القواعد المتعلقة بالعلامات التجارية (الفصل 559، القسم 91)، 4 أبريل 2003، إقليم هونغ كونغ، الصين

(Date of this copy: 25/04/2003)

Chapter: 559A TRADE MARKS RULES

Empowering section

(Cap 559, section 91)

[4 April 2003] L.N. 31 of 2003

(L.N. 30 of 2003)

PART 1

PRELIMINARY

Section: 1 (Omitted as spent)

(Omitted as spent)

Section: 2 Interpretation

(1) In these Rules, unless the context otherwise requires-

"actual date of registration" (□□□) has the meaning assigned by rule 29(1)(b);

"applicable fee" (□□□), in relation to a matter or proceeding, means the fee specified in the Schedule in relation to that matter or proceeding;

"business day of the Registry" (□□□) means a business day of the Registry as specified in directions of the Registrar published under rule 114;

"business hours of the Registry" (□□□) means the business hours of the Registry as specified in directions of the Registrar published under rule 114;

"commencement date" (□□□) means the date on which the Ordinance comes into operation;

"the date of registration" (□□□) has the meaning assigned by rule 29(1)(a);

"digital signature" (□□□) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553);

"electronic record" (□□□) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553);

"electronic signature" (□□□) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553);

"existing registered mark" (□□□) has the meaning assigned by section 1(1) of Schedule 5 to the Ordinance;

"information system" (□□□) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap 553);

"International Classification" (□□□) means the International Classification of Goods and Services adopted under the Nice Agreement and in force at the relevant time;

"Nice Agreement" (□□□) means the Nice Agreement concerning the International

Classification of Goods and Services for the purposes of the Registration of Marks, concluded at the Nice Diplomatic Conference on 15 June 1957, as revised at Stockholm on

14 July 1967 and at Geneva on 13 May 1977 and amended at Geneva on 28 September 1979, as revised or amended from time to time;

"objector" (□□□) means a person who files a notice of objection under rule 26(2) or 55(1), as the case may be;

"old law" (□□□) has the meaning assigned by section 1(1) of Schedule 5 to the Ordinance;

"opponent" (□□□) means a person who files a notice of opposition under rule 16, 61(1), 67(2) or 102(3), as the case may be; (L.N. 97 of 2003)

"the Ordinance" (□□□) means the Trade Marks Ordinance (Cap 559);

"the repealed Ordinance" (□□□)means the Trade Marks Ordinance (Cap 43), as in operation immediately before its repeal by the Ordinance;

"send" (□□□)includes give, and cognate expressions are to be construed accordingly;

"specification" (□□□)means the statement of the goods or services in respect of which a trade mark is registered or proposed to be registered;

"specified form" (□□□), in relation to any matter or proceeding, means the form specified by the Registrar under section 74 of the Ordinance to be used in connection with that matter or proceeding.

(2) Unless the context otherwise requires, any reference in these Rules to the filing of a

document or other thing (howsoever expressed) shall be construed as a reference to the filing of the document or thing with the Registrar in accordance with Part 16.

(3) Unless the context otherwise requires, any reference in these Rules to a trade mark shall be construed as including a reference to a certification mark, collective mark and defensive trade mark.

(4) A reference in the heading to a rule to the number of a form is a reference to the number of that form as published in the official journal under section 74 of the Ordinance.

(5) A reference in the heading to a rule to the number of a fee is a reference to the number of that fee as specified in the Schedule.

Section: 3 Specified forms

(s. 74 of the Ordinance)

(1) Where under section 74 of the Ordinance the Registrar specifies a form to be used in connection with any matter or proceeding, the specified form shall be used in all cases in which it is applicable.

(2) A requirement to use a specified form is satisfied by the use of either-

(a) a replica of the specified form; or

(b) a form acceptable to the Registrar,

that contains the information required by the specified form and complies with any directions of the Registrar as to the use of the specified form or replicas of it.

Section: 4 Fees

(1) The fees to be paid in relation to any matter or proceeding under the Ordinance or these Rules are those specified in the Schedule.

(2) Subject to subrule (3), fees shall be paid at such time and in such manner as the Registrar directs.

(3) Where a fee is required to be paid in relation to a matter or proceeding for which a specified form is required to be used, the fee shall be paid when the specified form is filed.

(4) Where the Registrar is required or authorized by any provision of these Rules to do any act or thing in relation to a matter or proceeding for which a fee is required to be paid, the Registrar may, notwithstanding that provision, refuse to do that act or thing until such time as the fee is paid.

(5) Where a fee is paid in error or in excess of the amount specified in the Schedule, the Registrar shall repay the amount paid in error or the excess amount accordingly.

Section: 5 Classification of goods and services

(s.40 of the Ordinance)

(1) Subject to subrule (3), for the purposes of trade marks registered on or after the commencement date, the goods or services in respect of which a trade mark is registered shall be classified in accordance with the classifications of the International Classification in force on the date of registration.

(2) Subject to subrule (3), for the purposes of existing registered marks, the goods or services in respect of which a trade mark is registered shall be classified in the same manner as they were classified immediately before the commencement date.

(3) The specification of a registered trade mark may be reclassified in accordance with rules 58, 59, 60 and 61.

PART 2

APPLICATION FOR REGISTRATION

Filing of application

Section: 6 Form of application, etc.

(s. 38 of the Ordinance)

(Forms T2, T2A & T2S)(Fee No. 1)

(1) An application for registration of a trade mark shall be filed on the specified form.

(2) An application for registration of a 3-dimensional shape as a trade mark or as an element of a trade mark shall not be treated as such unless the application contains a statement claiming the shape as the trade mark or as an element of the trade mark, as the case may be.

(3) An application for registration of a colour or colours as a trade mark, or as an element or elements of a trade mark, shall not be treated as such unless-

(a) the application contains a statement claiming the colour or colours as the trade mark, or as an element or elements of the trade mark, as the case may be; and

(b) the trade mark, or the element or elements of the trade mark, as the case may be, appear in the representation of the trade mark included with the application in the colour or colours for which the claim is made.

Section: 7 Specification of goods or services

(ss. 38(2)(c) & 40 of the Ordinance)

(Form T5A)(Fee No. 2)

(1) Every application for registration of a trade mark shall specify the class or classes of goods or services in the International Classification to which the application relates.

(2) The specification shall include for each class of goods or services set out in the specification a clear and concise description, appropriate to that class, of the goods or services in respect of which the trade mark is proposed to be registered.

(3) If the application relates to more than one class of goods or services in the International Classification, the specification shall set out the classes in consecutive numerical order.

(4) If the trade mark is proposed to be registered in respect of all the goods or services in a particular class, or in respect of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use the applicant has made of the trade mark or by the use he intends to make of the trade mark if it is registered.

(5) If the specification lists goods or services by reference to a class or classes in the International Classification under which the goods or services do not fall, the applicant may file a request under section 46 of the Ordinance to amend the application to correct the class or classes accordingly (see rule 24).

(6) Subject to rule 24, on receipt of a request under subrule (5) and payment of the applicable fee, the Registrar shall amend the application accordingly.

(7) Subrule (4) does not apply to an application for the registration of a trade mark as a defensive trade mark.

Section: 8 Representation of trade mark

(s. 38(2)(d) of the Ordinance)

(1) The representation included with an application for registration of a trade mark shall depict the trade mark clearly and in sufficient detail to permit a proper examination to be made of the trade mark and shall be of a kind and quality that is suitable for reproduction and registration.

(2) The Registrar may at any time require the applicant to file additional copies of the representation.

Section: 9 Claim to priority

(s. 41 of the Ordinance)

(1) Where an applicant wishes to claim a right to priority under section 41 of the Ordinance, the application filed under these Rules shall include the following particulars-

(a) the name of each country, territory or area in respect of which a right to priority is claimed;

(b) the date of filing of the application filed in, or in respect of, each such country, territory or area; and

(c) the application number assigned to that application, if it is known to the applicant.

(2) If the application filed under these Rules does not include the application number assigned to the previous application as required by subrule (1)(c), the Registrar may at any time by notice in writing require the applicant to file that application number.

(3) The Registrar may at any time by notice in writing require the applicant to file a certificate issued by the registering or other competent authority of the country, territory or area in respect of which any right to priority is claimed that certifies, or establishes to the satisfaction of the Registrar

(a) the date of filing of the application filed in, or in respect of, that country, territory or area;

(b) the application number assigned to that application;

(c) the representation of the trade mark; and

(d) the goods or services covered by that application.

(4) Where the Registrar issues a notice under subrule (2) or (3), the claim to a right to priority shall be lost for the application if the application number or certificate, as the case may be, is not filed within 3 months after the date of the notice.

Section: 10 Disclaimers, limitations and conditions

(s. 15 of the Ordinance)

An applicant who wishes to-

(a) disclaim any right to the exclusive use of any specified element of the trade mark; or

(b) subject the rights to be conferred by the registration to a specified territorial or other limitation or condition,

shall include particulars of the disclaimer, limitation or condition in his application.

Section: 11 Deficiencies in application

(1) If it appears to the Registrar that an application for registration of a trade mark does not satisfy the requirements of-

(a) rule 6(1), 7(1) or (2) or 8(1); or

(b) section 38 of the Ordinance (which sets out requirements relating to applications),

the Registrar shall send a notice to the applicant informing him of the deficiencies and requesting him to remedy those deficiencies.

(2) An applicant to whom a notice is sent under this rule must remedy the deficiencies within 2 months after the date of the notice, and if he fails to do so-

(a) where the deficiencies relate to rule 6(1), 7(1) or (2) or 8(1) or section 38(1), (2)(e), (3), (4) or (5) of the Ordinance, the application shall be treated as abandoned; and

(b) where the deficiencies relate to section 38(2)(a), (b), (c) or (d) of the Ordinance,

the application shall be deemed never to have been made.

Examination and publication

Section: 12 Examination of application

(s. 42(1) of the Ordinance)

The Registrar shall examine whether an application for registration of a trade mark filed under these Rules, and in respect of which any deficiencies notified to the applicant under rule 11

have been remedied, satisfies the requirements for registration.

Section: 13 Failure to meet requirements for registration

(s. 42(3) of the Ordinance)(Form T13)

(Fee No. 3)

(1) If, on the basis of the examination of an application under rule 12, it appears to the Registrar that the requirements for registration are not met, he shall by notice in writing inform the applicant of the Registrar's opinion and of the matters referred to in section 42(3)(b) and (c) of the Ordinance.

(2) The applicant may, at any time during the period beginning on the date of the notice and ending 6 months after that date, do either or both of the following- (L.N. 97 of 2003)

(a) file written representations to establish that the requirements for registration are met; or

(b) file a request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24).

(3) The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (2), extend the time for filing the written representations or request referred to in that subrule for one further period of 3 months. (L.N. 97 of 2003)

(4) If-

(a) the applicant files written representations or a request for amendment under subrule (2) within the period specified in that subrule or, where the Registrar has granted an extension of time under subrule (3), within the period as so extended; and

(b) it appears to the Registrar, after considering the representations or request for amendment, that the application, or the application as amended or proposed to be amended, does not meet the requirements for registration,

the Registrar shall inform the applicant of his opinion by notice in writing. (L.N. 97 of 2003)

(5) Where a notice is sent to the applicant under subrule (4), the applicant may, at any time during the period beginning on the date of the notice and ending 3 months after that date, do any or all of the following-

(a) file written representations or further written representations to establish that the requirements for registration are met;

(b) file a request or a further request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24); or

(c) file a request for a hearing. (L.N. 97 of 2003)

(6) The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (5) or, where the Registrar has previously granted an extension of time under this subrule, within the period as so extended, extend the time for filing written representations or a request under subrule (5) for such period or periods, not exceeding 3 months at any one time, and on such terms, if any, as he may direct, if he is satisfied that-

(a) where the notice sent to the applicant under subrule (4) raises an objection to the registration of the trade mark on any of the grounds mentioned in section 12(1), (2) or (3) of the Ordinance (relative grounds for refusal of registration)-

(i) the applicant needs additional time to obtain the consent of the owner of a relevant earlier trade mark;

(ii) the applicant needs additional time to obtain an assignment of a relevant earlier trade mark; or

(iii) proceedings for the invalidation or revocation of a relevant earlier trade mark are pending and time should be extended to allow for the proceedings to be disposed of;

(b) the applicant needs additional time to prepare evidence of use to be filed in support of the application; or

(c) other exceptional circumstances exist to justify the granting of an extension of time. (L.N. 97 of 2003)

Section: 14 Prescribed period under section 42(3)(b) of the Ordinance

(1) Except as provided in subrules (2) and (3), for the purposes of section 42(3)(b) of the Ordinance (which sets a deadline for meeting the requirements for registration), the prescribed period for an application in relation to which a notice is sent to the applicant under rule 13(1) is the period beginning on the date of the notice and ending 6 months after that date or, where the Registrar has granted an extension of time under rule 13(3), ending 9 months after that date.

(2) Subject to subrule (3), where-

(a) the Registrar sends a notice to the applicant under rule 13(1);

(b) the applicant files written representations or a request for amendment under rule 13(2) within the period specified in that rule or as extended under rule 13(3); and

(c) the Registrar sends a notice to the applicant under rule 13(4),

the prescribed period for the application is the period beginning on the date of the notice sent to the applicant under rule 13(1) and ending 3 months after the date of the notice sent to the applicant under rule 13(4) or, where the Registrar has granted an extension of time under rule 13(6), ending on the last day of the period as so extended. (L.N. 97 of 2003)

(3) Where-

(a) the Registrar sends a notice to the applicant under rule 13(4); and

(b) the applicant files a request for a hearing within the period specified in rule 13(5) or, where the Registrar has granted an extension of time under rule 13(6), within the period as so extended,

the prescribed period for the application is the period beginning on the date of the notice sent to the applicant under rule 13(1) and ending on the last day of the hearing or at such time as the Registrar may decide the matter without a hearing under rule 75. (L.N. 97 of 2003)

Section: 15 Publication of particulars of application

(s. 43 of the Ordinance)

Where the Registrar accepts an application for registration of a trade mark under section 42 of the Ordinance, he shall publish particulars of the application in the official journal.

PART 3

OPPOSITION TO REGISTRATION

Section: 16 Notice of opposition

(s. 44 of the Ordinance)(Form T6)

(Fee Nos. 4 & 29)

(1) Notice of opposition to the registration of a trade mark shall be filed on the specified

form within the 3-month period beginning on the date on which particulars of the application for

registration of the trade mark are published under rule 15.

(2) The notice of opposition shall include a statement of the grounds of opposition and,

where the opposition is based on an earlier trade mark, shall also include-

(a) a representation of that earlier trade mark;

(b) if it is registered, a statement indicating the classes and the goods or services in respect of which it is registered;

(c) if it is not registered, a statement indicating the goods or services in respect of which it is used; and

(d) if it is an earlier trade mark by virtue of section 5(1)(a) or (2) of the Ordinance, a statement indicating the application or registration numbers of the trade mark.

(3) The opponent shall, at the same time as he files the notice of opposition, send a copy of

it to the applicant.

(4) The Registrar may, on a request being filed by any person on the specified form within the period specified in subrule (1), extend the time for filing a notice of opposition or anything referred to in subrule (2) by 2 months, which time may not be further extended. (L.N. 97 of 2003)

Section: 17 Counter-statement

(Form T7)(Fee No. 29)

(1) Within 3 months after the date of receipt of the copy of the notice of opposition, the applicant shall file a counter-statement on the specified form setting out-

(a) the grounds on which he relies in support of his application;

(b) the facts alleged in the notice of opposition that he admits;

(c) the facts alleged in the notice of opposition that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and

(d) the facts alleged in the notice of opposition that he is unable to admit or deny.

(2) The applicant shall, at the same time as he files the counter-statement, send a copy of it to the opponent.

(3) The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (1), extend the time for filing a counter-statement by 2 months, which time may not be further extended. (L.N. 97 of 2003)

(4) If the applicant does not file a counter-statement within the period specified in subrule (1) or as extended under subrule (3), he shall be deemed to have withdrawn his application. (L.N. 97 of 2003)

Section: 18 Evidence in support of opposition

(1) If the applicant files a counter-statement within the period specified in rule 17(1) or as extended under rule 17(3), the opponent shall file evidence in support of his opposition within 6 months after the date of receipt of the copy of the counter-statement. (L.N. 97 of 2003)

(2) The opponent shall, at the same time as he files the evidence, send a copy of it to the applicant.

(3) If the opponent does not file evidence within the period specified in subrule (1), he shall be deemed to have abandoned his opposition.

Section: 19 Evidence in support of application

(1) If the opponent files evidence within the period specified in rule 18(1), then within 6 months after the date of receipt of the copy of the opponent's evidence, the applicant shall file-

(a) evidence in support of his application; or

(b) a statement to the effect that he does not intend to file evidence.

(2) The applicant shall, at the same time as he files the evidence or statement under subrule (1), send a copy of it to the opponent.

Section: 20 Evidence in reply

(1) If the applicant files evidence within the period specified in rule 19(1), the opponent may, within 6 months after the date of receipt of the copy of the applicant's evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the applicant's evidence.

(2) If the opponent files additional evidence, he shall at the same time send a copy of it to the applicant.

(3) Except with the leave of the Registrar, no further evidence may be filed by either party.

Section: 21 Fixing of date for hearing

After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.

PART 4

WITHDRAWAL, AMENDMENT, DIVISION AND MERGER OF

APPLICATIONS FOR REGISTRATION

Withdrawal

Section: 22 Notice of withdrawal of application

(s. 45 of the Ordinance)

(1) An applicant for registration of a trade mark may withdraw his application by notifying the Registrar in writing.

(2) The withdrawal takes effect on receipt of the notice by the Registrar.

(3) If particulars of the application have been published under rule 15, the Registrar shall publish particulars of the withdrawal in the official journal.

Amendment

Section: 23 Additional purposes for which application may be amended

(s. 46(3)(b) of the Ordinance)

In addition to the purposes mentioned in section 46 of the Ordinance, an application for registration of a trade mark may be amended for the purpose of-

(a) correcting under rule 7(5) and (6) the class or classes of goods or services listed in the specification;

(b) adding a disclaimer, limitation or condition under section 15 of the Ordinance; or

(c) withdrawing a claim to a right to priority made under section 41 of the Ordinance.

Section: 24 Request to amend application

(s. 46 of the Ordinance)(Forms T5, T5A, T5B

& T5S)

(1) A request under section 46 of the Ordinance to amend an application for registration of

a trade mark shall be filed on the specified form.

(2) The Registrar may at any time require the applicant to file reasons for and evidence in

support of the request.

(3) Subject to rules 25 and 26, where a request is filed under this rule, the Registrar may-

(a) amend the application as proposed by the applicant (if he is satisfied that the proposed amendment complies with section 46 of the Ordinance);

(b) amend the application in such manner as he thinks fit (if he is satisfied that only a part of the proposed amendment complies with section 46 of the Ordinance); or

(c) refuse to make the amendment (if he is satisfied that the proposed amendment does not comply with section 46 of the Ordinance).

Section: 25 Publication of proposed amendment

(s. 46(5)(a) of the Ordinance)

Where a request is made under section 46 of the Ordinance to amend an application for registration of a trade mark after particulars of that application have been published under rule 15, the Registrar shall, if he is satisfied that the proposed amendment affects the representation of the trade mark or the goods or services covered by the application, publish particulars of the proposed amendment in the official journal.

Section: 26 Notice of objection

(s. 46(5)(b) of the Ordinance)(Form T6)

(Fee No. 5)

(1) This rule applies where particulars of a proposed amendment to an application for registration of a trade mark have been published under rule 25.

(2) Any person claiming to be affected by the proposed amendment may, within 3 months after the date of publication of the particulars, file a notice of objection on the specified form.

(3) The notice of objection shall include a statement of the grounds of objection, which statement shall, in particular, explain how the objector would be affected by the amendment if it were made and why in the objector's opinion it would be contrary to section 46 of the Ordinance to make the amendment.

(4) The objector shall, at the same time as he files the notice of objection, send a copy of it to the applicant.

Division

Section: 27 Request to divide application

(s. 51(1)(a) of the Ordinance)(Form T3)

(Fee No. 6)

(1) At any time after an application for registration of a trade mark is assigned a filing date under section 39 of the Ordinance and before the registration of the trade mark, the applicant may file a request on the specified form to divide the application (the "original application") into 2 or more separate applications (the "divisional applications"), indicating for each divisional application the specification of goods or services to be covered by that application.

(2) Each divisional application must claim the same protection under the Ordinance as the original application (for example, for protection as a defensive trade mark).

(3) On the division of the original application, each divisional application shall be treated as a separate application for registration with the same filing date as the original application.

(4) On the division of the original application, any notice of opposition filed under rule 16 or notice of objection filed under rule 26 in relation to the original application shall-

(a) where the notice of opposition or notice of objection relates only to some of the goods or services covered by the original application, be treated as having been filed in relation to each divisional application the specification of which covers any of those goods or services; and

(b) in any other case, be treated as having been filed in relation to each of the divisional applications, and the proceedings on the opposition or objection shall continue accordingly.

(5) On the division of an original application in relation to which a notice or request relating to the grant of a licence or a security interest or any right in or under the original application has been filed under rule 62 or 64, the notice or request shall-

(a) where the notice or request relates only to some of the goods or services covered by the original application, be treated as having been filed in relation to each divisional application the specification of which covers any of those goods or services; and

(b) in any other case, be treated as having been filed in relation to each of the divisional applications.

Merger

Section: 28 Request to merge applications

(s. 51(1)(b) of the Ordinance)(Form T4)

(1) An applicant who has filed separate applications for registration of a trade mark may, at any time before particulars of any of those applications have been published under rule 15, file a

request on the specified form to merge those applications into a single application.

(2) The Registrar shall merge the applications that are the subject of the request into a single application if he is satisfied that all of the applications-

(a) are in respect of the same trade mark;

(b) claim the same protection under the Ordinance (for example, for protection as a collective mark);

(c) bear the same filing date; and

(d) are, at the time of the request, in the name of the same person.

PART 5

REGISTRATION

Section: 29 Registration

(s. 47(1) of the Ordinance)

(1) The Registrar shall register a trade mark under section 47(1) of the Ordinance by entering a representation of the trade mark in the register together with the following particulars-

(a) the date of registration as determined in accordance with section 48 of the Ordinance, that is to say, the filing date of the application for registration;

(b) the actual date of registration, that is to say, the date of the entry in the register of the particulars required to be entered under this rule;

(c) the date of priority, if any, claimed under section 41 of the Ordinance;

(d) the name and address of the owner;

(e) the address for service of the owner;

(f) the classes and description of goods or services in the International Classification in respect of which the trade mark is registered;

(g) any disclaimer, limitation or condition to which the registration is subject;

(h) where the trade mark or any element of the trade mark consists of a 3-dimensional shape for which a claim has been made in accordance with rule 6(2), that fact;

(i) where the trade mark or any element or elements of the trade mark consists of a colour or colours for which a claim has been made in accordance with rule 6(3), that fact and the colour or colours so claimed;

(j) where the trade mark consists wholly or in part of a sound or smell, that fact;

(k) where the trade mark is a certification mark, a collective mark or a defensive trade mark, that fact;

(l) where the trade mark registration consists of a series of trade marks, that fact; and

(m) where the trade mark is registered under or by virtue of section 11(2), 12(8) or 13(1)(a) or (b) of the Ordinance, that fact.

(2) The Registrar may at any time enter in the register such other particulars in relation to the trade mark as he thinks fit.

Section: 30 Publication of registration

(s. 47(3) of the Ordinance)

On the registration of a trade mark, the Registrar shall publish a notice of the registration in the official journal, which notice shall specify the date of registration.

Section: 31 Reminder of renewal of registration

(s. 50(2) of the Ordinance)

(1) Subject to subrule (2), at any time not earlier than 6 months nor later than 1 month before the date of expiry of the registration of a trade mark, the Registrar shall (except where renewal has already been effected) send to the owner of the trade mark a notice informing him of the date of expiry and that the registration may be renewed in the manner described in rule 32.

(2) If it appears to the Registrar that a trade mark may be registered under section 47(1) of

the Ordinance at any time within 6 months before, or at any time after, the date on which renewal would be due (by reason of the filing date of the application for registration), the Registrar shall (except where renewal has already been effected), at any time but not later than 1 month after the actual date of registration, send to the owner of the trade mark a notice informing him of the date of expiry and that the registration may be renewed in the manner described in rule 33.

Section: 32 Renewal of registration

(s. 50(1), (3) & (7) of the Ordinance)

(Form T8)(Fee Nos. 7 & 8)

(1) Renewal of the registration of a trade mark shall be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal at any time within the 6-month period ending on the date of expiry of the registration.

(2) If a request for renewal is not filed, or the applicable fee for renewal is not paid, within the period specified in subrule (1), the Registrar shall publish a notice of that fact in the official journal.

(3) Renewal of the registration of a trade mark may also be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal and the applicable fee for late renewal within 6 months after the date of expiry of the registration.

(4) Where the Registrar renews the registration of a trade mark under this rule, he shall publish a notice of the renewal and of the date of the renewal in the official journal.

(5) This rule does not apply to the renewal of the registration of a trade mark to which rule 33 applies.

Section: 33 Renewal of registration: special case

(s. 50(1), (3) & (7) of the Ordinance)

(Form T8)(Fee No. 9)

(1) This rule applies to the renewal of the registration of a trade mark registered on or after the commencement date the registration of which will expire at any time before, or within 6 months after, the actual date of registration (by reason of the filing date of application for registration).

(2) Renewal of the registration of the trade mark shall be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal not later than 6 months after the actual date of registration.

(3) Where the Registrar renews the registration of a trade mark under this rule, he shall publish a notice of the renewal and of the date of the renewal in the official journal.

Section: 34 Removal of registration

(s. 50(5) of the Ordinance)

(1) If, in the case of the registration of a trade mark to which rule 32 applies, the renewal of the registration has not been effected within 6 months after the date of expiry of the registration, the Registrar shall remove the trade mark from the register.

(2) If, in the case of the registration of a trade mark to which rule 33 applies, the renewal of the registration has not been effected within 6 months after the actual date of registration, the Registrar shall remove the trade mark from the register.

(3) Where the Registrar removes a trade mark from the register under this rule, he shall publish a notice of the removal and of the date of the removal in the official journal.

Section: 35 Restoration of registration

(s. 50(6) & (7) of the Ordinance)

(Form T8)(Fee No. 10)

(1) Where the Registrar removes the registration of a trade mark from the register in accordance with rule 34, he may, on a request being filed on the specified form and payment of the applicable fee within 6 months after the date of the removal, restore the trade mark to the register

and renew its registration if, having regard to the circumstances of the failure to renew, he is satisfied that it is just to do so.

(2) Where the Registrar restores a trade mark to the register under this rule, he shall publish a notice of the restoration and of the date of the restoration in the official journal.

PART 6

PROCEEDINGS TO REVOKE, INVALIDATE, VARY OR

RECTIFY REGISTRATION

Procedure for revocation on grounds of non-use

Section: 36 Application for revocation

(s. 52(2)(a) of the Ordinance)(Form T6)

(Fee No. 11)

(1) An application for the revocation of the registration of a trade mark on the grounds mentioned in section 52(2)(a) of the Ordinance shall be filed on the specified form.

(2) The application shall be accompanied by a statement of the grounds on which the application is made and evidence in support of the application.

(3) The applicant shall, at the same time as he files the application, send a copy of the application, statement of grounds and evidence to the owner of the registered trade mark in question.

Section: 37 Counter-statement

(Form T7)

(1) Within 6 months after the date of receipt of the copy of the application, statement of

grounds and evidence, the owner shall file a counter-statement on the specified form setting out-

(a) the grounds on which he relies in support of his registration;

(b) the facts alleged in the application that he admits;

(c) the facts alleged in the application that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and

(d) the facts alleged in the application that he is unable to admit or deny.

(2) The counter-statement shall be accompanied by-

(a) evidence of the use made of the trade mark; or

(b) a statement giving reasons for non-use.

(3) The owner shall, at the same time as he files the counter-statement, send a copy of the counter-statement and a copy of the evidence of use or statement giving reasons for non-use to the applicant.

(4) If the owner does not file a counter-statement and either evidence of use or a statement giving reasons for non-use within the period specified in subrule (1), the Registrar may treat the application for revocation as being unopposed by the owner. (L.N. 97 of 2003)

Section: 38 Additional evidence

(1) The applicant may file additional evidence in support of his application-

(a) within 6 months after the date of receipt of the copy of the counter-statement and the copy of the evidence of use or statement giving reasons for non-use; or

(b) if the owner does not file a counter-statement and evidence of use or a statement giving reasons for non-use within the period specified in rule 37(1), within 9 months after the date of filing of the application.

(2) If the applicant does not intend to file additional evidence, he shall file a statement to that effect within the period specified in subrule (1)(a) or (b), whichever is applicable.

(3) The applicant shall, at the same time as he files the additional evidence or statement under subrule (1) or (2), send a copy of it to the owner.

(4) Except with the leave of the Registrar, no further evidence may be filed by either party.

Section: 39 Fixing of date for hearing

After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.

Procedure for revocation on grounds other than non-use

Section: 40 Application for revocation

(ss. 52(2)(b), (c) & (d) & 60(6), s. 13 of Sch. 3

& s. 15 of Sch. 4 to the Ordinance)(Form T6)

(Fee No. 12)

(1) An application for-

(a) the revocation of the registration of a trade mark on the grounds mentioned in section 52(2)(b), (c) or (d) of the Ordinance;

(b) the revocation of the registration of a trade mark as a defensive trade mark on the grounds mentioned in section 60(6) of the Ordinance;

(c) the revocation of the registration of a collective mark on the grounds mentioned in section 13 of Schedule 3 to the Ordinance; or

(d) the revocation of the registration of a certification mark on the grounds mentioned in section 15 of Schedule 4 to the Ordinance, shall be filed on the specified form.

(2) The application shall be accompanied by a statement of the grounds on which the application is made.

(3) The applicant shall, at the same time as he files the application, send a copy of the application and statement of grounds to the owner of the registered trade mark, defensive trade mark, collective mark or certification mark in question.

Section: 41 Counter-statement

(Form T7)

(1) Within 3 months after the date of receipt of the copy of the application and statement of grounds, the owner shall file a counter-statement on the specified form setting out-

(a) the grounds on which he relies in support of his registration;

(b) the facts alleged in the application that he admits;

(c) the facts alleged in the application that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and

(d) the facts alleged in the application that he is unable to admit or deny.

(2) The owner shall, at the same time as he files the counter-statement, send a copy of it to the applicant.

(3) If the owner does not file a counter-statement within the period specified in subrule (1), the Registrar may treat the application for revocation as being unopposed by the owner. (L.N. 97 of 2003)

Section: 42 Evidence in support of application

(1) The applicant shall file evidence in support of his application-

(a) within 6 months after the date of receipt of the copy of the counter-statement; or

(b) if the owner does not file a counter-statement within the period specified in rule 41(1), within 9 months after the date of filing of the application.

(2) If the applicant files evidence under subrule (1), he shall at the same time send a copy

of it to the owner.

(3) If the applicant does not file evidence within the period specified in subrule (1)(a) or (b),

he shall be deemed to have withdrawn his application.

Section: 43 Evidence in support of counter-statement

(1) If the owner files a counter-statement within the period specified in rule 41(1) and the applicant files evidence within the period specified in rule 42(1), then within 6 months after the date of receipt of the copy of the applicant's evidence the owner shall file-

(a) evidence in support of the counter-statement; or

(b) a statement to the effect that he does not intend to file evidence.

(2) The owner shall, at the same time as he files the evidence or statement under subrule (1), send a copy of it to the applicant.

Section: 44 Evidence in reply

(1) If the owner files evidence within the period specified in rule 43(1), the applicant may, within 6 months after the date of receipt of the copy of the owner's evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the owner's evidence.

(2) If the applicant files additional evidence, he shall at the same time send a copy of it to the owner.

(3) Except with the leave of the Registrar, no further evidence may be filed by either party.

Section: 45 Fixing of date for hearing

After the completion of the filing of evidence, the Registrar shall fix a date, time and place

for the hearing and shall notify the parties in writing accordingly.

Procedure for declaration of invalidity

Section: 46 Application for declaration of invalidity

(s. 53, s. 14 of Sch. 3 & s. 16 of Sch. 4 to the

Ordinance)(Form T6)(Fee No. 13)

(1) An application for-

(a) a declaration of invalidity of the registration of a trade mark on the grounds mentioned in section 53 of the Ordinance;

(b) a declaration of invalidity of the registration of a collective mark on the grounds mentioned in section 14 of Schedule 3 to the Ordinance; or

(c) a declaration of invalidity of the registration of a certification mark on the grounds mentioned in section 16 of Schedule 4 to the Ordinance, shall be filed on the specified form.

(2) The application shall be accompanied by a statement of the grounds on which the application is made.

(3) The applicant shall, at the same time as he files the application, send a copy of the application and statement of grounds to the owner of the registered trade mark, collective mark or certification mark in question.

Section: 47 Subsequent procedure

Rules 41, 42, 43, 44 and 45 shall apply with necessary modifications to proceedings with respect to an application filed under rule 46. (L.N. 97 of 2003)

Procedure for variation and rectification

Section: 48 Application for variation or rectification

(ss. 54 & 57 of the Ordinance)(Form T6)

(Fee Nos. 14 & 15)

(1) An application for-

(a) the variation of the registration of a trade mark under section 54 of the Ordinance; or

(b) the rectification of an error or omission in the register under section 57 of the Ordinance,

shall be filed on the specified form.

(2) The application shall be accompanied by-

(a) a statement of the grounds on which the application is made; and

(b) evidence in support of the application.

Section: 49 Procedure where application is made by the owner of the trade mark

(1) This rule applies where an application filed under rule 48 is made by the owner of the

registered trade mark in question.

(2) Where the Registrar proposes to allow the application, he shall publish a notice in the

official journal, which notice shall include-

(a) in the case of an application for the variation of the registration of a trade mark, a description of the conditions under which the trade mark is registered and of the variation to be made; and

(b) in the case of an application for the rectification of an error or omission in the register, such matters as the Registrar considers necessary to identify the error or omission in question and the rectification to be made.

(3) Part 3 shall apply with necessary modifications to proceedings under this rule.

Section: 50 Procedure where application is made by a person other than the owner

(Form T7)

(1) This rule applies where an application filed under rule 48 is made by a person other

than the owner of the registered trade mark in question.

(2) The applicant shall, at the same time as he files the application, send a copy of the

application, statement of grounds and evidence filed under rule 48 to the owner.

(3) Within 6 months after the date of receipt of the copy of the application, statement of

grounds and evidence, the owner shall file a counter-statement on the specified form setting out-

(a) the grounds on which he relies in support of his registration;

(b) the facts alleged in the application or in the applicant's evidence that he admits;

(c) the facts alleged in the application or in the applicant's evidence that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and

(d) the facts alleged in the application or in the applicant's evidence that he is unable to admit or deny.

(4) The counter-statement shall be accompanied by-

(a) evidence in support of the counter-statement; or

(b) if the owner does not intend to file evidence, a statement to that effect.

(5) The owner shall, at the same time as he files the counter-statement, send a copy of the counter-statement and a copy of the evidence or statement filed under subrule (4) to the applicant.

(6) If the owner does not file a counter-statement within the period specified in subrule (3), the Registrar may treat the application for variation or rectification as being unopposed by the owner. (L.N. 97 of 2003)

(7) If the owner files evidence within the period specified in subrule (3), the applicant may, within 6 months after the date of receipt of the copy of the owner's evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the owner's evidence.

(8) If the applicant files additional evidence, he shall at the same time send a copy of it to the owner.

(9) Except with the leave of the Registrar, no further evidence may be filed by either party.

(10) After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.

(11) If the Registrar allows the variation or rectification, he shall publish a notice in the official journal containing the following information-

(a) in the case of an application for the variation of the registration of a trade mark, a description of the variation made; and

(b) in the case of an application for the rectification of an error or omission in the register, such matters as the Registrar considers necessary to identify the rectification made.

Interventions

Section: 51 Application for leave to intervene

(Form T6)(Fee No. 16)

(1) Any person claiming to have an interest in any proceedings under this Part may file an application on the specified form for leave to intervene, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms (including any undertaking as to costs) as he thinks fit.

(2) Any person applying for leave to intervene under this rule shall send a copy of the application to each party to the proceedings.

(3) Any person granted leave to intervene shall, subject to any terms imposed by the Registrar, be treated as a party to the proceedings.

PART 7

OTHER PROCEEDINGS AFFECTING REGISTRATION

Disclaimers, limitations and conditions

Section: 52 Addition of disclaimer, limitation or condition

(s. 15 of the Ordinance)

(1) The owner of a registered trade mark may by filing a notice in writing-

(a) disclaim any right to the exclusive use of any specified element of the trade mark; or

(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation or condition.

(2) On receipt of a notice under subrule (1), the Registrar shall publish a notice of the disclaimer, limitation or condition in the official journal.

(3) The Registrar shall enter in the register the relevant particulars of any disclaimer, limitation or condition notified to him under this rule.

Merger

Section: 53 Merger of separate registrations

(s. 51(1)(c) of the Ordinance)(Form T4)

(1) The owner of 2 or more registrations of a trade mark may file a request on the specified

form to merge them into a single registration.

(2) The Registrar shall merge the registrations that are the subject of the request into a

single registration if he is satisfied that all of the registrations-

(a) are in respect of the same trade mark; and

(b) provide the same protection under the Ordinance (for example, for protection as a certification mark).

(3) A merged registration shall be subject to the same disclaimers, limitations and conditions to which each of the original registrations was subject.

(4) Where 2 or more registrations are merged, the Registrar shall enter in the register in relation to the merged registration the same particulars as were registered in relation to each of the original registrations.

(5) Where the separate registrations bear different dates of registration, the date of registration of the merged registration shall be the latest of those dates.

Alteration

Section: 54 Alteration of registered trade mark

(s. 55 of the Ordinance)(Forms T5B & T5S)

(1) A request under section 55 of the Ordinance to alter a registered trade mark shall be filed on the specified form.

(2) The Registrar may at any time require the owner of the registered trade mark to file reasons for and evidence in support of the request.

(3) Where the Registrar proposes to allow the alteration, he shall publish a notice of the alteration in the official journal, which notice shall include a representation of the trade mark as proposed to be altered in the register.

(4) Subject to rule 55, where a request is filed under this rule, the Registrar may-

(a) allow the alteration (if he is satisfied that it complies with section 55 of the Ordinance);

(b) allow the alteration in part (if he is satisfied that only a part of the alteration complies with section 55 of the Ordinance); or

(c) disallow the alteration (if he is satisfied that it does not comply with section 55 of the Ordinance).

(5) Where the Registrar allows the alteration in whole or in part, he shall make the appropriate entry in the register.

Section: 55 Notice of objection

(s. 55(3)(c) of the Ordinance)(Form T6)

(Fee No. 17)

(1) Any person claiming to be affected by the proposed alteration may, within 3 months after the date of publication of the notice under rule 54(3), file a notice of objection on the specified form.

(2) The notice of objection shall include a statement of the grounds of objection, which statement shall, in particular, explain how the objector would be affected by the alteration if it were made and why in the objector's opinion it would be contrary to section 55 of the Ordinance to allow the alteration.

(3) The objector shall, at the same time as he files the notice of objection, send a copy of it to the owner of the registered trade mark in question.

Surrender

Section: 56 Surrender of registered trade mark

(s. 56 of the Ordinance)(Form T9)

(1) The owner of a registered trade mark may surrender the registration of the trade mark by filing a notice of surrender on the specified form.

(2) The notice shall-

(a) state whether the registration is surrendered in respect of all of the goods or services for which the trade mark is registered or in respect of only certain of those goods or services;

(b) where the registration is surrendered in respect of only certain goods or services, specify the goods or services concerned by reference to their class or classes in the International Classification;

(c) give the name and address of each other person having a registered interest or any other right in the trade mark; and

(d) certify, in respect of every such person, that the person-

(i) has been sent not less than 3 months' notice of the owner's intention to surrender the registration; or

(ii) is not affected or, if affected, consents to the surrender.

Section: 57 Effect and publication of surrender

(s. 56 of the Ordinance)

(1) A surrender of the registration of a trade mark has the same effect in respect of the goods or services for which the registration is surrendered as the registration of the trade mark ceasing to have effect in respect of those goods or services.

(2) A surrender takes effect on the date of receipt by the Registrar of a notice that complies with rule 56.

(3) The Registrar shall, on a surrender taking effect, make the appropriate entry in the register and publish a notice of the surrender in the official journal.

Change of classification of goods or services

Section: 58 Registrar may amend entries in the register

(s. 58(1) & (2) of the Ordinance)

Subject to rules 59, 60 and 61 and section 58(5) of the Ordinance (which limits the Registrar's power to amend entries in the register), the Registrar may in order to-

(a) reclassify the specification of a registered trade mark that is not founded on the classifications of the International Classification to one that is founded on such classifications; or

(b) implement any amendment to, or substitution for, the classifications of the International Classification,

make such amendments to the entries in the register as he considers necessary for the purposes of reclassifying the specification of any registered trade mark.

Section: 59 Notice to owner of trade mark

(s. 58(3)(a) & (c) of the Ordnance)

(1) The Registrar shall, before he amends any entry in the register under rule 58, send to the owner of the registered trade mark in question a notice informing him of the proposals for amendment.

(2) The notice shall include a statement informing the owner that-

(a) he may file written objections to the proposals, within 3 months after the date of the notice, stating the grounds of his objections; and

(b) if no written objections are filed within the period specified in paragraph (a), the Registrar will publish the proposals in the official journal and the owner will not be entitled to make any objections to the proposals upon such publication.

Section: 60 Publication of proposals

(s. 58(3)(b) of the Ordinance)

(1) If the owner of a registered trade mark to whom a notice is sent under rule 59 does not file written objections within the period specified in rule 59(2)(a), or at any time before the expiry of that period files written notice of his intention not to make any objections, the Registrar shall as soon as practicable after the expiry of that period or receipt of that notice, as the case may be, publish the proposals for amendment in the official journal.

(2) If the owner files written objections within the period specified in rule 59(2)(a), the Registrar shall consider the objections and shall either abandon the proposals (if he is satisfied that the objections have merit) or, where he has amended the proposals, publish the proposals, as amended, in the official journal.

Section: 61 Notice of opposition

(s. 58(3)(d) of the Ordinance)(Form T6)

(Fee No. 18)

(1) Where the Registrar publishes proposals for amendment under rule 60(1) or (2), any person claiming to be affected may, within 3 months after the date of publication of the proposals, file a notice of opposition on the specified form.

(2) The notice of opposition shall include a statement of the grounds of opposition, which statement shall, in particular, explain how the opponent would be affected by the amendments if they were made and why in the opponent's opinion it would be contrary to section 58(5) of the Ordinance to make the amendments.

(3) The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered trade mark in question.

(4) The Registrar may require or admit evidence directed to the questions in issue.

(5) If no notice of opposition is filed within the period specified in subrule (1), or where any opposition has been determined against the opponent, the Registrar shall make the amendments as proposed and shall enter in the register the date on which they were made.

PART 8

REGISTRABLE TRANSACTIONS

Section: 62 Application or notice to register registrable transaction

(ss. 29 & 31(3) of the Ordinance)(Forms T10 & T11)(Fee No. 19)

(1) An application under section 29 of the Ordinance to register particulars of a registrable transaction relating to a registered trade mark, or a notice under sections 29 and 31(3) of the Ordinance to register particulars of a registrable transaction relating to an application for registration of a trade mark, shall be filed on the specified form.

(2) Where the registrable transaction is an assignment, the application or notice shall either be signed by or on behalf of the parties to the assignment or be accompanied by such documentary evidence as suffices to establish the assignment.

(3) Where the registrable transaction relates to the grant of a licence or security interest, the application or notice shall either be signed by or on behalf of the grantor or be accompanied by such documentary evidence as suffices to establish the transaction.

(4) Where the registrable transaction relates to the making by personal representatives of an assent, the application or notice shall either be signed by or on behalf of both the personal representative and the beneficiary or be accompanied by such documentary evidence as suffices to establish the transaction.

(5) Where the registrable transaction relates to an order of a court or an authority recognized by the Registrar as a competent authority, the application or notice shall be accompanied by such documentary evidence as suffices to establish the transaction.

Section: 63 Entry in the register of particulars of registrable transaction

(ss. 29 & 31(3) of the Ordinance)

(1) The particulars that shall be entered in the register in connection with a registrable transaction relating to a registered trade mark or an application for registration of a trade mark are-

(a) in the case of an assignment of the trade mark or application-

(i) the name and address of the assignee; and

(ii) the date of the assignment;

(b) in the case of an assignment of any right in the trade mark or application-

(i) the name and address of the assignee;

(ii) the date of the assignment; and

(iii) a description of the right assigned;

(c) in the case of a grant of a licence under the trade mark or application-

(i) the name and address of the licensee;

(ii) where the licence is an exclusive licence, that fact;

(iii) where the licence is limited, a description of the limitation; and

(iv) where the licence is for a fixed period or the duration of the licence is ascertainable as a fixed period, the period of the licence;

(d) in the case of the grant of any security interest over the trade mark or application, or over any right in or under the trade mark or application-

(i) the name and address of the grantee;

(ii) the nature of the interest (whether fixed or floating); and

(iii) the extent of the security and the right in or under the trade mark or application that is secured;

(e) in the case of the making by personal representatives of an assent in relation to the trade mark or application, or in relation to any right in or under the trade mark or application-

(i) the name and address of the person in whom the trade mark or application, or any right in or under it, vests by virtue of the assent; and

(ii) the date of the assent; and

(f) in the case of an order of a court or other competent authority transferring the trade mark or application, or transferring any right in or under the trade mark or application-

(i) the name and address of the transferee;

(ii) the name of the court or other competent authority;

(iii) the date of the order; and

(iv) where the transfer is in respect of a right in the trade mark or application, a description of the right transferred.

(2) In each case, there shall be entered in the register the date on which the entry is made.

Section: 64 Request to amend or remove registered particulars

(ss. 29(5) &(6) & 31(3) of the Ordinance)

(Forms T10 & T11)

(1) The Registrar may, on the filing of a request made on the specified form, amend or remove any registered particulars relating to-

(a) a licence under a registered trade mark or application for registration of a trade mark;

(b) a security interest over a registered trade mark or application for registration of a trade mark; or

(c) a security interest over any right in or under a registered trade mark or application for registration of a trade mark.

(2) Where the request relates to the alteration of the terms of a licence or security interest, it shall either be signed by or on behalf of both the grantor and grantee of the licence or security interest or be accompanied by such documentary evidence as suffices to establish the alteration.

(3) Where the request relates to the removal of registered particulars relating to a licence or security interest, it shall either be signed by or on behalf of the grantee of the licence or security interest or be accompanied by such documentary evidence as suffices to establish that the registered particulars have ceased to have effect.

(4) In the case of an alteration of the terms of a licence or security interest, there shall be entered in the register the date on which the entry relating to the alteration is made.

PART 9

CORRECTION OF THE REGISTER

Section: 65 Request to change name or address, etc., recorded in the register

(s. 57(5) of the Ordinance)(Form T5)

(1) The Registrar may, on the filing of a request made on the specified form by-

(a) the owner of a registered trade mark;

(b) a licensee of a registered trade mark; or

(c) any person having an interest in or charge on a registered trade mark the particulars of which have been registered under rule 63 or 64, enter any change in his name or address, or in any other particulars identifying such person, as recorded in the register.

(2) The Registrar may at any time require a person making a request under this rule to file reasons for and evidence in support of the request.

Section: 66 Correction of errors or omissions in the register

(s. 57(6) of the Ordinance)

(1) Where the Registrar proposes to correct any error or omission in the register under section 57(6) of the Ordinance (which authorizes the correction of errors or omissions attributable to the Registrar or the Registry), he shall send a notice of the proposed correction to any person who appears to him to be concerned.

(2) Any person to whom a notice is sent under subrule (1) may, within 3 months after the date of the notice, file written objections to the proposed correction, stating the grounds of his objections.

(3) Where any person to whom a notice is sent under subrule (1) files written objections within the period specified in subrule (2), the Registrar shall consider the objections and shall either abandon the proposal (if he is satisfied that the objections have merit) or correct the register as proposed (if he is satisfied that the objections are without merit).

(4) If no written objections are filed within the period specified in subrule (2), the Registrar may proceed to make the proposed correction in the register.

Section: 67 Removal of matter from the register

(s. 57(7) of the Ordinance)(Form T6)

(Fee No. 20)

(1) Where the Registrar proposes to remove any matter from the register under section 57(7) of the Ordinance (which authorizes the removal of matter that appears to the Registrar to have ceased to have effect), he shall, before he removes that matter from the register-

(a) where he considers it appropriate to do so, publish a notice of the proposal for removal in the official journal; and

(b) where any person appears to him as being likely to be affected by the proposed removal, send a notice of the proposal for removal to that person.

(2) Where the Registrar publishes a notice under subrule (1)(a), any person claiming to be affected by the proposed removal may, within 3 months after the date of publication of the notice, file a notice of opposition on the specified form.

(3) The notice of opposition shall include a statement of the grounds of opposition.

(4) The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered trade mark in question.

(5) Where the Registrar sends any person a notice under subrule (1)(b), that person may, within 3 months after the date of the notice-

(a) file written objections to the proposed removal; or

(b) file a request for a hearing.

(6) If the Registrar is satisfied, after considering any opposition and objections, that the matter has not ceased to have effect, he shall not remove it from the register.

(7) If no notice of opposition is filed within the period specified in subrule (2) and no written objections are filed within the period specified in subrule (5), or where any opposition or objections have been determined against the opponent or objector, the Registrar may, if he is satisfied that the matter or any part of it has ceased to have effect, proceed to remove the matter or that part of it from the register.

PART 10

INSPECTION OF REGISTER, INSPECTION OF DOCUMENTS AND

PROVISION OF INFORMATION

Section: 68 Inspection of register

(s. 68 of the Ordinance)

The register shall be open for public inspection at the Registry on the business days and during the normal business hours of the Registry.

Section: 69 Inspection of documents

(1) This rule applies to any of the following documents kept at the Registry-

(a) a notice of opposition to the registration of a trade mark filed under rule 16;

(b) a counter-statement filed under rule 17;

(c) a notice of objection to the amendment of an application for registration of a trade mark filed under rule 26;

(d) an application for the revocation of the registration of a trade mark filed under rule 36;

(e) a counter-statement filed under rule 37;

(f) an application for the revocation of the registration of a trade mark, defensive trade mark, collective mark or certification mark filed under rule 40;

(g) a counter-statement filed under rule 41;

(h) an application for a declaration of invalidity of the registration of a trade mark, collective mark or certification mark filed under rule 46;

(i) an application for the variation of the registration of a trade mark filed under rule 48(1)(a);

(j) an application for the rectification of an error or omission in the register filed under rule 48(1)(b);

(k) a counter-statement filed under rule 50(3);

(l) an application for leave to intervene filed under rule 51;

(m) a request to alter a registered trade mark filed under rule 54;

(n) a notice of objection to the alteration of the registration of a trade mark filed under rule 55;

(o) a notice of surrender filed under rule 56;

(p) a notice of opposition to the amendment of the specification of a registered trade mark filed under rule 61;

(q) an application or notice to register particulars of a registrable transaction relating to a registered trade mark or an application for registration of a trade mark filed under rule 62(1);

(r) any documentary evidence filed under rule 62(2), (3), (4) or (5);

(s) a request to amend or remove registered particulars relating to a licence or security interest filed under rule 64(1);

(t) any documentary evidence filed under rule 64(2) or (3);

(u) a notice of opposition to the removal of matter from the register filed under rule 67(2);

(v) any regulations governing the use of a collective mark filed under rule 100;

(w) any regulations governing the use of a certification mark filed under rule 101;

(x) any amendment to the regulations governing the use of a collective mark or certification mark filed under rule 102(1);

(y) a notice of opposition to the amendment of the regulations governing the use of a registered collective mark or certification mark filed under rule 102(3); and

(z) a notice of opposition or counter-statement filed, whether before or after the commencement date, in relation to an application for registration of a mark under the repealed Ordinance that is pending on the commencement date.

(2) The Registrar shall, on the request of any person, permit that person to inspect any document to which this rule applies and in respect of which no particulars have been recorded in the register.

(3) The Registrar may at his discretion, on the request of any person, permit that person to inspect any document to which this rule applies and in respect of which particulars have been recorded in the register.

(4) Notwithstanding subrules (2) and (3), the Registrar shall not be obliged to permit the inspection of any document under this rule until he has completed all procedures that he is required or authorized to carry out under the Ordinance or these Rules in connection with that document.

(5) Except in relation to the documents referred to in subrule (1)(z), nothing in this rule shall be construed as imposing on the Registrar any duty of making available for inspection-

(a) any document filed at or sent to the Registry before the commencement date; or

(b) any document filed at or sent to the Registry on or after the commencement date that relates to an application for registration of a mark under the old law.

Section: 70 Supply of copies of entries, etc.

(ss. 69 & 79 of the Ordinance)(Form T14)

(Fee Nos. 21, 22 & 23)

(1) The Registrar may, on the filing of an application made on the specified form and payment of the applicable fee, supply the person making the application with, as the case may be-

(a) a certified or uncertified copy of an entry in the register;

(b) a certified or uncertified extract from the register; or

(c) a certified or uncertified copy of any application for registration of a trade mark filed under these Rules and kept by the Registry.

(2) The Registrar may, on the filing of an application made on the specified form and payment of the applicable fee, supply the person making the application with a certificate for the purposes of section 79(2) of the Ordinance (which provides that a certificate is prima facie evidence of the matters certified).

Section: 71 Supply of list of pending applications or registered trade marks

The Registrar may, on the filing of a request by any person, supply that person with a list of the numbers and the class or classes in the International Classification of-

(a) all applications made by any person identified in the request that are pending on the date of the request; or

(b) all registered trade marks that are owned by a registered owner identified in the request.

Section: 72 Official search of records for particular trade marks

(Forms T1 & T1S)(Fee No. 24)

(1) Any person may request the Registrar to cause a search to be made in respect of goods or services specified in the request and classified in any one or more classes of the International Classification to ascertain whether any trade mark is on record as at the date of the search (whether registered or pending registration) that resembles the trade mark in respect of which the request is made.

(2) A request under this rule shall be filed on the specified form and shall be accompanied by a representation of the trade mark in respect of which the request is made.

(3) On receipt of a request under this rule and payment of the applicable fee, the Registrar shall cause the search to be made and shall provide the results of the search to the person making the request.

Section: 73 Preliminary advice by the Registrar

(s. 72 of the Ordinance)(Forms T1 & T1S)

(Fee No. 25)

(1) Any person who proposes to apply for the registration of a trade mark may apply to the Registrar for advice as to whether the trade mark appears to the Registrar prima facie to be capable of distinguishing goods or services of one undertaking from those of other undertakings within the meaning of section 3(1) of the Ordinance.

(2) An application under this rule shall be filed on the specified form, shall be accompanied by a representation of the trade mark in question and shall specify the class or classes of goods or services of the International Classification in respect of which it is proposed to be registered.

(3) For the purposes of section 72(3) of the Ordinance (which deals with the repayment of fees), any applicant for registration of a trade mark to whom the Registrar has given notice of objection under that section and who wishes to be repaid the fees paid for the filing of the application for registration must file a notice of withdrawal in accordance with rule 22 within 6 months after the date of the Registrar's notice of objection; otherwise the fees are not repayable.

PART 11

PROCEEDINGS BEFORE THE REGISTRAR

Hearings

Section: 74 Hearings before the Registrar

(s. 70 of the Ordinance) (Form T12) (Fee No. 26)

(1) This rule applies where the Registrar is required by section 70 of the Ordinance to give a party to proceedings before him an opportunity to be heard.

(2) The Registrar shall send a notice to the party informing him of the provisions of section 70 of the Ordinance and that if he wishes to have a hearing, he must file a request for a hearing within 1 month after the date of the notice.

(3) The Registrar shall, on the filing of a request for a hearing within the period specified in subrule (2) or on the filing of a request for a hearing in accordance with rule 13(5)- (L.N. 97 of 2003)

(a) fix a date, time and place for the hearing; and

(b) send a notice of the date, time and place fixed for the hearing to each party to the proceedings.

(4) The Registrar may in any other case, on his own initiative-

(a) fix a date, time and place for a hearing; and

(b) send a notice of the date, time and place fixed for the hearing to each party to the proceedings.

(5) Any party to whom a notice is sent under subrule (3) or (4) and who intends to appear at the hearing shall, within 14 days after the date of the notice, file notice of his intention on the specified form, and any party who fails to do so may be treated as not intending to appear at the hearing, and the Registrar may act accordingly.

(6) A notice sent to any party under rule 21, 39, 45 or 50(10) shall be treated as having been sent to that party in compliance with subrule (4), and subrule (5) shall apply accordingly.

(L.N. 97 of 2003)

Section: 75 Registrar not required to hold hearings in certain cases

The Registrar may decide a matter without a hearing if-

(a) the Registrar reasonably believes that no party wishes to be heard; or

(b) at least one of the following circumstances applies in relation to each party notified of the hearing in accordance with these Rules-

(i) the party has not indicated to the Registrar that he intends to appear at the hearing;

(ii) the party has informed the Registrar that he does not intend to appear at the hearing; or

(iii) the party does not attend the hearing.

Section: 76 Conduct of hearings

(1) A party, or his representative, as the case may be, may attend a hearing in person or by such means as the Registrar allows.

(2) A party may make representations in writing before or during a hearing.

(3) The Registrar may adjourn a hearing by notifying each party to the hearing accordingly.

(4) Subject to these Rules, the Registrar may give any direction that is reasonably necessary for the conduct of the hearing.

Section: 77 Hearings to be public

The hearing before the Registrar of any dispute between 2 or more parties relating to any matter in connection with a registered trade mark or an application for registration of a trade mark shall be held in public unless the Registrar, for any of the reasons stated in Article 10 of the Hong Kong Bill of Rights set out in Part II of the Hong Kong Bill of Rights Ordinance (Cap 383), otherwise directs.

Section: 78 Language of hearings

(1) Any party in a hearing before the Registrar, or any witness or expert called to give evidence by such party, may use a language other than the language of the proceedings on condition that, at least 10 days before the date fixed for the hearing, the party gives to the Registrar and to the other parties written notice of his intention to use, or to call a witness or expert who intends to use, a language other than the language of the proceedings.

(2) The Registrar may require a party who gives notice under subrule (1) to make provision for interpretation into the language of the proceedings and may give directions as to who should bear the costs of interpretation.

Evidence

Section: 79 Evidence in proceedings before the Registrar

(1) Where under the Ordinance or these Rules evidence may be admitted by the Registrar in any proceedings before him, the evidence shall be filed by way of a statutory declaration or affidavit.

(2) The Registrar may in any particular case take oral evidence in addition to any evidence filed by way of a statutory declaration or affidavit.

(3) The Registrar may allow any witness to be cross-examined on his statutory declaration, affidavit or oral evidence.

Section: 80 Statutory declarations and affidavits

(1) For the purposes of any proceedings before the Registrar, a statutory declaration or affidavit may be made and subscribed as follows-

(a) in Hong Kong, before any commissioner, notary or other person authorized by the law of Hong Kong to administer an oath for the purpose of any legal proceeding; and

(b) in any place outside Hong Kong, before any court, judge, justice of the peace, notary, notary public, consul or other person authorized by law to administer an oath or to exercise notarial functions in that place for the purpose of any legal proceeding.

(2) A person signing a statutory declaration or affidavit shall state on it the capacity in which he makes the declaration or affidavit.

(3) Any document purporting to have affixed, impressed or subscribed to or on it the seal or signature of any person authorized by subrule (1) to take a statutory declaration or affidavit may be admitted by the Registrar without proof of the genuineness of the seal or signature, or of the official character of the person or his authority to take the declaration or affidavit.

Section: 81 Photographs of exhibits

(1) A party to any proceedings before the Registrar who files a statutory declaration or affidavit under these Rules may file a photograph or photographs of any exhibit to that statutory declaration or affidavit and may send a copy of the photograph or photographs to any other party to the proceedings to whom a copy of the declaration or affidavit must be sent, in lieu of filing the original of the exhibit or sending a copy of it to that other party.

(2) Photographs filed under subrule (1) must be of sufficient size and clarity to properly depict any details of the exhibit referred to in the statutory declaration or affidavit.

(3) A party who files a photograph under subrule (1) shall at the same time give a written undertaking to the Registrar that he will produce the original of the exhibit whenever required by the Registrar and will make it available for inspection by any other party to the proceedings.

(4) The original of any exhibit for which a photograph is filed under subrule (1) shall be produced at the hearing unless the Registrar otherwise directs.

Section: 82 Leave to file evidence

Where under any provision of these Rules evidence may be filed in any proceedings before the Registrar only with the leave of the Registrar, the Registrar may refuse such leave or grant leave on such terms as he thinks fit.

Substitution of parties

Section: 83 Application for leave to be substituted for party

(1) Where a party to any proceedings before the Registrar is a body corporate or other legal entity and the body corporate or legal entity has been wound-up, merged with another body corporate or legal entity or acquired by any person, any person claiming to have an interest in the proceedings may apply to the Registrar in writing for leave to be substituted for that party, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms as he thinks fit.

(2) Where a party to any proceedings before the Registrar assigns or otherwise disposes of any interest in a trade mark, application or other thing that is the subject matter of the proceedings, any person claiming to have an interest in the proceedings may apply to the Registrar in writing for leave to be substituted for that party, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms as he thinks fit.

(3) Any person granted leave under subrule (1) or (2) shall, subject to any terms imposed by the Registrar, be treated as a party to the proceedings before the Registrar.

Costs

Section: 84 Security for costs

(s. 87(3) of the Ordinance)

(1) If any person who neither resides nor carries on business in Hong Kong files-

(a) a notice of opposition to the registration of a trade mark under rule 16;

(b) a counter-statement under rule 17;

(c) a notice of objection to the amendment of an application for registration of a trade mark under rule 26;

(d) an application for the revocation of the registration of a trade mark under rule 36;

(e) an application for the revocation of the registration of a trade mark, defensive trade mark, collective mark or certification mark under rule 40;

(f) an application for a declaration of invalidity of the registration of a trade mark, collective mark or certification mark under rule 46;

(g) an application for the variation of the registration of a trade mark or for the rectification of an error or omission in the register under rule 48;

(h) an application for leave to intervene under rule 51;

(i) a notice of objection to the alteration of the registration of a trade mark under rule 55;

(j) an application for leave to be substituted for a party under rule 83; or

(k) a notice of opposition or counter-statement under section 15 of the repealed Ordinance in relation to an application for registration of a mark that is advertised under section 14 or 66 of the repealed Ordinance on or after the commencement date,

the Registrar may require that person to give security for the costs of the proceedings, in such form and in such amount as the Registrar considers appropriate.

(2) If the Registrar requires security to be given by any person and that person fails to give security as required, the Registrar may treat the notice of opposition, notice of objection, counterstatement or application in question as abandoned or withdrawn.

(3) The Registrar may at any stage in the proceedings require further security to be given at any time before giving his decision in the case.

(4) This rule is without prejudice to the Registrar's power under rule 51(1) to require an undertaking as to costs in relation to an application for leave to intervene.

Section: 85 Taxation of costs

(Fee No. 27)

(1) The Registrar shall have the power to tax any costs awarded by him in any proceedings before him.

(2) In the event of an opposition to the registration of a trade mark being uncontested by the applicant for registration, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.

Case management conference and pre-hearing review

Section: 86 Case management conference

(1) At any stage of any proceedings before him, the Registrar may direct that the parties to the proceedings attend a case management conference where they shall have an opportunity to be heard with regard to the future conduct of the proceedings, and in particular with regard to the proposed exercise of any of the Registrar's powers under these Rules.

(2) The Registrar shall give the parties at least 14 days' notice of the date, time and place of the case management conference.

Section: 87 Pre-hearing review

(1) Before hearing any party that desires to be heard in any proceedings before him, the Registrar may direct that the parties to the proceedings attend a pre-hearing review at which he may give such directions as to the conduct of the hearing as he may think fit.

(2) The Registrar shall give the parties at least 7 days' notice of the date, time and place of the pre-hearing review.

General

Section: 88 Directions on procedure

(1) The Registrar may, at the request of a party to any proceedings before him or on his own initiative, give a direction in relation to the procedure in those proceedings.

(2) A direction given under subrule (1) must not be inconsistent with these Rules.

(3) The Registrar shall not give a direction under subrule (1) unless-

(a) he is reasonably satisfied that the parties to the proceedings have been notified of the proposed direction;

(b) he has given the parties to the proceedings a reasonable opportunity to make representations concerning the proposed direction; and

(c) he is reasonably satisfied that the proposed direction is appropriate.

(4) For the purposes of subrule (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

Section: 89 Directions to file documents, information or evidence

At any stage of any proceedings before him, the Registrar may direct that such documents, information or evidence as he may reasonably require shall be filed within such period as he may specify.

Section: 90 Stay of proceedings

The Registrar may, where he considers it appropriate to do so, stay any proceedings before him involving 2 or more parties on such terms as he thinks fit, and he may do so either on his own initiative or on request of a party to those proceedings.

Section: 91 Decision of Registrar

(Form T12) (Fee No. 28)

(1) Where the Registrar has made a decision in any proceedings before him, he shall send a notice to each party to the proceedings informing him of the decision.

(2) Where a statement of the reasons for the decision is not included in the notice, any party may, within 1 month after the date of the notice, file a request on the specified form for a statement of the reasons for the decision, and on receipt of such a request and payment of the applicable fee, the Registrar shall send a statement of the reasons for the decision to each party to the proceedings.

(3) A party who files a request under this rule shall at the same time send a copy of the request to each other party to the proceedings.

(4) For the purpose of any appeal against the Registrar's decision, the decision shall be deemed to have been made on-

(a) the date on which the notice of decision is sent under subrule (1); or

(b) where a statement of reasons is sent under subrule (2), the date on which the statement of reasons is sent.

PART 12

AMENDMENT OF DOCUMENTS, RECTIFICATION OF IRREGULARITIES

AND EXTENSION OF TIME LIMITS

Section: 92 Amendment of documents

Subject to any provisions of the Ordinance or these Rules relating to the amendment of applications for registration of trade marks and other documents, any document filed with the Registrar may, if the Registrar thinks fit, be amended on such terms as he may direct.

Section: 93 Rectification of irregularities

(1) Subject to subrule (2), any irregularity in procedure in or before the Registry may be rectified on such terms as the Registrar may direct.

(2) No period of time may be extended under this rule.

Section: 94 Extension of time limits

(Form T13) (Fee No. 29)

(1) Subject to rule 95, the Registrar may, on a request being filed on the specified form by the party concerned, extend any period of time-

(a) prescribed by these Rules; or

(b) specified by the Registrar for doing any act or taking any proceedings, for such period and on such terms, if any, as he may direct.

(2) Where a request for an extension of time is filed under subrule (1) in relation to a period of time prescribed by rule 18, 19, 20, 38, 42, 43, 44, 50(7), 74 (other than rule 74(2)) or 91(2), or in relation to a period of time specified by the Registrar under rule 120(7), the party seeking the extension shall send a copy of the request to every other party to the proceedings.

(3) Where-

(a) the period within which any party to any proceedings before the Registrar may file evidence under these Rules is to begin on the expiry of any period during which any other party may file evidence; and

(b) the other party notifies the Registrar that he does not intend to file evidence, the Registrar may direct that the period within which the party mentioned in paragraph (a) may file evidence shall begin on such date as may be specified in the direction, and where he issues such a direction he shall notify each party to the proceedings of the relevant date.

(4) Where any person fails to comply with a time limit imposed by the Ordinance or these Rules and the Registrar is satisfied that the failure is attributable in whole or in part to an error or omission of the Registrar or the Registry, he may extend the period of time in question on such terms, if any, as he may direct.

(5) Where it appears to the Registrar that-

(a) in the absence of a direction under this subrule, a person is likely to fail to comply with a time limit imposed by the Ordinance or these Rules; and

(b) if the failure were to occur, it would be attributable in whole or in part to an error or omission of the Registrar or the Registry,

he may extend the period of time in question on such terms, if any, as he may direct.

(6) Where the Registrar grants an extension of time in opposition proceedings, he may thereafter, if he thinks fit, without hearing the party in whose favour the extension is granted, grant any reasonable extension of the time or period in which any other party is required to take any subsequent step.

(7) A period of time may be extended under this rule either before or after the period in question has expired.

Section: 95 Non-extendible time limits

(1) The periods of time specified in the following rules may not be extended under rule 94(1), namely-

(a) rule 11(2) (time for remedying deficiencies in an application for registration of a trade mark);

(b) rule 13(2) (time for filing representations or a request for amendment) (but see rule 13(3)); (L.N. 97 of 2003)

(c) rule 13(5) (time for filing representations, a request for amendment or a request for a hearing) (but see rule 13(6)); (L.N. 97 of 2003)

(d) rule 14 (prescribed period under section 42(3)(b) of the Ordinance);

(e) rule 16(1) (time for filing a notice of opposition) (but see rule 16(4)); (L.N. 97 of 2003)

(f) rule 17(1) (time for filing a counter-statement) (but see rule 17(3));

(g) rule 26(2) (time for filing a notice of objection);

(h) rule 32(1) and (3) (time for renewing registration);

(i) rule 33(2) (time for renewing registration);

(j) rule 35(1) (time for restoring registration);

(k) rule 37(1) (time for filing a counter-statement);

(l) rule 41(1) (time for filing a counter-statement);

(m) rule 50(3) (time for filing a counter-statement);

(n) rule 55(1) (time for filing a notice of objection);

(o) rule 61(1) (time for filing a notice of opposition);

(p) rule 67(2) (time for filing a notice of opposition);

(q) rule 73(3) (time for filing a notice of withdrawan( �

(r) rule 74(2) (time for filing a request for a hearing);

(s) rule 102(3) (time for filing a notice of opposition);

(t) rule 107(3) (time for filing an address for service);

(u) rule 121(1)(a) (time for filing a notice of opposition) (but see rule 121(2)); and (L.N. 97 of 2003)

(v) rule 121(1)(b) (time for filing a counter-statement) (but see rule 121(3)). (L.N. 97 of 2003)

(2) The period of time for filing anything required to be included with or to accompany any document referred to in subrule (1) or to be filed at the same time as that document may not be extended under rule 94(1).

(3) No period of time specified in rule 13(3) or (6), 16(4), 17(3) or 121(2) or (3) may be extended under rule 94(1). (L.N. 97 of 2003)

Section: 96 Extension of time limits in the case of an interruption in the

Registry's operations

(1) Where on any day there is an event or circumstances causing an interruption in the normal operation of the Registry, the Registrar may notify the day as being one on which there is an interruption in the operations of the Registry.

(2) Where any period of time specified in the Ordinance or these Rules, or as extended under these Rules, for the filing of any document or other thing with the Registrar expires on a day so notified, the period shall be extended to the first day next following (not being an excluded day) that is not so notified.

(3) Any notification given by the Registrar under this rule shall be posted in the Registry.

(4) In this rule, "excluded day" (□□□) means a day that is not a business day of the Registry.

PART 13

SERIES TRADE MARKS, DEFENSIVE TRADE MARKS,

COLLECTIVE MARKS AND CERTIFICATION MARKS

Section: 97 Application for registration of series of trade marks

(s. 51(1)(a) & (d) of the Ordinance)

(Forms T2, T2A, T2S, T3 & T3S) (Fee Nos. 30 & 31)

(1) The owner of a series consisting of not more than 4 trade marks may file an application on the specified form to register them as a series in a single registration.

(2) The application shall be accompanied by a representation of each trade mark claimed to be in the series.

(3) The Registrar shall accept an application filed under subrule (1) if he is satisfied that-

(a) the trade marks in respect of which the application is made constitute a series within the meaning of section 51(3) of the Ordinance;

(b) the series consists of not more than 4 trade marks; and

(c) the application satisfies the requirements for registration.

(4) At any time before registration, an applicant under subrule (1) may file a request on the specified form for a division of his application into separate applications in respect of one or more of the trade marks in the series.

(5) On receipt of a request under subrule (4) and payment of the applicable fee, the Registrar shall, if he is satisfied that the division conforms with rule 27(1) and (2), divide the application accordingly.

(6) Rule 27(3), (4) and (5) applies to the division of an application under this rule.

Section: 98 Request to delete trade mark in series

(Forms T5B & T5S)

(1) An applicant for registration of a series of trade marks or the owner of a registered series of trade marks may at any time file a request on the specified form for the deletion of a trade mark in that series.

(2) Where a request is filed under subrule (1), the Registrar shall delete the trade mark from the application or registration, as the case may be.

Section: 99 Application for registration of defensive trade mark

(s. 60 of the Ordinance) (Forms T2, T2A & T2S)

(Fee No. 32)

(1) An application for the registration of a trade mark as a defensive trade mark under section 60 of the Ordinance shall be filed on the specified form.

(2) Within 9 months after the date of the application, the applicant shall file-

(a) a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration or affidavit made by the applicant or some other person approved for the purpose by the Registrar; and

(b) such evidence, if any, as the applicant may desire to adduce in support of the application.

(3) If the applicant does not file a statement of case within the period referred to in subrule (2)(a), the application shall be treated as abandoned.

(4) The applicant may, within such time as the Registrar may allow, whether after request made by the Registrar or otherwise, file such other evidence as he may desire to adduce in support of the application, and the Registrar shall consider the whole of the evidence before deciding on the application.

(5) For the avoidance of doubt, it is declared that the provisions of Part 2 apply in relation to an application for the registration of a trade mark as a defensive trade mark except to the extent they are inconsistent with this rule.

Section: 100 Application for registration of collective mark

(ss. 6 & 7 of Sch. 3 to the Ordinance)

(1) For the purposes of section 6(3) of Schedule 3 to the Ordinance, an applicant for registration of a collective mark shall file a copy of the regulations governing the use of the mark within 9 months after the date of the application for registration.

(2) The Registrar may send to the applicant any observations that he may wish to make with regard to the application or the suitability of the regulations, and the applicant may file a request under section 46 of the Ordinance to amend the application (see rule 24) or may modify the regulations, as appropriate.

(3) For the purposes of section 7 of Schedule 3 to the Ordinance and these Rules-

(a) the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the circumstances, shall be treated as being the period specified by the Registrar for the purposes of section 7(2) of that Schedule; and

(b) rules 13 and 14, in their application to an application for registration of a collective mark, are to be read subject to the necessary modifications.

Section: 101 Application for registration of certification mark

(ss. 7 & 8 of Sch. 4 to the Ordinance)

(1) For the purposes of section 7(3) of Schedule 4 to the Ordinance, an applicant for registration of a certification mark shall file a copy of the regulations governing the use of the mark within 9 months after the date of the application for registration.

(2) The regulations shall be accompanied by evidence of the applicant's competence to certify the goods or services for which the mark is to be registered, which evidence shall be verified by a statutory declaration or affidavit made by the applicant or some other person approved for the purpose by the Registrar.

(3) The Registrar may send to the applicant any observations that he may wish to make with regard to the application, the suitability of the regulations or the sufficiency of the evidence, and the applicant may file a request under section 46 of the Ordinance to amend the application (see rule 24) or may modify the regulations or file new evidence, as appropriate.

(4) For the purposes of section 8 of Schedule 4 to the Ordinance and these Rules-

(a) the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the circumstances, shall be treated as being the period specified by the Registrar for the purposes of section 8(2) of that Schedule; and

(b) rules 13 and 14, in their application to an application for registration of a certification mark, are to be read subject to the necessary modifications.

Section: 102 Amendment of regulations governing use of collective mark or

certification mark

(s. 10 of Sch. 3 & s. 11 of Sch. 4 to the Ordinance)

(Form T6) (Fee No. 33)

(1) An application by the owner of a registered collective mark or certification mark for the amendment of the regulations governing the use of the mark shall be filed in writing.

(2) Where the Registrar considers it appropriate to do so, he shall publish a notice of the amendment in the official journal, which notice shall indicate where copies of the amended regulations may be inspected.

(3) Where the Registrar publishes a notice under subrule (2), any person claiming to be affected by the amendment may, within 3 months after the date of publication of the notice, file a notice of opposition on the specified form.

(4) The notice of opposition shall include a statement of the grounds of opposition, which statement shall, in particular, explain how the opponent would be affected by the amendment and why in the opponent's opinion the amendment would be contrary to section 6(1) or (2) of Schedule 3 to the Ordinance (which deals with collective marks) or section 7(1) or (2) of Schedule 4 to the Ordinance (which deals with certification marks), as the case may be.

(5) The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered collective mark or certification mark in question.

(6) Where a notice of opposition is filed within the period specified in subrule (3), the Registrar may-

(a) if he is satisfied that the opposition has merit, refuse to accept the amendment; or

(b) if he is satisfied that the opposition is without merit and that the amendment should be accepted, accept the amendment as proposed by the owner.

(7) If no notice of opposition is filed within the period specified in subrule (3) and the Registrar is satisfied that the amendment should be accepted, he shall accept the amendment as proposed by the owner.

PART 14

AGENTS

Section: 103 Proof of authorization of agent may be required

(s. 88 of the Ordinance)

(1) Where a person has been authorized to act as an agent in accordance with section 88 of the Ordinance, the Registrar may in any particular case require the personal signature or presence of the agent or the person authorizing him to act as agent.

(2) The Registrar may by notice in writing require any person who claims to act as an agent to produce evidence of his authority.

Section: 104 Registrar may refuse to deal with certain agents

(s. 88 of the Ordinance)

The Registrar may refuse to recognize as an agent in respect of any business under the Ordinance or these Rules-

(a) a person who has been convicted of a criminal offence;

(b) a person whose name has been struck off the roll of barristers or roll of solicitors kept under and in accordance with the Legal Practitioners Ordinance (Cap 159) or any person who has been suspended from acting as a barrister or solicitor;

(c) a partnership or body corporate of which one of the partners or directors is a person whom the Registrar could refuse to recognize as an agent under paragraph (a) or (b);

(d) a person against whom a disqualification order has been made under section 168E, 168F, 168G, 168H, 168J or 168L of the Companies Ordinance (Cap 32);

(e) a person against whom an order has been made under section 23(1)(a) or 24(1) of the Securities (Insider Dealing) Ordinance (Cap 395); or

(f) a person against whom an order has been made under section 214(2)(d), 257(1)(a), 258(1) or 303(2)(a) of the Securities and Futures Ordinance (Cap 571).

PART 15

ADDRESS FOR SERVICE

Section: 105 Filing of address for service

(1) An address for service shall be filed by every person who files-

(a) an application for registration of a trade mark under rule 6;

(b) a notice of opposition to the registration of a trade mark under rule 16;

(c) a counter-statement under rule 17;

(d) a notice of objection to the amendment of an application for registration of a trade mark under rule 26;

(e) an application for the revocation of the registration of a trade mark under rule 36;

(f) a counter-statement under rule 37;

(g) an application for the revocation of the registration of a trade mark under rule 40;

(h) a counter-statement under rule 41;

(i) an application for a declaration of invalidity of the registration of a trade mark under rule 46;

(j) an application for the variation of the registration of a trade mark or for the rectification of an error or omission in the register under rule 48 and to which rule 50 applies;

(k) a counter-statement under rule 50(3);

(l) an application for leave to intervene under rule 51;

(m) a notice of objection to the alteration of a registered trade mark under rule 55;

(n) a notice of opposition to the amendment of the specification of a registered trade mark under rule 61;

(o) an application or notice to register particulars of a registrable transaction relating to a registered trade mark or an application for registration of a trade mark under rule 62;

(p) a request to amend or remove registered particulars relating to a licence or security interest under rule 64;

(q) a notice of opposition to the removal of any matter from the register under rule 67(2);

(r) an application for leave to be substituted for a party under rule 83;

(s) an application for registration of a series of trade marks under rule 97;

(t) an application for registration of a trade mark as a defensive trade mark under rule 99;

(u) a notice of opposition to the amendment of the regulations governing the use of a registered collective mark or certification mark under rule 102(3); or

(v) any other document the specified form of which, if any, requires the person who completes the form to provide an address for service.

(2) The address for service must be a residential or business address in Hong Kong.

(3) A person may file an address for service-

(a) where the document in question is required to be filed on the specified form and the form requires the person who completes it to provide an address for service, by filing the specified form with the address for service stated on it; or

(b) in any other case, by notifying the Registrar in writing.

(4) Where a document referred to in subrule (1) is filed in the name of 2 or more persons, the address for service filed in relation to that document shall be treated as the address for service of each of those persons.

(5) An applicant for registration of a trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that application.

(6) The owner of a registered trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that registered trade mark.

(7) Subject to any filing to the contrary under this rule or rule 106, on the registration of a trade mark, the address for service of the applicant for registration shall be treated as the address for service of the owner of the registered trade mark for the purposes of all proceedings before the Registrar concerning that registered trade mark.

(8) Where a person files an address for service for the purposes of any proceedings before the Registrar, that address shall be treated as being in substitution for any address for service previously filed by that person for the purposes of those proceedings.

(9) Where, after a person has become a party to proceedings before the Registrar, the person appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file an address for service.

(10) No act required or authorized by the Ordinance or these Rules to be done by or to a person referred to in subrule (9) in connection with the proceedings in question may be done by or to the newly appointed agent before the date on which he files an address for service.

Section: 106 Changing or withdrawing address for service

(Form T5)

(1) A person may change his address for service by-

(a) filing the specified form; or

(b) notifying the Registrar in writing.

(2) If the address for service of the owner of a registered trade mark or of a party to any proceedings before the Registrar ceases to be valid, the owner or party, as the case may be, shall as soon as practicable thereafter change his address for service in the manner provided by subrule (1).

(3) A person may withdraw his address for service by notifying the Registrar in writing.

Section: 107 Failure to file address for service

(1) Where an address for service is not filed as required by rule 105, or where the Registrar

is satisfied that the address for service of the owner of a registered trade mark or a party to any

proceedings before the Registrar is no longer valid, the Registrar may send to the person concerned, at any of the addresses referred to in subrule (2), a notice to file an address for service.

(2) For the purposes of subrule (1), the addresses are-

(a) any previously filed address for service of the person;

(b) any address of the person in Hong Kong that is shown in the register;

(c) any residential or business address of the person in Hong Kong; and

(d) any other address of the person that is known to the Registrar.

(3) If any person to whom a notice is sent under subrule (1) fails to file an address for service within 2 months after the date of the notice-

(a) any application, notice or request filed by that person shall be treated as abandoned or withdrawn; and

(b) the person shall be deemed to have withdrawn from any proceedings before the Registrar of which he is a party.

PART 16

FILING AND SERVICE OF DOCUMENTS

Section: 108 Filing of documents with the Registrar

(1) Any document or other thing required or authorized by the Ordinance or these Rules to be filed with the Registrar must be delivered to the Registrar at the Registry during the normal business hours of the Registry or sent to the Registrar by post.

(2) Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or other thing, with the postage on it prepaid, to the Registrar at the office of the Registry; and the document or thing shall be deemed to have been received at the time when the letter is actually received by the Registrar at the Registry.

(3) The filing of a document or other thing with the Registrar shall be deemed to be effected at such time as it is received by the Registrar at the Registry and is recorded as received.

Section: 109 Electronic filing

(1) The Registrar may at his discretion permit, as an alternative to the filing of a document or other thing with the Registrar in a paper or other physical form, the filing of an electronic record of that document or thing.

(2) The Registrar may at his discretion permit, as an alternative to delivering or sending a document or other thing to the Registrar in the manner provided by rule 108, the sending of an electronic record of that document or thing by electronic means to an information system designated by the Registrar.

(3) The filing of an electronic record, and the sending of an electronic record by electronic means to the information system designated under subrule (2), shall be subject to such terms as the Registrar may specify either generally by notice published in the official journal or in any particular case by notice to the person desiring to file an electronic record or to send an electronic record to the Registrar by electronic means.

(4) Where, in accordance with this rule, a document or other thing in the form of an electronic record is sent by electronic means to the information system designated under subrule (2), the filing of that document or thing shall be deemed to be effected at such time as that electronic record is accepted by the designated information system.

Section: 110 Terms for electronic filing

(1) Without limiting the generality of rule 109(3), the Registrar may specify terms under that rule-

(a) providing for the approval by the Registrar of the process that must be used to make or send an electronic record;

(b) providing for the approval by the Registrar of the format or media in which an electronic record must be recorded or stored;

(c) respecting the manner of authenticating an electronic record in circumstances where the document or other thing in question is required to be signed or sealed or authenticated in any manner;

(d) requiring any document or other thing sent to the Registrar in the form of an electronic record to include or be accompanied by the electronic signature or digital signature of the person who sends it; and

(e) respecting the manner of filing a document or other thing in cases where there is an interruption in the operation of the information system designated under rule 109(2).

(2) Without limiting the generality of rule 109(3), the Registrar may refuse to accept or to register any document or other thing that is in the form of an electronic record if-

(a) the information contained in the electronic record is not capable of being displayed in a legible form;

(b) the electronic record is not capable of being stored in the information system designated under rule 109(2);

(c) the electronic record appears to the Registrar to be altered, damaged or incomplete;

(d) any electronic signature or digital signature or other kind of authentication accompanying or included with the electronic record appears to the Registrar to be altered or incomplete; or

(e) any term specified by the Registrar under that rule has been breached.

Section: 111 Designation of electronic mail box

(1) On the request of any person, the Registrar may designate an electronic mail box within an information system designated by the Registrar which may be used by that person to communicate with the Registrar.

(2) The use by any person of an electronic mail box within the designated information system shall be subject to such terms as the Registrar may specify either generally by notice published in the official journal or in any particular case by notice to the person for whom the electronic mail box is designated.

(3) Where the Registrar designates an electronic mail box for a person under this rule, any document or other thing required or authorized by the Ordinance or these Rules to be sent by the Registrar to that person shall be deemed to be properly sent if it is sent in the form of an electronic record to that person's designated electronic mail box.

(4) Sending to a designated electronic mail box shall be deemed to be effected at such time as the electronic record is accepted by the designated information system.

(5) An electronic record sent to a designated electronic mail box shall be deemed to be received by the addressee at such time as the electronic record is accepted and recorded by that electronic mail box.

Section: 112 Service of documents

(1) Except as provided by rules 108, 109, 110 and 111, where any document or other thing is required or authorized by the Ordinance or these Rules to be sent to any person-

(a) the document or other thing may be left at, or sent by post to, the address for service of the person; or

(b) if the person does not have an address for service, the document or other thing may be sent by post to his last known address.

(2) Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or other thing, with the postage on it prepaid, to the address for service of the person or, if he does not have an address for service, at his last known address, and unless the contrary is shown, the document or thing shall be deemed to have been received by that person at the time when the letter would be delivered in the ordinary course of post.

PART 17

MISCELLANEOUS

Section: 113 Form in which the records of the Registry are kept, etc.

(1) The Registrar shall determine the form in which the records of the Registry are constituted and kept and may determine the period for which such records, or any document or other thing kept by the Registry, shall be kept and the circumstances in which they may be destroyed or otherwise disposed of.

(2) Where the Registrar keeps a record of a document or other thing in a form that differs from that in which the document or thing was originally filed with, or originally generated by, the Registrar, the record of that document or thing shall be presumed, unless the contrary is shown, to accurately represent the information contained in the document or thing as originally filed or generated.

Section: 114 Publication of business hours and business days of the Registry

(s. 89 of the Ordinance)

Any directions given by the Registrar under section 89 of the Ordinance (which authorizes the Registrar to specify the hours of business or business days of the Registry) shall be posted in the Registry and published in the official journal.

Section: 115 Publication and sale of documents

The Registrar may arrange for the publication and sale of documents and information by the Registry on such terms as he thinks fit.

Section: 116 Publication of certain court orders

Whenever an order is made by the court under the Ordinance for the rectification or correction of the register, the Registrar may, if he thinks that it should be made public, publish the order in the official journal.

Section: 117 Filing of court orders, declarations and certificates

(1) Where any order or declaration is made or any certificate is granted by the court under the Ordinance, the person in whose favour such order, declaration or certificate has been made or granted or, if there is more than one, such one of them as the Registrar may direct, shall file a certified copy of the order, declaration or certificate with the Registrar.

(2) Where appropriate, the Registrar shall rectify the register accordingly.

Section: 118 Signature of documents by partnerships, corporations, etc.

(1) A document signed for or on behalf of a firm shall be signed by its partners, by any partner stating that he signs on behalf of the firm or by any other person who satisfies the Registrar that he is authorized to sign the document.

(2) A document signed for or on behalf of a body corporate shall be signed by a director or the secretary or other principal officer of the body corporate or by any other person who satisfies the Registrar that he is authorized to sign the document.

(3) A document signed for or on behalf of an unincorporated body or association of persons other than a firm shall be signed by a director, manager, secretary or other similar officer of that body or association, or by any other person who satisfies the Registrar that he is authorized to sign the document.

Section: 119 Change of language of proceedings

(s. 76 of the Ordinance)

The Registrar may, subject to the consent of the parties concerned, give directions relating to the change of the language of proceedings on such terms as he may direct.

Section: 120 Translations of documents, etc.

(s. 76 of the Ordinance)

(1) Except as expressly provided in these Rules, where any document or part of a document that is not in one of the official languages is filed with the Registrar, the document shall be accompanied by a translation of the document or that part of the document into the language of the proceedings and such translation must be verified to the satisfaction of the Registrar as corresponding to the original text.

(2) The Registrar may, in respect of any document or part of a document to be used for the purposes of evidence in proceedings before the Registrar and that is in a language other than the language of the proceedings, give directions as to-

(a) the filing of the document or that part of the document in that other language; and

(b) the filing of a translation of the document or that part of the document into the language of the proceedings.

(3) Where a person is required by the Ordinance or these Rules to state his name on any document filed with the Registrar and his name is not in the Roman alphabet or in Chinese characters, the document shall contain a transliteration of the name in the Roman alphabet.

(4) In the case of an application for the registration of a trade mark that consists of or contains a word, letter or character that is neither in the Roman alphabet nor in Chinese characters, the application shall, unless the Registrar otherwise directs, include a translation or transliteration of that word, letter or character to the satisfaction of the Registrar, and where the application includes such a translation or transliteration, it shall also state the language to which that word, letter or character belongs.

(5) In the case of an application for the registration of a trade mark that consists of or contains a word, letter or character in a language other than English or Chinese, the Registrar may require the applicant to file an exact translation of that word, letter or character into English or Chinese, and, if the Registrar so requires, the translation shall be endorsed and signed by the applicant or his agent and the endorsement shall state the language to which that word, letter or character belongs.

(6) The Registrar may, in respect of any information required to be supplied by any person in connection with any proceedings before the Registrar, require the person to supply the information in one or both of the official languages on such terms as the Registrar thinks fit.

(7) The Registrar may specify periods within which translations of documents or parts of documents are to be provided by a party to any proceedings before the Registrar.

Section: 121 Pending applications for registration

(s. 10 of Sch. 5 to the Ordinance) (Fee No. 29)

(1) Where an application for registration of a mark made under the old law is advertised in accordance with section 14 or 66 of the repealed Ordinance on or after the commencement date-

(L.N. 97 of 2003)

(a) the period within which a notice of opposition may be filed is the 3-month period beginning on the date of the advertisement; and

(b) if a notice of opposition is filed, the applicant shall file the counter-statement within 3 months after the date of receipt by the applicant of the copy of the notice of opposition.

(2) The Registrar may, on a request being filed by any person on the specified form within the period specified in subrule (1)(a), extend the time for filing a notice of opposition by 2 months, which time may not be further extended. (L.N. 97 of 2003)

(3) The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (1)(b), extend the time for filing the counter-statement by 2 months, which time may not be further extended. (L.N. 97 of 2003)

Section: 122 Form for conversion of pending applications

(s. 11(1) of Sch. 5 to the Ordinance)

(Form T15) (Fee No. 34)

A notice to the Registrar under section 11(1) of Schedule 5 to the Ordinance (which deals with transitional matters), claiming to have the registrability of the mark determined in accordance with the Ordinance, shall be filed on the specified form.

Schedule: SCHEDULE

[rules 2 & 4]

FEES

Fee Matter or proceeding Amount

No.