TRADE MARKS ORDINANCE, 1909

TRADE MARKS ORDINANCE, 1909

No. 40 of 1909.
To amend the relating to Trade Marks.

1. The Trade Marks Ordinance, 1909.

2. In this Ordinance-

Defnitions

[10tli December, 1909.]

A---mark ' includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, or any combiDation thereof :

A ---trade mark--- means a mark used or proposed to be used
upon or in conDection with goods for the purpose of indicating that

As amended by No. 6 of 1911, No. 51 of 1911 and No. 12 of 1912.
See post S. 63.
Supp. Selied.





they are the goods of the proprietor of such trade mark by virtue of
manufacture, selection certification. dealing with, or offering for
sale.
A registrable trade mark - means- a trade mark which is capable
of registration under this Ordinance :
- The Registrar - means such officer as the Governot. may by
order, appoint to be Registrar of Trade Marl;s :
- The seal of the ReOstrar - means the seal of the office in which
the Register of Trade Marks is kept
The Regisler - means the register of trade marks kept under
thP, Ordinance
A - reo-istered trade mark - meaus a. trade mark which is actually
upon the register
.1 The Court - means the Supreme Court, and includes a Judge
sitting in Curt or in Chainbers and in Onginal or -Juris-
diction :
- The, Tribunal
Registrar.

Seal
3. The Ecgistrat. shall use a seal haveing a device and impression

of the Royal Arms with a label surroonding the and the

inscription - Registrai. oI Trade Marks, HOngkong' and the use of
such seal from and after the 10th day of December, 1909, is hereby
validated and authorised.

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

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

* As aniended by No. 21 of 1911.
f As anxended by No. 12 ol 1912 and No. 13 of 1912.





6. The register of trade marks existing at the commenceinent or'
this Ordinance shall be incorporated with and Llorm part of the
register. Snbject to the provisions of sections 36 and 41, the
validity of the original eidry ol trade mark upon the register
co incorporated shall be determined in accordance with the Ordi-
rjance in force it the, date of such entry, and such trade mark shall
retain its original date, but for all other purposes it shall be deemed
to be a trade mark registered under this Ordinance.

7. The recyister shall during office flours be open to the inspection
of the. public, subject to such as may be prescribed ; and
certified copies, sealed with the seal of the Registrar, of any entry
therein, shall be givcn to any person requirign the same on payment
of the prescribed fee.

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

9. A registraMe trade mark must contain or consist of at least one
of the. following essential :-
(1) te name of a company, individual, or firm represented in a
special or particular manner
(.2 ) the signature (in otlier than Chinese characters) of the
applicant for registration or of some predecessor in his business;
(3) an invented word or invented words:
(4) a word or words having no direet reference to the, cliaracler
or quallity of the goods, and not being according to its. ordinary
signification a geographical name or a, surname
(.5) any other distinctive :
but a name, signature, or word or word other than such as full
within the descriptionsin the above paragaraphs (1), (2), (3), and (4)

shall not, except by order of the Governor or the Court, be deemed
a distinctive mark.
Provided always, that any speciA or distinctive word or words,
letter, imineral, or conibination of letters or numerals used as a
trade mark by the applicant or his predecessors in business before
the 13th August, 1875, wbich has continued to be used (either in
its original form or with additions or alterations riot substantially

As amended by No. 12 of 1912 and No. 43 of 1912 Supp. Sched.
As ameided b~ No. 12 of 1912 and _No. 13 of 1912.





affecting the identity, of the same) down to the date of the applica-
tion for registration, shall be registrable as a trade mark under this

Ordinance, if it is already tegistered in, the United Kingdom as an
old inark tised before the said datc.
For the purposes of lhis section - distinetive - Shall mean
adapted to distinguish the goods of the proprietor of the trade inark

from those of other persons.
In determining wherther a trade inark is so adapted, the Trihunal
may, in the case of a trade inark ill actual ase, Jake into considera-
tion. the extent to which Suell usel has rendered such trade
mark in fact distitielive for the goods wiffi respect to which it is
registered or proposed to be regislered.

10. A trade mark niay be limited in whoic or in part to one or
more specified colours, and in sueb cast,' the fitet that it is so limited
shall be. taken into consideration bvhavilw to deelde
on the distinctive ebaracler of such lrade mark . If and so far as
a trade mark is registered witfloul limitation of colour it shall be
deemed to be registered for all colours.

11. It shall not be lawful to register as a trade mark or part of a
trade maek any matter, the use which would by reason of its
being calculated to deceive or otherwise be disentifled to protee-
tion in a, Court of Justice, or would be contrarv to law or morality,
or any scandalous design.

Registration of Tradc Marks.
12.-(1) Ally person claiming to be the proprietor of a trade

mark who is desirous of registering tbe saine must apply in writing
to the Registrar in the prescribed manner.

[sub-s. (2), rep. _No. 21 of 1911.]

(3) Snbject to the provisions of this Ordinance the Registrar niay

refuse an application, or inav accept it absolutely or subject to
conditions, amendments, or modificatiolls.

(4) In case of any such refusal ot. conditional acceptance
the Registrar shall if required by the applicant, state in writing
and communicate to the applicant the grounds of his decision and
the materials used by him in arriving at the same, and such decision
shall be subject to appeal to the Governor oi: the Court at the option

* As amended by '.No. 21 of 1911 and ~No. 13 of ign.





of the applicant. The Tribunal shall, if required, hear the applicant
and the Registrar, and shall make an order determining whether,
and subject to what conditions, amendments, or modifications, if
any, the application is to be accepted.
(.5) Appeals under this section shall be. heard on the materials so
stated by the Registrar to have been used by him in arriving at his
decision, and no further grounds of objection to the acceptance of
the application shall be allowed to be taken by the Registrar, other
than those stated by hini, except by leave of the Tribunal hearing
the appeal. Where any further grounds of objection are taken the
applicant shall be entitled to withdraw his application without pay-
inent of costs on giving Dotice.
(6) The Registrar or the Governor or the Court, as the case may
be, may at any tline, whether before or iftei, acceptance, correct
any error in or in connection with the application, or may permit
the applicant to amend his application upon such terms as he or it
may think fit.

13. When an application for registration of a tnide mark has been
accepted, whether absolutelyor subject to conditions, the applicant
shall, as soon as may be after such acceptance, cause the applica-
tion, as accepted, to be advertised in the prescribed manner. Such
advertisement shall set forth all conditions subject to which the
application has been accepted.

14.-(1) Any person may, within the prescribed tinie from the
(late of the advertisement of an application for registration of a
trade mark, give notwe to the Registrar of opposition to such re-
gistration.

(2) Such notice shall be given in writing in the prescribed

manner and shall include a statement of the grounds of opposition.

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

(4) If the applicant sends such counter-statement, the Registrar
shall furnish a copy . thereof to the persons giving notice of
opposition, and shall after hearing the parties, if so required, and





considering the evidence, decide whether, and subject to what
conditions, registration is to be permitted.

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

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

(7) On the hearing of anly such appeal any party may, either in
the manner prescribed or by special leave of the Triblinal, bring
forward further material for the considenifion of the Tribilrial.

(8) In proceedings under this section no further ground, of
objection to the registration of a trade mark shal be allowed to be
taken by the opponent or the Registrar other 1Nin those. stated by
the opponent as berein-above provided, excepI bY leave of the
Tribunal hearing the appeal. Where any hirther grounds of
objection are taken the applicant shall be entitled to withdraw his
application without, payment of the costs of the opponent on Cliviner
notice as prescribed.

(9) In any appeal tinder this section,, the Tribunal may, after
bearing the Registrar, permit the trade inark proposed to be
registered to be modified in any manner not substantially affecting
the identity of such trade mark but in such case the trade mark
as so niodified shall bc advertised in the prescribed manner before
being registered.

(10) The Registrar or, in the ease of an appeal to the Governor,
the Governor, shall have power in proceedings under this section
to award to any party costs of such proceedings or any part thereof
an& to direct how and by what parties and on what scale they are
to be, paid. Such costs shall be taxed before the Registrar of the
Supreme Court and shall be recoverable in the same manner as
costs in an action.

(11) If a party giving notice of opposition or of appeal neither
resides nor carries on business in the Colony the Registrar or the
Tribunal may require such party to give security for costs of the
proceedings before it relative to such opposition or appeal and, in
default of such security being dul.y given, may treat the opposition
or appeal as abandoned.





15. If a trade mark contains parts not separately registered by
the proprietor ,is trade mark or if It contains rnatter common to
the tnide or otherwise of a nen-distinctive character, the Registrar
or the Governor or the Court, in deciding whether such trade mark
shall be entered or shall reinain upon the register, may require, as
a condition of its being upon the register, that the proprietor shall
disclalin any right to the exclusive tise of any part or parts of such
trade mark, or of all or any portion of such niatter, to the exclusive
use of which the Tribunal holds blin riot to be entitled, or that he
shall inalke such other disclaimer as the Tribunal may consider
needful for the purpose of defining his rights tinder such registra-
tion : Provided alwavs that no disclaimer upon the register shall
affect any rights of the proprietor of a trade roark except such as

, se out of the registration of the trade mark in respect of which
the diselainier is made.

16. When an application for registration of a trade mark has
been accepted and has not been opposed and the tline for notice
of opposition has expired, or, having been opposed, the opposition
has been decided in favour of the applicant, the Registrar shall
register the. said trade inark, and the trade mark, wheil registered,
shall be reuistered as of the date of the application for registration,
and sneh date shall be deemed for the purposes of this Ordinance
to be the date of registration.

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

18. Where registration of a trade mark is not completed within
12 nionths from the. date of the application by reason of default on
the part of the applicant. the Regitrar may, after giving notice of
the non-completion to the applicant in writing in the prescribed
nianner, treat the application as abandoned unless it is completed
the tinie specified in that behalf in such notice.

Identlical Trade Marks.

19. Except in. the case of trade mark in use be fore 13tb August,
1875, which are registered in the United Kingdom as old marks

used before the said date, no trade mark shall be re istered

in respect of any goods or description of goods which is identical





with one belonging to a different proprietor which is already on the
register with respect to such goods or description of goods, or so
nearly resembling such a trade mark as to be calcuLited to deceive.

20. Where each of several persons claims to he proprielor of the
same. trade mark, or of nearly identical trade marks in respect of
the. same goods or description of goods, and to be registered as such
proprietor, the Registrar may refuse to register as of theni until
their rights have been determined by the Court, or Itive been
settled by agreeinent in a manner approved by him or on appeal by
the Court.

21. The Registrar may refuse to register any trade mark if it is
proved to his satisfaction by the person opposing the application for
registration that such mark is identical with, or so nearly resembles
as to be calculated to deceive, any trade mark whiell is already
registered (in respect of goods of the same deseription as those in
respect of which registration in Hongkons, is applied for) in
a country or place from which goods of that description originate.
Provided always tbat Do application to register shall be refused
under this section in the following cases:-
(a) if the, applicant-, proves that. he or his predecessors lin business
have in Hongkong in connection with such goods as aforesaid
continuously used the trade mark, the registration of which is
applied for, from a date anterior to the date of the registration of
the other trade mark in such country or place of origin; or
(b) unless the opponent gives an Undertaking to the satisfaction

of the RegistraT. that be will. within 3 nionths from the giving of
the notice of opposition, apply for registration in Hongkong of the
trade mark so registered in the country or place of orl-gin. and will
take. all necessary steps to complete such registration

22. A trade mark when registered shall be assigned and trans-
mitted only in connection with the goodwill of the business con-
cerned in the goods for which it flas been registered, and shall be
determinable with that goodwill. But nothing in this section
contained shall be deemed to affect the right of the proprietor of a
registered trade isiark to assign the right to use the same in any
Britisb possession or protectorate or foreign country in connection
with any.goods for which it is registered together with the goodwill
of the business therein in such goods.





23. In any case where from any cause, whether by reason of
dissolu tion of partnership or otherwise, a person ceases to carry on
business, and the goodwill of such person does not pass to
one successor but is divided, the Registrar may (subject to
the provisions of this Ordinance as to associated trade marks), on
the application of. the parties interested, permit an apportionment
of the registered trade marks of the person among the persons in
fact continuing the business, subject to such conditions and
niodifications, if any, as he may think necessary in the public
interest. Any decision of the Registrar under this section shall be
subject to appeal to the Court.

Associated Trade Marks.

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

25. If the proprietor of a trade mark claims to be entitled to the
exclusive use of any, portion of such trade mark separately, he may
apply to register the same as separate trade marks. Each such
separate trade mark inust satisfy all the conditions and shall have
all the incidents of an independent trade mark, except that when
registered it and the trade inark of which it formia part shall be
(teemed to be associated trade marks and shall be entered on the
register as such, but the user of the whole trade mark shall for the
purposes of this Ordinance be deemed to be also a -user of such re-
gistered trade marks belonging to the saine proprietor as it con-
tains.

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

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

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





(c) other matter of a non-distinctive character which does nog,
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. All the trade marks in a series of trade
marks so registered shall be deemed to be, and shall be registered
as, associated trade marks.

27. Associated trade marks shall be assignable or transmissible
only as a whole and not separately, but they shall for all
otner purposes be deemed to have been registered as separate trade
marks. Provided that, where under the provisions of this Ordi-
nance user of a registered trade mark is required to be proved for
any purpose, the Tribunal may, it and so far as it shall theink right,
accept user of an associated registered trade mark, or of the trade
marR with additions or alterations not substantially its
identity, as an equivalent for such user.

Renewal of Registration
28. The registlation of a trade mark shall be for a period of 14
years, but may be renewed from time to time in accordance with
the provisions of this Ordinance.

29. The Registrar shall, on application made by the 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 expiration of the original registration

or of the last 'renewal of refistration, as the case may be, which
date is herein termed ---the expiration of the last registration

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

31. Where a trade mark has been removed from the register for
non-payment of the fee for renewal, such trade mark shall, never-





theless, for the purpose of any application for registration during
one year next after the date ol such removal, be deemed to be a
trade mark which is already registered, unless it is shown to the
satisfaction of the Registrar thal there has been no bonti fide trade
user of such trade mark during the 2 years immediately preceding
such reinoval.

Correction and Rectification of the Register.

32. The Registrar may, on request made in writing by the
registered proprietor or by soine person entitled bs- law to act in hic
name,-

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

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

(.3) cancel the entry of a. trade mark on the reuister ; or

(4) strike out any goods or classes of goods froin those. for whicl

a trade inark is registered ; or

(.5) enter a disclaimer or memorandum relating, to a trade niark
Whiell does riot in any way extend the rights given by the existing
registration of such trade mark.

Any decision of the Registrar under tlus section sliall be subject t
appeal to the Court.

33. SubJect to the provisions of this Ordinance, where a person
1)econies entitled to a, registered trade niark by assignment, trans-
mission., or other operation of law, the Registrar shall, on request
made in the prescribed manner and on proof of title to his
satisfaction, cause the name and address of such person to be
entered on the register as proprietor of the trade mark.

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

34. The registered proprietor of a*ny trade inark may apply in
writing to the Registrar for leave to add to or alter such trade mark

in an,y mariner not substantially affecting the identity of the same,
and the Registrar may refuse such leave er may grant the same on
such ternis as he may think fit, but any such refusal or'conditional





permission shall be subject to appeal to the Court. If leave
be granted, the trade mark as altered shall be advertised in the
prescribed manner.

35. Subject to the provisions of this Ordinarice,-
(1) the Court may, on the application in writing of any person
aggrieved by the non-insertion in or omission from the register of
any entry, or by any entry made in the register without sufficient
cause, or by any entry wrongly remaining 011 the register, or by
any error or deiect in any entry in the lie register, inake such order for
making, expunging, or varying such entry, as it may think fit;

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

(3) in case of fraud in the registration or transimission of a
registered trade mark the Registrar inaly hiniself apply to the
Court under the provisions of this section;

(4) any order of the Court rectifying the register shalldirect that
notice of the rectification shall be served upon the Bwgistrar in the
prescribed niamier, who shall upon remipt of such notice rectify
the register accordingly.

36. No trade rnark which is upon the register at the commence-
inent of this Ordinance and which under this Ordinance is a
registrable trade mark shall be reinoved from the register on the
ground that it was not registrable under the Ordinance in force at
the date of its registration. But nothing in this section contained
shall subject any person to any liability in respect of any act or
thein gdone before the commencement of this Ordinance to which
be would not have been subject under the Ordinance then in force.

3~. A registered trade mark may, on the application to the Court
of any person aggrieved, be taken oll the register in respect of any
of the goods for which it is registered, on the ground that it was
registered,by the proprietor or a predecessor in title without any
bond. fide intention to use the same in connection with such goods,
and that there has in fact been no bond fide user of the same
in connection therewith, or on the ground that there has been no
bond. fide user of such trade mark in connection with such goods
during the 5 years immediately preceding the application, unless in
either case such non-user is shown to be due to special cir-





cumstances in the trade, and not to any intention not to use or to
abandon such trade mark in respect of such goods.

Effect of Registration.

38. Subject to the provisions of this Ordinance,-

(1) the person for the time being entered in the register as
proprietor of a trade mark shall, subject to any rights appearing
from such register to be vested in any other person, have power to
assign the same, and to give effectual receipts for any consideration
tor such assignment ;

(2) any equities in respect of a trade mark may be enforced
like manner as in respect of any other property.

39. Subject to the provisions of section 41 and to any limitations
and conditions entered upon the register, the registration of a
peison as pioprietor of a trade mark shall, if valid, give to such
person the exclusive right to the use of such trade mark upon or
in connection with the goods in respect of which it is registered
Provided alwaya, that that two or inore persons are registered
proprietors of the same - (or substantially the same) trade niark in
respect of the same goods, no rights of exclusive user of such trade
mark shall, except so far as their respective rights shall have been
eteaned bY the Court be acquired by any one of such persons
as against any other by the registration thereof, but each of such

persons shall otherwise have the same rights as if he were the sole
registered proprietor' thereof.

40. In all legal proceedings relating to a re-istered trade inark

(including applications under section 35), the fact that a person
is registered as proprietor ol such trade inark shall be prima facic
evidence of the validity of the original registration of such trade
mark and of all subsequent assignments and transi-luissions of the
same.

41. In all legal proceedings relating to a registered trade mark
(including applications under section 35), the original. registration
.of such trade mark shall after the expiration of 7 years from the
date of such original registration (or 7 years from the passing of
this Ordinance, whichever shall last happen) be taken to be valid

* At; aniended by No. 43 of 1912 Supp, Sched.





in all respects unless such original registration was oblai ed
by fraud, or unless the trade mark offends against the provision of
section 11.

Provided that nothing in this Ordinance shall entitle the pro-
prietor of a registered trade mark to interfere with or restrain the
user by any person of a similar trade mark upon or in connection
with goods upon or in connection with which such person has, bs
himself or his predecessors in business, contintionsly such
trade mark from a date anterior to the user of the first mentioned
trade mark by the proprietor thereof or his predecessors In business.

42(1) The Court maY, on the ipplication in writing made.
within 7 years from the registration of a trade niark in Hongkong by
any person aggrieved by such registration, remve such trade trade inark
from the register, if it is proved to the satisfaction of the Court that
such trade mark is identical with, or so nearly resemabels as to be
calculated to deceive, any, trade inark Which was, prio to the
registration in llongkong of the first mentioned trade inark,
registered (in respect of goods of the same deserlplion as those in
respect of which the first mentioned tradeIs registered in
Hongkong.) in a country or place. from which goods of that descrip
tion originate.

Provided always that no trade mark shall be removed from the
register under this section in The following cases:-
(a) if the proprietor of the other trade mark consented to the
registration in llongkong of the first mentioned trade mark; or
(b) if the proprietor of the trade mark registered in Hongkong

proves that he or his predecessors in business have continuously
used such trade mark in Hongkong in connection with sneb goods
as aforesaid from a date anterior to the date. of the reluistration of
the other trade mark in the country or place of origin : or
(c) unless the applicant proves either that within the 5 years im-
mediately preceding the making of the application under this sec-
tion there has been bonl fide user in connection with such goods
as aforesaid in Hongkong of the trade iiiark registered in the
country or place of origin, or that the special circumstances of the
trade account for the non-user of such trad6-mark in Hongkong
within the same period, or that the trade mark so registered in tbe
country or place of origin was first registered there within the like

* Aq amended by No. 13 of 1912.





period of .5 years, and in either event gives an undertaking to the
satisfaction of the Registrar that lie will within 3 months from the
making of the application under this section apply for registration
in Hongkonf ol the tradcmark so registered in the country or place

of origin, and will take all necessarY steps to coniplete such regis-
tration.

(2) All applications mider this section shall be heard in open
Court in the Supi.enie Court in its Original Jurisdiction.

43. No person shall be entitled to institute any proceedings to
recover damages for the infringenieni of a trade inark not registered

in the Colony.

44. In an action for the infringement of a trade mark the Court
trying the question of infringement shall admit evidence of the
of the trade in respect to the get-up of the goods for which

the trade mark is registered, and of any trade marks or get-

up legitimately used in connection wi h such goods by other
persons.

45. No recristration under this Ordinance shall interfere with any

bov4 fide use by a person of his own narrie or place of business, or
that of any of his predecessors in business, or the use by
any person of any bo'n4 fide description of the character or quality
of his goods.

46. Nolhing in this Ordinance contained shall be deenied to affect
rights of action against any person for passing off goods as those of
another person or the reniedles in respect thereof.

Legal Proceedings.
47. In any legal proceeding in which the validity of the regis-
tration of a registered trade niark comes into question and is
decided in favour of the proprietor of such trade mark, the Court
may certify the same, and if it so certifies, then in any subsequent
legal proceeding in which such validity conies into question the
proprietor of thi. said trade inark on obtaIniDg a, final order
or judgment in his favour shall have his full costs, charges, and
expenses as between solicitor and client, unless in such subsequent
proceeding the Court certifies that lie ought not to have the same.

48. In any legal proceeding in which the trlirt sought includes
alteration or rectification of the register, the Registrax shall have
the right to appear and be heard, and shall appear if so directed by





the Court. Unless otherwise directed by the Court, the Registrar
in lieu of appearing and being lleard. may submit to the Court a
statement in writing signed by him, giving particulars of the pro-
ceedings before him in relation to the mlatter in issue or of
the grounds of any decision given by him affecting the same or of
the practice of the office in like cases, or of such other matters re-
levant to the issues, and within his knowledge as such Registrar,
as he shall think fit, and such statement shall be deenied to form
part of the, evidence in the proceeding.

Costs.

49. In all proceedings before the Court under this Ordinance the
costs of the Registrar shall be in the discretion of the Court, but
the, Registrar shall not be ordered to pay the costs of other of
the parties.

Evidence.

50. In any proceedings under this Ordinance before the Registrar
or the Governor, the evidence shall be given by statutory declra-
tion in the absence of directions to the contrary, but, in any case
in which lie shall think it right to do, the Registrar or the
Governor may (with the consent of the parties) take evidence riva
roce. in lien of or in addition to evidence by declaration. Any such
statutory declaration may in the case of appeal be used before the
Court in lieu of evidence by affidavit, but if so used shall have all
the incidents and consequences of evidence by affidavit.

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

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

52. A certificate purporting to be under the hand of the Registrar
as to any entry, matter, or thing which he is authorised by
this Ordinance to make or do, shall be primd facie evidence of the

It As. aniended by No. 12 of 1912.





entry having been made, and of the contents thereof, and of the
matter or thing having been done or not done.

Powers and Duties of Registrar of Trade Marks.
53. Wbere any discretionary or other power is given to the
Registrat. hY this Ordinance lie shall not exercise that power
adversely to the applicant for registration or the registered proprie-
tot. or the trade mark in question without (if duly required so to do
within the prescribed tinie) giving such applicant or registere.1
proprietor an opportunity of being heard.

54. Except where expressly given by the provisions of this
Ordinance there shall be no appeal front a decision of the Registrar
otherwise than to the Governor, but the Court, in dealing with any
question of the rectification of the register (including all applica-
tions tinder section 3.5) shall have power to review any decision of
Ibe. Registrar relating to the entrY in question or the correction
sought to be made.

55. When by this Ordinance any act has to be. done by or to any
person in connection with a trade mark or proposed trade mark 011
any procedure relating thereto, such act may, under and in accord-
ance with rules made under this Ordinance, be, done by or to an
agent of such party duly authorised in the prescribed manner,

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

Rules.
56. Subject to the provisions of this Ordinqnce the Governor-in-
Council may, make such rules, prescribe such forms, and generally
do such things as he thinks expedient,-

(a) for regulating the practice under this Ordinance:

* As amended by No. 12 of 1912.
+ As amended by No. 12 of 1912 and No. 43 of 1912 Supp. Sched.
As amended by No. 21 of 1911 and No. 18 of 1912.
As amonded bNo. 50 of 1911 gnd No. 12 of 1912.





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

(c) for making or requiring duplicates of trade marks and other
documents
(d) for securing and regulating the publishing and selling or dis-
tributing, in such nianner as the Governor-in-Council thinks fit, of
copies of trade marks and other documents:
(c) generally, for regulating the business of the office ux relation
to trade marks and all things by this Ordinance placed under the
direction or control of the Registrar.

Fees.
57. There shall lie paid in respect of applications and registration
and other matters tinder this Ordinance such fees as may lie
prescribed and notified by the Governor-in-Council

Special Trade Marks.
58. Where any association or person undertakes the examination
of any goods in respect of origin, material, mode of manufacture,
quality, accuracy, or other characteristic, and certifies the result
of sucii examination by mark used upon or in connection with such
goods, the Governor-in-Council may, if he shall judge it to be lo
the public advantage, perinit such association or person to recrister
such mark as a trade inark lit respect of such goods, whether or

not such association or person be a trading association or trader
or possessed of a goodwill in contiection with such exanifliation and
certifying. When so registered such trade mark shall be deemed
in all respects to be a registered trade mark, and stich association
or person to be the proprietor thereof, save that such trade mark
shall be transmissible or assignable only by permission of the
Governor-in-Council.

Offences.
59. If any person makes or causes to be made, a false entry in
the register kept under this Ordinance or a writing falsely purport-
ing to be a copy of an entry in any such register, or produces or
tenders or causeo to be produced or tendered in evidence any such
entry or writing, knowing the same to be false, he shall be guilty of
a misdemeanor.

As atneDded by No. 12 of 1912 and No. 13 of 1912.
As amelided by No. 13 of 1912.





60.-(1) Any person who representp a trade mark as registered
in Hongkong which not so registered shall be liable for every
offence, on summary conviction, to a fine not exceeding 50 dollars.

(2) A person shall be deemed, for the purposes of this Ordinance,
to'represent that a trade mark is registered in Hongkong, if lie uses
in connection with the trade mark the words - registered in
Hongkong -, or any words expressing or implying that registration
has been obtained in 11ongkong for the trade mark.

Royal Aris.
(1 61. If aliv person, without the authority of Flis Majesty
uses in
connection with any trade, business, calling, or profession, the
Royal Arins (or arins 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 authorised so to use the Royal Arms, or
if any person, without the authority of His Majests. or a member o?
Ilic Boval Family, uses in connection with any trade, business,
calling, (r profession any, device, eniblein, or title in such manner
as to be calculated to lead to the belief that lie is employed
by or supplies goods to His Majesty or to such member of the Royal
Family, he inav, at the suit of any person who is authorised to use
such arnis or such device, emblem, or title, or who is authorised
by the Governor to take proceedings in that behalf, be restraiDed
by injunction from. continuing so to use the same : Provided that
nothing in this section shall be construed as aflecting the right, if
any, of the proprietor of a trade mark containing any such arms,
device, eniblein, or title to continue to use such trade mark.
Is. 62, rep. No. 12 of 191-2.]

63. The Governor may appoint the Registrar under this -or-
dinance imiriediately after its commencement and thereafter all
matters and things hitherto transacted and done by the Colonial
Secretary under the Trade Marks Ordinance, 1898, may be
transacted and done by the Registrar, but in all other respects this
Ordinance shall corne into operation on Ist April, 1910.

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

amended b.x No. P3 of 1912.
A,' aniended b ' v No. 12 of 1912 and No. 4'1 of 1912 Supp. Selied.
As amemled bx _No. 12 of 11312 and No. 13 of 1912.
Short title. 5 Edw. 7 c. 15 s. 1. Interpretation of terms ib.s. 3. Register of trade marks. 5 Edw. 7 c. 15 s. 4. Trust not to be entered on register. Ib. s. 5. Incorporation of existing register. 5 Edw. 7 c. 15 s. 6. Inspection of and extract from register. Ib. s. 7. Trade mark must be for particular goods. Ib. s. 8. Registrable trade marks. Ib. s. 9. Coloured trade marks. 5 Edw. 7 c. 15 s. 10. Restriction on registration. Ib. s. 11. Application for registration. Ib. s. 12. Advertisement of registration. 5 Edw. 7 c. 15 s. 13. Opposition to registration. Ib. s. 14. disclaimers . 5 ecw. 7 c. 15 . Date of registration . Ib. s. 16 . Certificate of registration ib. s. 18. Identical marks.. Ib. s.. 19. rival claims to identical marks . 5edw. 7 c. 15s.. 20. Protection of marks reistered in country of origin. Assignment and transmission of trade marks. Ib. s. 22. apportionment of marks on dissolution of parnership . 5 edw. 7 c. 15 s. 23. Associated trade marks. Ib.s .24. Combined trde marks . Ib. s. 25.series of trade marks ib. s. 26. assignment and user of associated trade marks . 5 edw. 7 . C. 15s. 27. Duration of registration . Ib. s. 28. Renewal of registration . Ib. s. 29. Procedure on expiry of period of registration ib. s. 30. Status of unrenewed trade marks. Ib. s. 31. correction of register . A5 edw. 7 c. 15 s. 32. Registration of assignments ib.. S. 33 . Alteration of registered trade mark ib. s. 34. rectification of register . 5 edw. 7 c. 15s. 35. Tade marks registered under previous enactments ib. s. 36.non-user fo trade mark ib. s. 37. Powers of registered proprietor. 5 Edw. 7 c.15 s. 38. Rights of proprietor of trade mark. Ib.s.39. Registration to be prima facie evidences of validity. Ib.s.40. Registration to be conclusive after 7 years. Ib.s.41. Removal of mark on proof of prior registration in country of origin. Unregistered trade mark. 5 Edw. 7 c. 15, s. 42. Infringement. Ib.s.43. User of name, address, or description of goods. Ib.s.44. 'Passing off' action. Ib.s.45. Certificate of validity. Ib.s.46. Registrar to have notice proceeding for rectification. Ib.s.47. Costs of proceedings before Court. 5 Edw. 7 c. 15 s. 48. Mode of giving evidence. Ib.s.49.Sealed copies to be evidence. Ib.s.50. Certificate of Registrar to be evidence ib.s.51. Exercise of discretionary power by Registrar. 5 Edw. 7 ib.s.53. Appeal from Registrar. Recognition of agents. Ib.s.55. Appeals to the Governor Power of Governor-in-Council to make rules. Ib.s.60. Fees. 5 Edw. 7 c. 15 s. 61. Standardization trade marks. Ib.s.62. Falsification of entries in register. Ib.s.66. Penalty on falsely representing a trade mark as registered. 5 Edw. 7 c. 15 s. 67. Unauthorised assumption of Royal Arms. Ib.s.68. Commencement of Ordinance.

Short title. 5 Edw. 7 c. 15 s. 1. Interpretation of terms ib.s. 3. Register of trade marks. 5 Edw. 7 c. 15 s. 4. Trust not to be entered on register. Ib. s. 5. Incorporation of existing register. 5 Edw. 7 c. 15 s. 6. Inspection of and extract from register. Ib. s. 7. Trade mark must be for particular goods. Ib. s. 8. Registrable trade marks. Ib. s. 9. Coloured trade marks. 5 Edw. 7 c. 15 s. 10. Restriction on registration. Ib. s. 11. Application for registration. Ib. s. 12. Advertisement of registration. 5 Edw. 7 c. 15 s. 13. Opposition to registration. Ib. s. 14. disclaimers . 5 ecw. 7 c. 15 . Date of registration . Ib. s. 16 . Certificate of registration ib. s. 18. Identical marks.. Ib. s.. 19. rival claims to identical marks . 5edw. 7 c. 15s.. 20. Protection of marks reistered in country of origin. Assignment and transmission of trade marks. Ib. s. 22. apportionment of marks on dissolution of parnership . 5 edw. 7 c. 15 s. 23. Associated trade marks. Ib.s .24. Combined trde marks . Ib. s. 25.series of trade marks ib. s. 26. assignment and user of associated trade marks . 5 edw. 7 . C. 15s. 27. Duration of registration . Ib. s. 28. Renewal of registration . Ib. s. 29. Procedure on expiry of period of registration ib. s. 30. Status of unrenewed trade marks. Ib. s. 31. correction of register . A5 edw. 7 c. 15 s. 32. Registration of assignments ib.. S. 33 . Alteration of registered trade mark ib. s. 34. rectification of register . 5 edw. 7 c. 15s. 35. Tade marks registered under previous enactments ib. s. 36.non-user fo trade mark ib. s. 37. Powers of registered proprietor. 5 Edw. 7 c.15 s. 38. Rights of proprietor of trade mark. Ib.s.39. Registration to be prima facie evidences of validity. Ib.s.40. Registration to be conclusive after 7 years. Ib.s.41. Removal of mark on proof of prior registration in country of origin. Unregistered trade mark. 5 Edw. 7 c. 15, s. 42. Infringement. Ib.s.43. User of name, address, or description of goods. Ib.s.44. 'Passing off' action. Ib.s.45. Certificate of validity. Ib.s.46. Registrar to have notice proceeding for rectification. Ib.s.47. Costs of proceedings before Court. 5 Edw. 7 c. 15 s. 48. Mode of giving evidence. Ib.s.49.Sealed copies to be evidence. Ib.s.50. Certificate of Registrar to be evidence ib.s.51. Exercise of discretionary power by Registrar. 5 Edw. 7 ib.s.53. Appeal from Registrar. Recognition of agents. Ib.s.55. Appeals to the Governor Power of Governor-in-Council to make rules. Ib.s.60. Fees. 5 Edw. 7 c. 15 s. 61. Standardization trade marks. Ib.s.62. Falsification of entries in register. Ib.s.66. Penalty on falsely representing a trade mark as registered. 5 Edw. 7 c. 15 s. 67. Unauthorised assumption of Royal Arms. Ib.s.68. Commencement of Ordinance.

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