Legislative Texts
TRADE MARKS ORDINANCE
�Chapter 43
�
Long title
To amend and consolidate the law relating to the registration of trade marks.
[1 January 1955] G.N.A. 143 of 1954
(Originally 47 of 1954)
Section 1
Short title
This Ordinance may be cited as the Trade Marks Ordinance.
[cf. 1938 c. 22 s. 71 U.K.]
Section 2
�Interpretation
�
Remarks:
Adaptation amendments retroactively made—see 22 of 1999 s. 3
(1) In this Ordinance, unless the context otherwise requires“assignment” means assignment by act of the parties concerned; “certification trade mark” means a mark registered or deemed to have been registered under
section 64 ; (Added 44 of 1991 s. 2) “defensive trade mark” means a mark registered under section 55 or 55A ; (Added 44 of 1991
s. 2)
“limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor of the trade mark, including limitations of that right as to mode of use or as to use, - (a)
- in the case of a trade mark relating to goods, in relation to
- (i)
- goods to be sold, or otherwise traded in, within Hong Kong; or
- (ii)
- goods to be exported to any market outside Hong Kong; and
- (b)
- in the case of a trade mark relating to services, in relation to
- (i)
- services for use or available for acceptance within Hong Kong; or
- (ii)
- services for use in any place outside Hong Kong; (Replaced 44 of 1991 s. 2)
“mark” means any sign that is visually perceptible and capable of being represented graphically and may, in particular, consist of words, personal names, letters, numerals, figurative
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elements or combination of colours, and includes any combination of such signs; (Replaced 11 of 1996 s. 18)
“permitted use” has the meaning assigned to it by section 58(1) ;
“prescribed” means, in relation to proceedings before the Court or preliminary thereto or connected therewith, prescribed by this Ordinance or by the rules made thereunder or by rules of court and, in other cases, prescribed by this Ordinance or by the rules made thereunder;
“provision”, in relation to services, means their provision, whether or not for money or money’s worth; (Added 44 of 1991 s. 2)
“register” means the register of trade marks kept under this Ordinance;
“registered trade mark” means a trade mark which is actually on the register;
“registered user” means a person who is for the time being registered as such under section 58 ;
“registrable trade mark” means a trade mark which is capable of registration under the provisions of this Ordinance;
“Registrar” means the Registrar of Trade Marks appointed by the Chief Executive; (Replaced 35 of 1990 s. 10. Amended 22 of 1999 s. 3)
“seal” means the seal of the Registrar kept in the Trade Marks Registry Hong Kong; (Amended 22 of 1999 s. 3)
“trade mark” means (except in the expressions “trade mark relating to goods”, “trade mark relating to services”, “defensive trade mark” and “certification trade mark”) a trade mark relating to goods or a trade mark relating to services; (Replaced 44 of 1991 s. 2)
“trade mark relating to goods” means a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person; (Added 44 of 1991 s. 2)
“trade mark relating to services” means a mark used or proposed to be used in relation to services for the purpose of indicating, or so as to indicate, that a particular person is connected, in the course of business, with the provision of those services, whether with or without any indication of the identity of that person; (Added 44 of 1991 s. 2)
“transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment;
“tribunal” means the Court or the Registrar. - (2)
- References in this Ordinance to
- (a) �
- the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark;
- (b) �
- the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods; and
- (c) �
- the use of a mark in relation to services shall be construed as references to the use of the mark as or as part of any statement about the availability or performance of services or otherwise in relation to services. (Replaced 44 of 1991 s. 2)
Legislative Texts - (3)
- For the purposes of this Ordinance, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and a description of goods and a description of services are associated with each other if it is likely that the description of goods might be sold or otherwise traded in and the description of services might be provided by the same business. (Added 44 of 1991 s. 2)
- (4)
- References in this Ordinance to a near resemblance of marks are references to a resemblance so near as to be likely to deceive or cause confusion. (Added 44 of 1991 s. 2)
- (5)
- For the purposes of this Ordinance, a person who provides services that are ancillary to a trade or business of that person may be regarded as being connected, in the course of business, with the provision of those services. (Added 44 of 1991 s. 2)
[cf. 1938 c. 22 s. 68 U.K.]
Section 3
�Register of trade marks
�
REGISTER OF TRADE MARKS
(1) The Registrar shall for the purposes of this Ordinance keep a record called the register of trade marks, wherein shall be entered all registered trade marks, with the dates of their registration, the names and addresses of their proprietors, notifications of assignments and transmissions, the names and addresses of all registered users, disclaimers, conditions, limitations, and such other matters relating to such registered trade marks as may be prescribed. (Amended 44 of 1991 s. 3) [cf. 1938 c. 22 s. 1(1) & (4) U.K.]
(2) The Registrar need not keep the register in documentary form. (Added 44 of 1991 s. 3)
Section 4
�Division of register into 2 parts
� - (1)
- The register shall be divided into 2 parts, called Part A and Part B. [cf. 1938 c. 22 s. 1(2) U.K.]
- (2)
- Part A of the register shall comprise all trade marks entered in the register of trade marks at the commencement of this Ordinance and all trade marks which after the commencement of this Ordinance shall be registered in that Part under the provisions of this Ordinance.
- (3)
- Part B shall comprise all trade marks registered in that Part under the provisions of this Ordinance.
[cf. 1919 c. 79 s. 1 U.K.]
Section 5
�Trust not to be entered in register
�
There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.
[cf. 1938 c. 22 s. 64(1) U.K.]
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Section 6
�Inspection of register
� - (1)
- The register shall at all convenient times be open to the inspection of the public, subject to such rules as may be prescribed. (Amended 44 of 1991 s. 4) [cf. 1938 c. 22 s. 1(3) U.K.]
- (2)
- In relation to any portion of the register kept otherwise than in documentary form, the right of inspection conferred by subsection (1) is a right to inspect the material on the register.
(Added 44 of 1991 s. 4)
Section 7
�Copies and extracts from register
� - (1)
- Any person who applied for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of the prescribed fee; and rules under section 90 may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of the prescribed fee.
- (2)
- In relation to any portion of the register kept otherwise than in documentary form, the right to a copy or extract conferred by subsection (1) or rules under section 90 is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.
- (3)
- In this section, “certified copy” and “certified extract” mean a copy and extract certified by the Registrar and sealed with the seal of the Registrar.
(Replaced 44 of 1991 s. 5)
[cf. 1938 c. 22 s. 1(5), (7) & (11) U.K.]
Section 8
�Trade mark must be for particular goods
�
REGISTRABLE TRADE MARKS - (1)
- A trade mark relating to goods must be registered in respect of particular goods or classes of goods. (Amended 44 of 1991 s. 53)
(1A) A trade mark relating to services must be registered in respect of particular services or classes of services. (Amended 44 of 1991 s. 6)
- (2)
- Any question arising as to the class within which any goods or services fall shall be determined by the Registrar, whose decision shall be final. (Amended 44 of 1991 s. 52)
[cf. 1938 c. 22 s. 3 U.K.]
Section 9
�Trade marks registrable in Part A
�
(1) A trade mark (other than a certification trade mark) to be registrable in Part A of the register shall contain or consist of at least one of the following essential particulars-
Legislative Texts - (a) �
- the name of a company, individual, or firm, represented in a special or particular manner;
- (b) �
- the signature (in other than Chinese characters) of the applicant for registration or of some predecessor in his business;
- (c) �
- an invented word or invented words;
- (d) �
- a word or words having no direct reference to the character or quality of the goods or services, as the case may be, and not being according to its ordinary signification a geographical name or a surname; (Amended 44 of 1991 s. 7)
- (e) �
- any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in paragraphs (a), (b) , (c) and (d) , shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness.
- (2)
- For the purposes of this section, “distinctive” means
- (a) �
- in the case of a trade mark relating to goods, adapted in relation to the goods in respect of which the trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected, in the course of trade, from goods in the case of which no such connection subsists; or
- (b) �
- in the case of a trade mark relating to services, adapted in relation to the services in respect of which the trade mark is registered or proposed to be registered, to distinguish services with the provision of which the proprietor is or may be connected, in the course of business, from services with the provision of which he is not so connected,
either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration. (Replaced 44 of 1991 s. 7)
(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which - (a) �
- the trade mark is inherently adapted to distinguish as aforesaid; and
- (b) �
- by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.
[cf. 1938 c. 22 s. 9 U.K.]
Section 10
�Trade marks registrable in Part B
�
(1) A trade mark relating to goods to be registrable in Part B of the register must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to the use within the extent of the registration. (Amended 44 of 1991 s. 53)
(1A) A trade mark relating to services to be registrable in Part B of the register must be capable, in relation to the services in respect of which it is registered or proposed to be registered, of distinguishing services with the provision of which the proprietor of the mark is or may be connected in the course of business from services with the provision of which he is not so connected either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration. (Added 44 of 1991 s. 8)
Legislative Texts - (2)
- In determining whether a trade mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which
- (a) �
- the trade mark is inherently capable of distinguishing as aforesaid; and (Amended 44 of 1991 s. 8)
- (b) �
- by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.
- (3)
- A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof.
(Replaced 3 of 1985 s. 2)
[cf. 1938 c. 22 s. 10 U.K.]
Section 11
�Coloured trade marks
� - (1)
- A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.
- (2)
- If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
[cf. 1938 c. 22 s. 16 U.K.]
Section 12
�Restriction on registration
� - (1)
- It shall not be lawful to register as a trademark or part of a trade mark any matter the use of which would be likely to deceive or would be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design. [cf. 1938 c. 22 s. 15(3) U.K.]
- (2)
- No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark relating to goods in respect of a chemical substance or preparation, and any such registration in force at the commencement of this Ordinance or thereafter shall, notwithstanding anything in section 30 , be deemed for the purposes of section 48 to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require:
Provided that the foregoing provisions of this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use. (Amended 44 of 1991 s. 53) [cf. 1938 c. 22 s. 11 U.K.] - (3)
- A sign shall not be registered as a trade mark relating to goods if it consists exclusively of
- (a) �
- the shape that results from the nature of the goods themselves;
- (b) �
- the shape of goods that is necessary to obtain a technical result; or
- (c) �
- the shape that gives substantial value to the goods. (Added 11 of 1996 s. 19)
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Section 13
�Application for registration
�
REGISTRATION OF TRADE MARKS - (1)
- Any person claiming to be entitled to be registered as the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar in the prescribed manner for registration either in Part A or Part B of the register.
- (2)
- Subject to the provisions of this Ordinance, the Registrar may refuse the application, or accept it absolutely or subject to such conditions, amendments, modifications, or limitations, if any, as he may think right.
- (3)
- In the case of an application for registration of a trade mark (other than a certification trade mark) in Part A of the register, the Registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with the application accordingly.
- (4)
- In the case of a refusal or conditional acceptance, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the Court.
- (5)
- An appeal under this section shall be made in the prescribed manner, and on such appeal the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted.
- (6)
- Appeals under this section shall be heard on the materials stated as aforesaid by the Registrar to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those so stated as aforesaid by him, except by leave of the Court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.
- (7)
- The Registrar or the Court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as the Registrar or the Court may think fit.
[cf. 1938 c. 22 s. 17 U.K.]
Section 13A
�Priority for application made in Convention country
�
Remarks:
Adaptation amendments retroactively made—see 22 of 1999 s. 3
(1) Subject to subsection (2) , any person who has applied for protection for any trade mark in a Convention country, or his legal representative or assignee, shall be entitled to registration of his trade mark under this Ordinance in priority to other applicants and, subject to subsection (2A) , the registration shall have the same date as the date of the application in the Convention country. (Amended 44 of 1991 s. 9)
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(2) For the purposes of obtaining priority under