. 13. Equities in respect of trade marks. 1938 c. 22, s. 64(2). Infringement by breach of certain restrictions. 1938 c. 22, s. 6. Saving for vested rights. 1938 c. 22, s. 7. Saving for use of name, address or description of goods. 1938 c. 22, s. 8. No action for infringement of unregistered trade mark. 1938 c. 22, s. 2. 'Passing off' action. 1938 c. 22, s. 2. Removal from register and imposition of limitations on ground of non-use. 1938 c. 22, s. 26. Use of one of associated trade marks equivalent to use of another. 1938 c. 22, s. 30. Use of trade mark for export trade constitutes use of the trade mark. 1938 c. 22, s. 31. 1938 c. 22, THIRD SCHEDULE, Para. 6. Use of trade mark after change in form of trade connexion. 1938 c. 22, s. 62. Powers of, and restrictions on, assignment and transmission of trade marks. 1938 c. 22, s. 22. Power of registered proprietor to assign, and give receipts. 1938 c. 22, s. 24. Registration of assignments and transmissions. 1938 c. 22, s. 25. Assignments and transmissions of associated trade marks. 1938 c. 22, s. 23(1). Renewal of registration. 1938 c. 22, s. 20(2). Procedure on expiry of period of registration. 1938 c. 22, s. 20(3). Status of unrenewed trade mark. 1938 c. 22, s. 20(4). General power to rectify entries in register. 1938 c. 22, s. 32. Power to expunge or vary registration for breach of condition. 1938 c. 22, s. 33. Correction of register. 1938 c. 22, s. 34. Alteration of registered trade mark. 1938 c. 22, s. 35. Words used as name or description of an article or substance. 1938 c. 22, s. 15(1) and (2). Removal of trade mark from register on proof of prior registration in country of origin. Adaptation of entries in register to amended or substituted classification of goods. 1938 c. 22, s. 36. Defensive registration of trade marks. 1938 c. 22, s. 27(1) and (2). 1938 c. 22, s. 27(6). Defensive trade marks to be registered as associated trade marks. 1938 c. 22, s. 27(3). Removal of defensive trade marks from the register. 1938 c. 22, s. 27(4) and (5). Registration as a registered user. Meaning of 'permitted use'. 1938 c. 22, s. 28(1) and (2). 1938 c. 22, s. 28(4) to (7). Proceedings for infringement. 1938 c. 22, s. 28(3). Variation or cancellation of registration as a registered user. 1938 c. 22, s. 28(8) and (10). Notification of registration as registered user and of application for variation or cancellation of such registration. 1938 c. 22, s. 28(9). Register's decision subject to appeal to Court. 1938 c. 22, s. 28(11). Right to use not assignable or transmissible. 1938 c. 22, s. 28(12). Marks registrable as certification trade marks. 1938 c. 22, s. 37(1) and (2). Application for registration as certification trade mark. 1938 c. 22, FIRST SCHEDULE, Para. 1. 1938 c. 22, s. 37(7). 1938 c. 22, FIRST SCHEDULE, Para. 1. Advertisement of application. Opposition to registration. 1938 c. 22, FIRST SCHEDULE, Para. 2. Right given by registration, and infringement thereof. 1938 c. 22, s. 37(3) to (6). Alteration of deposited regulations, or expunging or varying of entry in register relating to certification trade mark. 1938 c. 22, FIRST SCHEDULE, Paras. 3 and 4. Certification trade mark assignable or transmissible only with Registrar's consent. 1938 c. 22, s. 37(8). Registrar not empowered to award costs on appeals to him. 1938 c. 22, FIRST SCHEDULE, Para. 5. Provisions not applicable to certification trade marks. 1938 c. 22, FIRST SCHEDULE, Para. 6. Trade mark registered under section 59 of Trade Marks Ordinance 1909, to be deemed registered as a certification trade mark under this Ordinance. 1938 c. 22, THIRD SCHEDULE, Para. 7. (40 of 1909, See Cap. 43, 1950 Ed.) Preliminary advice by Registrar as to distinctiveness. 1938 c. 22, s. 42. Hearing before exercise of discretionary power of Registrar. 1938 c. 22, s. 43. Certificate of validity. 1938 c. 22, s. 47. Trade usage, etc., to be considered. 1938 c. 22, s. 49. Registrar's appearance in proceedings involving rectification. 1938 c. 22, s. 50. Appeal from Registrar. 1938 c. 22, s. 51. Appeal to Court of Appeal. Discretion of Court in appeals. 1938 c. 22, s. 52. Procedure in case of option to apply to Court or Registrar. 1938 c. 22, s. 54. Costs of proceedings before the Court. 1938 c. 22, s. 48. Costs of proceedings before the Registrar. 1938 c. 22, s. 44. Mode of giving evidence. 1938 c. 22, s. 55. Evidence of entries in Hong Kong or United Kingdom Register. 1938 c. 22, s. 57. Evidence of entries made or of things done by Registrar, or Comptroller-General of U.K. Patent Office. 1938 c. 22, s. 58. Falsification of entries in register. 1938 c. 22, s. 59. Falsely representing a trade mark as registered, etc. 1938 c. 22, s. 60. Restraint of use of Royal Arms. 1938 c. 22, s. 61. Recognition of agents. 1938 c. 22, s. 65. Power of Governor in Council to make rules. 1938 c. 22, s. 40. Validity of registrations under previous enactments. 1938 c. 22, s. 69.

Originally 47 of 1954. 92 of 1975. 55 of 1977. 3 of 1985. G.N.A. 143/54. Short title. 1938 c. 22, s. 71. Interpretation. 1938 c. 22, s. 68. (Cap. 100.) Register of trade marks. 1938 c. 22, s. 1(1) and (4). Division of register into 2 parts. 1938 c. 22, s. 1(2). [cf. 1919 c. 79, s. 1.] Trust not to be entered in register. 1938 c. 22, s. 64(1). Inspection of register. 1938 c. 22, s. 1(3). Extracts from register. [cf. 1905 c. 15, s. 7.] Trade mark must be for particular goods. 1938 c. 22, s. 3. Trade marks registrable in Part A. 1938 c. 22, s. 9. Trade marks registrable in Part B. 1938 c. 22, s. 10. Coloured trade marks. 1938 c. 22, s. 16. Restriction on registration. 1938 c. 22, s. 11. 1938 c. 22, s. 15(3). Application for registration. 1938 c. 22, s. 17. Priority for application made in Convention country. [cf. 1907 c. 29, s. 91.] Schedule. Advertisement of application. 1938 c. 22, s. 18(1). Opposition to registration. 1938 c. 22, s. 18(2) to (11). Disclaimers. 1938 c. 22, s. 14. Registration, and failure to complete. 1938 c. 22, s. 19(1). [cf. 1938 Geo. 6 c. 22, s. 19(1).] 1938 c. 22, s. 20(1). 1938 c. 22, s. 19(2). 1938 c. 22, s. 19(3). Application for registration of mark not to be used by applicant but to be assigned to corporation to be constituted or to be used by registered user. 1938 c. 22, s. 29. Jointly owned trade marks. 1938 c. 22, s. 63. Prohibition of registration of trade mark identical with or resembling a registered trade mark. 1938 c. 22, s. 12(1). Applications for registration of identical or resembling trade marks. 1938 c. 22, s. 12(3). Concurrent use. 1938 c. 22, s. 12(2). Protection of marks registered in country of origin. Associated trade marks. 1938 c. 22, s. 23(2). 1938 c. 22, s. 23(5). Combined trade marks. 1938 c. 22, s. 21(1). 1938 c. 22, s. 23(3). Series of trade marks. 1938 c. 22, s. 21(2). 1938 c. 22, s. 23(4). Right given by registration in Part A, and infringement thereof. 1938 c. 22, s. 4. Right given by registration in Part B, and infringement thereof. 1938 c. 22, s. 5. Registration to be prima facie evidence of validity. 1938 c. 22, s. 46. Registration in Part A to be conclusive as to validity after 7 years. 1938 c. 22, s. 13. Equities in respect of trade marks. 1938 c. 22, s. 64(2). Infringement by breach of certain restrictions. 1938 c. 22, s. 6. Saving for vested rights. 1938 c. 22, s. 7. Saving for use of name, address or description of goods. 1938 c. 22, s. 8. No action for infringement of unregistered trade mark. 1938 c. 22, s. 2. 'Passing off' action. 1938 c. 22, s. 2. Removal from register and imposition of limitations on ground of non-use. 1938 c. 22, s. 26. Use of one of associated trade marks equivalent to use of another. 1938 c. 22, s. 30. Use of trade mark for export trade constitutes use of the trade mark. 1938 c. 22, s. 31. 1938 c. 22, THIRD SCHEDULE, Para. 6. Use of trade mark after change in form of trade connexion. 1938 c. 22, s. 62. Powers of, and restrictions on, assignment and transmission of trade marks. 1938 c. 22, s. 22. Power of registered proprietor to assign, and give receipts. 1938 c. 22, s. 24. Registration of assignments and transmissions. 1938 c. 22, s. 25. Assignments and transmissions of associated trade marks. 1938 c. 22, s. 23(1). Renewal of registration. 1938 c. 22, s. 20(2). Procedure on expiry of period of registration. 1938 c. 22, s. 20(3). Status of unrenewed trade mark. 1938 c. 22, s. 20(4). General power to rectify entries in register. 1938 c. 22, s. 32. Power to expunge or vary registration for breach of condition. 1938 c. 22, s. 33. Correction of register. 1938 c. 22, s. 34. Alteration of registered trade mark. 1938 c. 22, s. 35. Words used as name or description of an article or substance. 1938 c. 22, s. 15(1) and (2). Removal of trade mark from register on proof of prior registration in country of origin. Adaptation of entries in register to amended or substituted classification of goods. 1938 c. 22, s. 36. Defensive registration of trade marks. 1938 c. 22, s. 27(1) and (2). 1938 c. 22, s. 27(6). Defensive trade marks to be registered as associated trade marks. 1938 c. 22, s. 27(3). Removal of defensive trade marks from the register. 1938 c. 22, s. 27(4) and (5). Registration as a registered user. Meaning of 'permitted use'. 1938 c. 22, s. 28(1) and (2). 1938 c. 22, s. 28(4) to (7). Proceedings for infringement. 1938 c. 22, s. 28(3). Variation or cancellation of registration as a registered user. 1938 c. 22, s. 28(8) and (10). Notification of registration as registered user and of application for variation or cancellation of such registration. 1938 c. 22, s. 28(9). Register's decision subject to appeal to Court. 1938 c. 22, s. 28(11). Right to use not assignable or transmissible. 1938 c. 22, s. 28(12). Marks registrable as certification trade marks. 1938 c. 22, s. 37(1) and (2). Application for registration as certification trade mark. 1938 c. 22, FIRST SCHEDULE, Para. 1. 1938 c. 22, s. 37(7). 1938 c. 22, FIRST SCHEDULE, Para. 1. Advertisement of application. Opposition to registration. 1938 c. 22, FIRST SCHEDULE, Para. 2. Right given by registration, and infringement thereof. 1938 c. 22, s. 37(3) to (6). Alteration of deposited regulations, or expunging or varying of entry in register relating to certification trade mark. 1938 c. 22, FIRST SCHEDULE, Paras. 3 and 4. Certification trade mark assignable or transmissible only with Registrar's consent. 1938 c. 22, s. 37(8). Registrar not empowered to award costs on appeals to him. 1938 c. 22, FIRST SCHEDULE, Para. 5. Provisions not applicable to certification trade marks. 1938 c. 22, FIRST SCHEDULE, Para. 6. Trade mark registered under section 59 of Trade Marks Ordinance 1909, to be deemed registered as a certification trade mark under this Ordinance. 1938 c. 22, THIRD SCHEDULE, Para. 7. (40 of 1909, See Cap. 43, 1950 Ed.) Preliminary advice by Registrar as to distinctiveness. 1938 c. 22, s. 42. Hearing before exercise of discretionary power of Registrar. 1938 c. 22, s. 43. Certificate of validity. 1938 c. 22, s. 47. Trade usage, etc., to be considered. 1938 c. 22, s. 49. Registrar's appearance in proceedings involving rectification. 1938 c. 22, s. 50. Appeal from Registrar. 1938 c. 22, s. 51. Appeal to Court of Appeal. Discretion of Court in appeals. 1938 c. 22, s. 52. Procedure in case of option to apply to Court or Registrar. 1938 c. 22, s. 54. Costs of proceedings before the Court. 1938 c. 22, s. 48. Costs of proceedings before the Registrar. 1938 c. 22, s. 44. Mode of giving evidence. 1938 c. 22, s. 55. Evidence of entries in Hong Kong or United Kingdom Register. 1938 c. 22, s. 57. Evidence of entries made or of things done by Registrar, or Comptroller-General of U.K. Patent Office. 1938 c. 22, s. 58. Falsification of entries in register. 1938 c. 22, s. 59. Falsely representing a trade mark as registered, etc. 1938 c. 22, s. 60. Restraint of use of Royal Arms. 1938 c. 22, s. 61. Recognition of agents. 1938 c. 22, s. 65. Power of Governor in Council to make rules. 1938 c. 22, s. 40. Validity of registrations under previous enactments. 1938 c. 22, s. 69.

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