SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES

SOLICITORS (TRADE MARKS AND PATENTS) COSTS RULES

SOLICITORS (TRADE MARKS AND PATENTS)
COSTS RULES

(Cap. 159, section 74)

[18 August 19671

L.N. 131 of 1967 L.N. 143 of 1975, 25 of 1979, L.N. 163 of 1980. L.N. 246 of 1984, R. Ed.
1984,

L.N. 344 of 1989

1. Citation

This rules may be cited as the Solicitors (Trade Marks and Patents) Costs

Rules.

(L.N. 143 of 1975)

2. Interpretation

(1) In these rules, unless the context otherwise requires

'non-contentious business' means any trade mark or patent business done

by and as a solicitor which is not contentious trade mark or patent business;

'Registrar' means the Registrar General appointed under the Registrar

General (Establishment) Ordinance(Cap. 100);
register' means

(a)in Part 1 of the Schedule, the register of trade marks kept under the
Trade Marks Ordinance (Cap. 43); and

(b)in Part 11 of the Schedule, the register of patents kept under the
Registration of Patents Ordinance (Cap. 42).

(2) In Part 1 of the Schedule, the references by numbers to sections and to rules
are references to sections and rules of the Trade Marks Ordinance

(Cap. 43) and the Trade Marks Rules (Cap. 43 sub. leg.), respectively.

(3) In Part 11 of the Schedule-

(a)the references by numbers to sections and to rules are references to
sections and rules of the Registration of Patents Ordinance (Cap. 42)
and the Registration of Patents Rules (Cap. 42 sub. leg.), respectively;
and

(b)'Schedule to (Fees) Rules' means the Schedule to the Registration of
Patents (Fees) Rules (Cap. 42 sub. leg.).

(L.N. 143 of 1975; 25 of 1979 s. 12)





3. Scale of costs in certain non-contentious matters

The scale of costs contained in the Schedule shall be the scale of costs for
solicitors in relation to the non-contentious business specified therein.
(L.N. 143 of 1975)

4. Costs in other non-contentious business

Subject to rule 3, a solicitor's costs in relation to non-contentious business
shall be such sum as may be fair and reasonable, having regard to all the
circumstances of the case and, in particular, to-
(a)the complexity of the matter or the difficulty or novelty of the
questions raised;
(b)the skill, labour, specialized knowledge and responsibility in-
volved on the part of the solicitor;
(c)the number and importance of the documents prepared or
perused without regard to length;
(d)the place where and circumstances in which the business or any
part thereof is transacted;
(e) the time expended by the solicitor;
(f) where money or property is involved, its amount or value; and
(g) the importance of the matter to the client.

5. Application

(1) Non-contentious trade mark and patent business for which
instructions were accepted before 27 July 1984 shall continue to be governed by
these rules as they stood before they were amended by the Solicitors (Trade
Marks and Patents) Costs (Amendment) Rules 1984 (L.N. 246 of 1984).
(2) Non-contentious trade mark and patent business for which
instructions were accepted on or after 27 July 1984 but before the date of
coming into operation of the Solicitors (Trade Marks and Patents) Costs
(Amendment) Rules 1989 (L.N. 344 of 1989) shall continue to be governed by
these rules as they stood before the date the Solicitors (Trade Marks and
Patents) Costs (Amendment) Rules 1989 (L.N. 344 of 1989) come into
operation.
(3) These rules as amended by the Solicitors (Trade Marks and Patents)
Costs (Amendment) Rules 1989 (L.N. 344 of 1989) ('the amending rules') shall
apply to all non-contentious trade mark and patent business for which
instructions are accepted on or after the date of coming into operation of the
amending rules.
(L.N. 344 of 1989)





SCHEDULE [rules 2 31

PART 1

SCALE OF COSTS IN NON-CONTENTIOUS TRADE MARK BUSINESS

Item Section and Rule Subject Matter Costs

1 Section 7, rules Application to Registrar for 400
103-105. a sealed, certified copy of any
entry in the register.
2. Sections 9, 10 and 13, Application for registration 51,500
rules 9 and 11. of trade mark in Part A or
Part B of the register.
3. Section 9. Preparation and filing of$2,000
each declaration of
distinctiveness.
4. Section 13A, rule Convention Priority. 5 500
9(1 A).
5. Sections 14 and 17, Obtaining Certificates of 5 800
rules 22 and 37. Registration, including
receiving notice to advertise,
attending to such
advertisement and applying
for certificate.

6. Sections 41 and 42, Assignment of a trade mark $2,000 and if assignment is in
rules 40-43. with goodwill.respect of more than one
mark, $150 for each
additional mark covered by
the same assignment.
7. Sections 41 and 42, Assignment of a trade mark $2,500 and if the assignment
rules 40-43 and 45. without goodwill. is in respect of more than one
mark, $300 for each
additional mark covered by
the same assignment.
8. Section 45, rule 57. Renewal of registration of a $1,200
trade mark.
9. Section 50, rule 63. (a) Request to Registrar to 600
correct any error in
name, address,
description, etc.
(b) Additional mark. 5 300
10. Section 5 1, rules Application to Registrar for $1,500 and if application is in
70-73. leave to amend a trade mark,respect of more than one
attending advertising andclass, $500 for each
correspondence withadditional class.
Registrar and Government
Printer concerning
advertisement.
11. Section 58, rule 79. Application for registration $2,500 and if the application
as a registered user, including is in respect of more than one

preparation of registered user mark, $300 for each
agreement. additional mark covered by
the same application.





Item Section and Rule Subject Matter Costs

12. Rule 9 1. Application to Registrar for 300
uncontested extension of
time.
13. Section 73, rule Official search. 500
108(1).
14. Rule 108(2). (a) Unofficial search to 500
determine whether a
particular trade mark is
registered.

(b) Unofficial search $1,200
determining the
registrability of a trade
mark and advising.
PART 11

SCALE OF COSTS IN NON-CONTENTIOUS PATENT Bust~

Item Section and Rule Subject Matter Costs

15. Section 3, rule 2. Application for registration $1,750
of a United Kingdom patent.
16. Schedule to (Fees) Application to Registrar for 500
Rules (items 4 and 5). a sealed, certified copy of any
entry in the register.

17. Section 10, rule 4. Assignment. $2,000 and if the assignment
is in respect of more than one
patent, $300 for each
additional patent covered by
the same assignment,
18. Schedule to (Fees) (a) Request to Registrar to 600
Rules (items 6, 7 make any changes in
and 8). name, address,
description, etc.
(b) For each additional 300
simultaneous request to
make the same change.
19. Schedule to (Fees) Search to determine whether 500
Rules (item 3). a particular patent is
registered.
(L.N. 344 of1989)

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