WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/HKG/T/4 
22 July 2004 
 (04-3171) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/ 
 inglés 
 
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
HONG KONG, CHINA 
 
 
 The present document reproduces the text1 of the Trade Marks Ordinance (Cap. 559), as 
notified by Hong Kong, China under Article 63.2 of the Agreement (see document IP/N/1/HKG/8). 
 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
HONG KONG, CHINE 
 
 
 Le présent document contient le texte1 de l'Ordonnance sur les marques de fabrique ou de 
commerce (chapitre 559), notifiée par Hong Kong, Chine au  titre de l'article 63:2 de l'Accord (voir le 
document IP/N/1/HKG/8). 
 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
HONG KONG, CHINA 
 
 
 En el presente documento se reproduce el texto1 de la Orden sobre Marcas de Fábrica o de 
Comercio (capítulo 559) que Hong Kong, China ha no tificado en virtud del párrafo 2 del artículo 63 
del Acuerdo (véase el documento IP/N/1/HKG/8). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/HKG/T/4 
Page 2  
 
(Date of this copy: 25/04/2003) 
 
Chapter: 559 TRADE MARKS ORDINANCE 
 
Long title 
 
An Ordinance to make new provision in respect of the registration of trade marks and to provide for 
connected matters. 
 
[4 April 2003] L.N. 31 of 2003 
 
(Originally 35 of 2000) 
 
PART I 
PRELIMINARY 
 
Section: 1 Short title 
(1) This Ordinance may be cited as the Trade Marks Ordinance. 
(2) (Omitted as spent) 
 
Section: 2 Interpretation 
(1) In this Ordinance, unless the context otherwise requires- 
"certification mark" ( □□□ ) has the meaning assigned by section 62(1) (certification marks); 
"certified" ( □□□ ), in relation to a copy or extract, means certified by the Registrar and sealed with 
the seal of the Registrar; 
"collective mark" ( □□□ )  has the meaning assigned by section 61(1) (collective marks); 
"corporation" ( □□□ ) means any company or other body corpor ate, incorporated or formed either 
in Hong Kong or elsewhere; 
"court" (□□□ ) means the Court of First Instance; 
"defensive trade mark" ( □□□ ) means a trade mark registered as a defensive trade mark 
under section 60 (defensive trade marks); 
"infringement proceedings" ( □□□ ), in relation to a registered trade mark, includes proceedings under 
section 23 (order for delivery up) and section 25 (order for disposal); 
"limitation" ( □□□ ) means any limitation of the exclusive right to the use of a trade mark given by 
the registration of a person as owner of the trade mark; 
"official journal" ( □□□ ) means the publication for the time being specified under section 
73(1) (power to specify official journal, etc.) as the official journal of record; 
"owner" (□□□ ), in relation to a registered trade mark, means the person whose name is for the 
time being entered in the register as the owner of the trade mark or, if there are 2 or more such persons, each of those persons; 
"Paris Convention" ( □□□ ) means the Convention for the Protection of Industrial Property signed at 
Paris on 20 March 1883, as revised or  amended from time to time; 
"Paris Convention country" ( □□□ ) means- 
(a) any country for the time being specifie d in Schedule 1 as being a country which has 
acceded to the Paris Convention; 
(b) any territory or area subject to the aut hority or under the suzerainty of any country 
referred to in paragraph (a), or any territory or area administered by any such country, on 
behalf of which such country has acceded to the Paris Convention; 
"prescribed" ( □□□ ) means prescribed or provided for by the rules; 
"registered trade mark" ( □□□ ) means a trade mark registered under section 47 (registration); 
"Registrar" ( □□□ ) means the Registrar of Trade Marks;  IP/N/1/HKG/T/4 
 Page 3 
 
 
"Registrar of Trade Marks" ( □□□ ) means the person holding that office by virtue of the Director of 
Intellectual Property (Establishment) Ordinance (Cap 412); 
"Registry" ( □□□ ) means the Trade Marks Registry in the Intellectual Property Department 
administered by the Registrar; 
"rules" (□□□ )means rules made by the Registrar under section 91 (rules); 
"trade" (□□□ ) includes a profession; 
"World Trade Organization Agreement" ( □□□ ) means the agreement of that name done at Marrakesh 
in 1994, as revised or amended from time to time; 
"WTO member" ( □□□ ) means any country, territory or ar ea for the time being specified in 
Schedule 1 as being a country, territory or area which has acceded to the World Trade Organization 
Agreement. 
(2) For the purposes of this Ordinance, a sign or  trade mark is taken to be applied to goods, 
material or any other thing if it is woven in, impres sed on, worked into, affixed or annexed to, or in 
any manner marked on or incorporated w ith, the goods, material or thing. 
(3) The expressions listed in the left-hand column below are defined in, or fall to be construed 
in accordance with, the provisions of this Ordinan ce listed in the right-hand column in relation to 
those expressions. 
Expression        Relevant Provision 
Convention application ( □□□ )      section 41(9) 
date of application for registration ( □□□ )    section 39(3) 
date of registration ( □□□ )      section 48 
earlier right ( □□□ )       section 12(5) 
earlier trade mark ( □□□ )      section 5 
Exclusive licence ( □□□ )     section 32 
Exclusive licensee ( □□□ )      section 32 
filing date ( □□□ )       section 39(1) 
Infringement ( □□□ )       section 16 
Infringing articles ( □□□ )     section 17(4) 
Infringing goods ( □□□ )      section 17(2) 
Infringing material ( □□□ )     section 17(3) 
licence (□□□ )        s e c t i o n  3 2  
licensee (□□□ )        s e c t i o n  3 2  
owner of an earlier right ( □□□ )     section 12(5) 
owner of a well-known trade mark 
(□□□ )          s e c t i o n  4 ( 3 )  
the register ( □□□ )      section 8(1) 
Registrable transaction ( □□□ )     section 29(2) 
Registration ( □□□ )      section 8(2) 
series of trade marks ( □□□ )     section 51(3) 
trade mark ( □□□ )       s e c t i o n  3  
use (of sign) ( □□□ )      section 18(5) 
use (of trade mark or sign) ( □□□ )    section 6 
use (likely to cause confusion) 
(□□□ )         s e c t i o n  7  
well-known trade mark ( □□□ )     section 4(1) 
WTO application ( □□□ )     section 41(9) 
 
 
Section: 3 Meaning of "trade mark" IP/N/1/HKG/T/4 
Page 4  
 
(1) In this Ordinance, a "trade mark" ( □□□ ) means any sign which is capable of 
distinguishing the goods or services of one undertaki ng from those of other undertakings and which is 
capable of being represented graphically. 
(2) Without affecting the generality of subsec tion (1), a trade mark may consist of words 
(including personal names), indicati ons, designs, letters, characters, numerals, figurative elements, 
colours, sounds, smells, the shape of goods or th eir packaging and any combination of such signs. 
(3) A sign may constitute a trade mark even though it is used in relation to a service ancillary 
to the trade or business of an undertaking and whet her or not the service is provided for money or 
money's worth. 
(4) Unless the context otherwise requires, references in this Ordinance to a trade mark shall 
be construed as including references to a certificati on mark, collective mark and defensive trade mark. 
 
Section: 4 Meaning of "well-known trade mark" 
(1) References in this Ordinance to a trade ma rk which is entitled to protection under the Paris 
Convention as a well-known trade mark shall be constr ued as references to a trade mark which is well 
known in Hong Kong and which is the trade mark of a person who- 
(a) is a national of, or is domiciled or ordinari ly resident in, a Paris Convention country or 
WTO member; 
(b) has a right of abode in Hong Kong; or 
(c) has a real and effective industrial or commercial establishment in a Paris Convention 
country, a WTO member or Hong Kong, 
whether or not that person carries on business in  Hong Kong or owns any goodwill in a business in 
Hong Kong. 
(2) In determining for the purposes of subsecti on (1) whether a trade mark is well known in 
Hong Kong, the Registrar or the court shall have regard to Schedule 2. 
(3) References in this Ordinance to the owner of a well-known trade mark shall be construed 
in accordance with subsection (1). 
 
Section: 5 Meaning of "earlier trade mark" 
(1) In this Ordinance, "earlier trade mark" ( □□□ ), in relation to another trade mark, means- 
(a) a registered trade mark which has a date of the application for registration earlier than 
that of the other trade mark, taking into account  the priorities claimed in respect of each 
trade mark, if any; or 
(b) a trade mark which, at the date of the app lication for registration of the other trade mark 
or, where appropriate, at the date of the priori ty claimed in respect of that application for 
registration, was entitled to protection under the Paris Convention as a well-known trade 
mark. 
(2) References in this Ordinance to an earlier trade mark shall be construed as including a 
trade mark in respect of which an application for registration has been made under this Ordinance and 
which, if registered, would constitute an earlier trade mark under or by virtue of subsection (1)(a), 
subject to its being so registered. 
(3) A trade mark which is an earlier trade mark  under or by virtue of subsection (1)(a) shall 
continue to be taken into account in determining the registrability of a later trade mark for a period of 1 year after the date on which its registration expires unless the Registrar is satisfied the trade mark has not been used in good faith in Hong Kong dur ing the 2 years immediately preceding that date. 
 
Section: 6 References to us e of trade mark or sign 
References in this Ordinance to use (or to any pa rticular description of use) of a trade mark or 
sign shall be construed as including any use (or any such description of use), whether by means of a 
graphic representation or otherwise. 
 
Section: 7 References to use likely to cause confusion  IP/N/1/HKG/T/4 
 Page 5 
 
 
(1) For greater certainty, in determining for th e purposes of this Ordinance whether the use of 
a trade mark is likely to cause confusion on the part of the public, the Registrar or the court may take 
into account all factors relevant in the circumstances, including whether the use is likely to be 
associated with an earlier trade mark. 
(2) For greater certainty, in determining for th e purposes of this Ordinance whether the use of 
a sign is likely to cause confusion on the part of the public, the Registrar or the court may take into account all factors relevant in the circumstances, in cluding whether the use is likely to be associated 
with a registered trade mark. 
 
Section: 8 Meaning of "the register" and "registration" 
(1) In this Ordinance, "the register" ( □□□ ) means the register of trade marks kept under 
section 67 (register to be kept). 
(2) Unless the context otherwise requires, refere nces in this Ordinance to registration (in 
particular, in the expression "registered trade mark")  shall be construed as references to registration in 
the register. 
 
Section: 9 Ordinance binds Government 
This Ordinance binds the Government. 
 
PART II 
REGISTERED TRADE MARKS 
 
Introductory 
 
Section: 10 Registered tr ade mark a property right 
(1) A registered trade mark is a property right obtained by the registration of the trade mark 
under this Ordinance. 
(2) The owner of a registered trade mark ha s the rights and is entitled to the remedies 
provided by this Ordinance. 
(3) No proceedings lie to prevent, or to recover damages for, the infringement of an 
unregistered trade mark but nothing in this Ordi nance affects the law relating to passing off. 
 
Grounds for refusal of registration 
 
Section: 11 Absolute grounds for refusal of registration 
(1) Subject to subsection (2), the following shall not be registered- 
(a) signs which do not satisfy the requirements of section 3(1) (meaning of "trade mark"); 
(b) trade marks which are devoid of any distinctive character; 
(c) trade marks which consist exclusively of si gns which may serve, in trade or business, to 
designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services; and 
(d) trade marks which consist exclusively of signs which have become customary in the 
current language or in the honest and established practices of the trade. 
(2) A trade mark shall not be refused registration by virtue of subsection (1)(b), (c) or (d) if, 
before the date of application for registration, it h as in fact acquired a distinctive character as a result 
of the use made of it. 
(3) A sign shall not be registered as a trade mark  in relation 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 neces sary to obtain a technical result; or 
(c) the shape that gives subs tantial value to the goods. 
(4) A trade mark shall not be registered if it is- IP/N/1/HKG/T/4 
Page 6  
 
(a) contrary to accepted principles of morality; or 
(b) likely to deceive the public. 
(5) A trade mark shall not be regist ered if, or to the extent that- 
(a) its use is prohibited in Hong Kong under or by virtue of any law; or 
(b) the application for registration of the trade mark is made in bad faith. 
(6) A trade mark shall not be registered if, or to the extent that, it consists of or contains- 
(a) the national flag or its design; 
(b) the national emblem or its design; 
(c) the regional flag or its design; or 
(d) the regional emblem or its design. 
(7) A trade mark shall not be registered in the cases specified in section 64 (national emblems, 
etc.) and section 65 (emblems, etc., of certain international organizations). 
(8) Where the grounds for the refusal of registrati on exist in respect of only some of the goods 
or services for which the application for registration is made, the refusal shall apply to those goods or 
services only. 
(9) For the purposes of subsection (6)- 
"national flag" ( □□□ ) and "national emblem" ( □□□ ) have the same meaning as in the National Flag 
and National Emblem Ordinance (116 of 1997)*; 
"regional flag" ( □□□ ) and "regional emblem" ( □□□ ) have the same meaning as in the Regional Flag 
and Regional Emblem Ordinance (117 of 1997)*. 
_____________________________________________________________________________ 
* 116 of 1997 and 117 of 1997 are published at pages 16/1 and 20/1 respectively in Volume 1 of the 
Loose-leaf Edition of the Laws of Hong Kong but h as not been given chapter numbers in that Edition. 
The texts of 116 of 1997 and 117 of 1997 can also be found in this database under the unofficial 
"chapter" nos. 2401 and 2602 respectively, which ar e assigned to that instrument for identification 
purposes only. 
 
Section: 12 Relative grounds for refusal of registration 
(1) A trade mark shall not be registered if- 
(a) the trade mark is identical to an earlier trade mark; and 
(b) the goods or services for which the application for registration is made are identical to 
those for which the earlier trade mark is protected. 
(2) A trade mark shall not be registered if- 
(a) the trade mark is identical to an earlier trade mark; 
(b) the goods or services for which the application for registration is made are similar to 
those for which the earlier trade mark is protected; and 
(c) the use of the trade mark in relation to those goods or services is likely to cause 
confusion on the part of the public. 
(3) A trade mark shall not be registered if- 
(a) the trade mark is similar to an earlier trade mark; 
(b) the goods or services for which the applicati on for registration is made are identical or 
similar to those for which the earlier trade mark is protected; and 
(c) the use of the trade mark in relation to those goods or services is likely to cause 
confusion on the part of the public. 
(4) Subject to subsection (6), a trade mark which is- 
(a) identical or similar to an earlier trade mark; and 
(b) proposed to be registered for goods or ser vices which are not identical or similar to those 
for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take 
unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.  IP/N/1/HKG/T/4 
 Page 7 
 
 
(5) Subject to subsection (6), a trade mark shall not be registered if, or to the extent that, its 
use in Hong Kong is liable to be prevented- 
(a) by virtue of any rule of law protecting an unregistered trade mark or other sign used in 
the course of trade or business (in particular, by virtue of the law of passing off); or 
(b) by virtue of an earlier right other than tho se referred to in paragraph (a) or in subsections 
(1) to (4) (in particular, by virtue of the la w of copyright or registered designs), and a 
person thus entitled to prevent the use of a trad e mark is referred to in this Ordinance as 
the owner of an "earlier right" in relation to the trade mark. 
(6) A trade mark may be refused registration on any one or more of the grounds mentioned in 
subsections (4) and (5) only if an objection on those grounds is raised in proceedings in opposition to 
the registration under section 44 (opposition proceedings) by the owner of the earlier trade mark or 
other earlier right. 
(7) Where the grounds for the refusal of registrati on exist in respect of only some of the goods 
or services for which the application for registration is made, the refusal shall apply to those goods or 
services only. 
(8) Nothing in this section prevents the regist ration of a trade mark where the owner of the 
earlier trade mark or other earlier right consents to the registration. 
 
Section: 13 Honest concurrent use, etc. 
(1) Nothing in section 12 (relative grounds for refusal of registration) prevents the registration 
of a trade mark where the Registrar or the court is satisfied- 
(a) that there has been an honest concurrent use of the trade mark and the earlier trade mark 
or other earlier right; or 
(b) that by reason of other special circumstan ces it is proper for the trade mark to be 
registered. 
(2) The registration of a trade mark under or by virtue of subsection (1) shall be subject to 
such limitations and conditions as the Registrar or the court thinks fit to impose. 
(3) Nothing in this section prevents the Registra r from refusing to register a trade mark on any 
of the grounds mentioned in section 11 (absol ute grounds for refusal of registration). 
 
Effects of registered trade mark 
 
Section: 14 Rights conferred by registered trade mark 
(1) The owner of a registered trade mark has exclusive rights in the trade mark which are 
infringed by use of the trade mark in Hong Kong without his consent. 
(2) The acts constituting infringement of a regist ered trade mark, if done without the consent 
of the owner, are specified in section 18 (infringement  of registered trade mark) but are subject to the 
exceptions specified in section 19 (exceptions to infringement), section 20 (exhaustion of rights 
conferred by registered trade mark) and section 21 (use in advertising, etc.). 
(3) The rights of the owner of a registered trade mark have effect from the date of registration 
of the trade mark. 
 
Section: 15 Disclaimers, limitations and conditions 
(1) An applicant for registration of a trade mark, or the owner of a registered trade mark, 
may- 
(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 registra tion shall be subject to a specified territorial 
or other limitation or condition. 
(2) Where the registration of a trade mark is subject to a disclaimer, limitation or condition, 
the rights in the registered trade mark conferre d by this Ordinance are restricted accordingly. 
(3) Provision may be made by the rules as to the publication in the official journal and entry 
in the register of particulars of a disclaimer, limitation or condition. IP/N/1/HKG/T/4 
Page 8  
 
PART III 
INFRINGEMENT OF REGISTERED TRADE MARKS 
 
Preliminary 
 
Section: 16 References to infringement 
References in this Ordinance to the infringement of a registered trade mark shall be construed 
as references to any infringement of the rights of the owner. 
 
Section: 17 References to infringi ng goods, material or articles 
(1) References in this Ordinance to infringing goods, infringing material or infringing articles 
shall be construed in accordance with this section. 
(2) Goods are infringing goods, in relation to a registered trade mark, if the goods or their 
packaging bear a sign identical or simila r to the registered trade mark and- 
(a) the application of the sign to the goods or their packaging constituted an infringement of 
the registered trade mark at the time the sign was applied; 
(b) the goods are proposed to be imported into Hong Kong and the application of the sign in 
Hong Kong to the goods or their packaging would constitute an infringement of the 
registered trade mark; or 
(c) the sign has otherwise been used in relati on to the goods in such a way as to infringe the 
registered trade mark. 
(3) Material is infringing material, in relation to a registered trade mark, if the material bears a 
sign identical or similar to the registered trade mark and either- 
(a) the material is used- 
(i) for labelling goods; 
(ii) for packaging goods; 
(iii) as a business paper; or 
(iv) for advertising goods or services, in such a way as to infringe the registered trade mark; or 
(b) the material is intended to be so used and such use would constitute an infringement of 
the registered trade mark. 
(4) Articles are infringing articles, in relation to a registered trade mark, if- 
(a) the articles are specifically designed or ad apted for making copies of a sign identical or 
similar to the registered trade mark; and 
(b) the articles are in the possession, custody or control of a person who knows or has reason 
to believe that they have been or are to be  used to produce infringing goods or material. 
(5) Nothing in subsection (2) shall be constr ued as affecting the importation of goods which 
may be lawfully imported into Hong Ko ng by virtue of any law of Hong Kong. 
 
Infringing acts 
 
Section: 18 Infringement of registered trade mark 
(1) A person infringes a registered trade mark if  he uses in the course of trade or business a 
sign which is identical to the trade mark in relation to goods or services which are identical to those for which it is registered. 
(2) A person infringes a registered trade mark if- 
(a) he uses in the course of trade or business a sign which is identical to the trade mark in 
relation to goods or services which are simila r to those for which it is registered; and 
(b) the use of the sign in relation to those goods or services is likely to cause confusion on 
the part of the public. 
(3) A person infringes a registered trade mark if-  IP/N/1/HKG/T/4 
 Page 9 
 
 
(a) he uses in the course of trade or business a sign which is similar to the trade mark in 
relation to goods or services which are identi cal or similar to those for which it is 
registered; and 
(b) the use of the sign in relation to those goods or services is likely to cause confusion on 
the part of the public. 
(4) A person infringes a registered trade mark if- 
(a) he uses in the course of trade or business a si gn which is identical or similar to the trade 
mark in relation to goods or services which are not identical or similar to those for which 
the trade mark is registered; 
(b) the trade mark is entitled to protection under the Paris Convention as a well-known trade 
mark; and 
(c) the use of the sign, being without due cause,  takes unfair advantage of, or is detrimental 
to, the distinctive character or repute of the trade mark. 
(5) For the purposes of this section a person uses a sign if, in particular, he- 
(a) applies it to goods or their packaging; 
(b) offers or exposes goods for sale under the sign; 
(c) puts goods on the market under the sign; 
(d) stocks goods under the sign for the purpose of offering or exposing them for sale 
or of putting them on the market; 
(e) offers or supplies services under the sign; 
(f) imports or exports goods under the sign; or 
(g) uses the sign on business papers or in advertising. 
(6) Notwithstanding subsection (5), a person who a pplies or causes to be applied a registered 
trade mark, or a sign similar to a registered trade mark, to material which is intended to be used- 
(a) for labelling or packaging goods; 
(b) as a business paper; or 
(c) for advertising goods or services, 
shall be treated as a party to any use of the material which infringes the registered trade mark if, at the 
time the trade mark or sign was applied to the mate rial, he knew or had reason to believe that its 
application to the material was not authorized by the owner of the registered trade mark or by a 
licensee. 
 
Section: 19 Exception s to infringement 
(1) This section applies notwithstanding section 18 (infringement of registered trade mark). 
(2) A registered trade mark is not infringed by  the use of another registered trade mark in 
relation to goods or services for which the latter is re gistered (but see section 53(9) for the effect of a 
declaration of invalidity of registration). 
(3) A registered trade mark is not infringed by- 
(a) the use by a person of his own name or address or the name of his place of business; 
(b) the use by a person of the name of his predecessor in business or the name of his 
predecessor's place of business; 
(c) the use of signs which serve to designate the kind, quality, quantity, intended purpose, 
value, geographical origin, time of production of goods or rendering of services, or other 
characteristics of goods or services; or 
(d) the use of the trade mark where it is n ecessary to indicate the intended purpose of goods 
or services (for example, as accessories or sp are parts), provided the use is in accordance 
with honest practices in industrial or commercial matters. 
(4) A registered trade mark is not infringed by th e use by any person in the course of trade or 
business in Hong Kong of an unregistered trade mark or other sign in relation to goods or services if 
the unregistered trade mark or other sign has b een so used in Hong Kong by that person or a 
predecessor in title continuously fro m a date preceding the earlier of- 
(a) the date of first use in Hong Kong of the trade mark which is registered; and 
(b) the date of registration in Hong Kong of that trade mark. IP/N/1/HKG/T/4 
Page 10  
 
Section: 20 Exhaustion of rights conferred by registered trade mark 
(1) Notwithstanding section 18 (infringement of re gistered trade mark), a registered trade 
mark is not infringed by the use of the trade mark  in relation to goods which have been put on the 
market anywhere in the world under that trade mark by the owner or with his consent (whether 
express or implied or cond itional or unconditional). 
(2) Subsection (1) does not apply where the condition of the goods has been changed or 
impaired after they have been put on the market, and the use of the registered trade mark in relation to 
those goods is detrimental to the distinct ive character or repute of the trade mark. 
 
Section: 21 Use in advertising, etc. 
(1) Nothing in section 18 (infringement of re gistered trade mark) shall be construed as 
preventing the use by any person of a registered trade mark for the purpose of identifying goods or services as those of the owner of the registered trad e mark or a licensee, but any such use which is 
otherwise than in accordance with honest practices in  industrial or commercial matters shall be treated 
as infringing the registered trade mark. 
(2) In determining for the purposes of subsecti on (1) whether the use is in accordance with 
honest practices in industrial or commercial matters, the court may consider such factors as it considers relevant including, in particular, whether- 
(a) the use takes unfair advantage of the trade mark; 
(b) the use is detrimental to the distinctiv e character or repute of the trade mark; or 
(c) the use is such as to deceive the public. 
(3) For the avoidance of doubt, nothing in this section shall be construed as applying to the 
interpretation of section 20 (exhaustion of ri ghts conferred by registered trade mark). 
 
Infringement proceedings 
 
Section: 22 Action for infringement 
(1) An infringement of a registered trade mark is actionable by the owner of the trade mark. 
(2) Notwithstanding section 48 (date of registration), no infringement proceedings may be 
begun before the date on which the trade mark  is in fact entered in the register. 
(3) In infringement proceedings all such relie f by way of damages, injunctions, accounts or 
otherwise shall be available to the owner of a regist ered trade mark as is available in respect of the 
infringement of any other property right. 
 
Section: 23 Order for delivery up 
(1) The owner of a registered trade mark may a pply to the court for an order for the delivery 
up to him, or such other person as the court may direct, of any infringing goods, material or articles which a person has in his possession, custody or control in the course of a trade or business. 
(2) No application may be made under subsection (1 ) after the end of the period referred to in 
section 24 (limitation on order for delivery up). 
(3) Where the court makes an order under subsec tion (1), it shall also make an order under 
section 25 (order for disposal) unless it determines that there are grounds for not making such an order. 
(4) A person to whom any infringing goods, mate rial or articles are delivered up pursuant to 
an order made under subsection (1) shall, if an order under section 25 is not made at the time of the making of the order under subsection (1), retain them pending the making of an order under section 
25 or the decision of the court not to make such an order. 
(5) Nothing in this section affect s any other power of the court. 
Section: 24 Limitation on order for delivery up 
(1) Except as mentioned in subsection (2), an application for an order under section 23 (order 
for delivery up) may not be made after the end of the period of 6 years beginning on- 
(a) in the case of infringing goods, the date on which the trade mark was applied to the 
goods or their packaging;  IP/N/1/HKG/T/4 
 Page 11 
 
 
(b) in the case of infringing material, the date on which the trade mark was applied to the 
material; or 
(c) in the case of infringing articles,  the date on which they were made. 
(2) If during the whole or part of the period referred to subsection (1) the owner of the 
registered trade mark- 
(a) is under a disability; or 
(b) is prevented by fraud or concealment from discovering the facts entitling him to apply 
for an order, 
an application may be made at any time before th e end of the period of 6 years beginning on the date 
on which he ceased to be under a disability or coul d with reasonable diligence have discovered those 
facts, as the case may be. 
(3) In subsection (2), "disability" ( □□□ ) has the same meaning as in section 22(3) of the 
Limitation Ordinance (Cap 347). 
 
Section: 25 Order for disposal 
(1) Where infringing goods, material or articles have been delivered up pursuant to an order 
made under section 23 (order for delivery up), an  application may be made to the court- 
(a) for an order that they be forfeited to such person as the court may think fit; 
(b) for an order that they be destroyed; 
(c) for an order that they be disposed of out side the channels of commerce in such a manner 
as the court may think fit so as to avoid an y harm being caused to the owner of the 
registered trade mark; 
(d) for an order that they be otherwise dealt with as the court may think fit; or 
(e) for a decision that no such order should be made. 
(2) Where there is more than one person interested  in the goods, material or articles, the court 
may make such order under subsection (1) as it thinks just, and it may, in particular, direct that the 
goods, material or articles be disposed of and the proceeds be divided among them as the court 
directs. 
(3) In considering what order, if any, should  be made under subsection (1), the court shall- 
(a) take into account the need for proportionality between the seriousness of the 
infringement and the remedies ordered; 
(b) take into account the interests of third parties; and 
(c) consider whether other remedies available in proceedings in respect of the infringement 
of the registered trade mark would be adequa te to compensate the owner of the registered 
trade mark and any licensee and to protect their interests. 
(4) The court shall not make an order unde r subsection (1) permitting the removal of a 
registered trade mark from any goods, material or  articles to which it has been unlawfully applied 
unless the owner of the registered trade mark consents  to the order or, in the absence of such consent, 
unless the court is satisfied- 
(a) that the goods, material or articles will not enter the channels of commerce once the 
registered trade mark has been removed from the goods, material or articles; or 
(b) having regard to the circumstances of th e case, that there exist exceptional reasons to 
justify the removal of the registered trade mark from the goods, material or articles without the court being satisfied, or wholly  satisfied, as to the matter mentioned in 
paragraph (a). 
(5) Provision may be made by rules of court made by the Chief Justice for the purposes of this 
section as to the service of notice on persons having an  interest in the goods, material or articles, and 
any such person is entitled- 
(a) to appear in proceedings for an order under this section, whether or not he was served 
with notice; and 
(b) to appeal to the Court of Appeal ag ainst any order made under subsection (1)(a), 
(b), (c) or (d), whether or not he appeared. IP/N/1/HKG/T/4 
Page 12  
 
(6) An order made under subsection (1)(a), (b), (c ) or (d) shall not take effect until the end of 
the period within which notice of an appeal may, as provided by those rules of court, be given or, if 
before the end of that period notice of appeal is duly given, until the final determination or 
abandonment of the proceedings on the appeal. 
(7) If the court decides that no order should be made under subsection (1)(a), (b), (c) or (d), 
the person who had possession, custody or control of the goods, material or articles before they were 
delivered up pursuant to the order made under section 23 (order for delivery up) is entitled to their return. 
(8) References in this section to a person having  an interest in goods, material or articles 
include any person in whose favour an order coul d be made under this section or under section 54 of 
the Registered Designs Ordinance (Cap 522) or sec tion 111 or 231 of the Copyright Ordinance (Cap 
528) (which make similar provision in relation to infringement of registered designs, copyright and 
rights in performances). 
 
Section: 26 Proceedings for relief from gro undless threats of infringement proceedings 
(1) Where a person threatens to bring an action against another person (the "threatened 
person") for infringement of a registered trad e mark in respect of any use other than- 
(a) the application of the trade mark to goods or their packaging; or 
(b) the supply of services under the trade mark , any person aggrieved by the threat (the 
"plaintiff") may bring proceedings before  the court for relief under this section. 
(2) The relief which may be applied for is any one or more of the following- 
(a) a declaration to the effect that the threats are unjustifiable; 
(b) an injunction against the continuance of the threats; and 
(c) such damages, if any, as have been sustai ned by the plaintiff by reason of the threats. 
(3) The plaintiff is entitled to the relief cl aimed under subsection (2) unless the defendant 
shows that the acts in respect of which the ac tion was threatened constitute or, if done, would 
constitute, an infringement of the registered trade mark concerned. 
(4) If the defendant shows that the acts in respect of which the action was threatened 
constitute or, if done, would constitu te, an infringement of a registered trade mark, the plaintiff is 
nevertheless entitled to the relief claimed under subsecti on (2) if he shows that the registration of the 
trade mark is invalid or liable to be revoked in a relevant respect. 
(5) The mere notification that a trade mark is re gistered, or that an application for registration 
has been made, does not constitute a threat to bri ng an action for infringement for the purposes of this 
section. 
(6) Proceedings for relief under this section ma y not be brought, or (if brought) may not 
proceed, if- 
(a) the registered owner of the trade mark; or 
(b) a licensee having power to bring proceedings  for infringement of the trade mark, begins 
an action for infringement of the trade mark against the threatened person within 28 days 
after the threat was first made to him and pursues that action with due diligence. 
(7) Nothing in this section makes a barrister or solicitor liable to proceedings under this 
section for any act done by him in a professional capacity on behalf of a client. 
 
PART IV 
REGISTERED TRADE MARKS AS OBJECTS OF PROPERTY 
 
Section: 27 Nature of re gistered trade mark 
(1) A registered trade mark is personal property. 
(2) A registered trade mark is transmissible by assignment, testamentary disposition or 
operation of law in the same way as other personal property; and it is so transmissible either in 
connection with the goodwill of a business or independently. 
(3) An assignment or other transmission of a registered trade mark may be partial, that is, 
limited so as to apply-  IP/N/1/HKG/T/4 
 Page 13 
 
 
(a) in relation to some but not all of the goods or services for which the trade mark is 
registered; or 
(b) in relation to use of the trade mark in a particular manner or in a particular locality. 
(4) An assignment of a registered trade mark, or an assent relating to a registered trade mark, 
is not effective unless it is made in writing and is  signed by or on behalf of the assignor or his 
personal representative. 
(5) The requirement in subsection (4) that an assignment or assent be signed may be satisfied 
in a case where the assignor or personal representative is a corporation by the affixing of the seal of 
the corporation. 
(6) This section applies to an assignment by way of security as in relation to any other 
assignment. 
(7) A registered trade mark may be the subject of a charge in the same way as other personal 
property. 
(8) Nothing in this Ordinance shall be c onstrued as affecting the assignment or other 
transmission of an unregistered trade mark as part of the goodwill of a business. 
 
Section: 28 Co-ownership of registered trade mark 
(1) Where a trade mark is registered in the name of 2 or more persons jointly, each of them is 
entitled, subject to any agreement to the contrary, to  an equal undivided share in the registered trade 
mark. 
(2) Subsections (3) to (6) apply where 2 or more  persons are co-owners of a registered trade 
mark, whether by virtue of subsection (1) or otherwise. 
(3) Subject to subsection (4) and to any agreem ent to the contrary, each  co-owner is entitled, 
by himself or his agents, to do for his own benefit a nd without the consent of or the need to account to 
any other co-owner, any act which would otherwise c onstitute an infringement of the registered trade 
mark. 
(4) One co-owner may not without the consent of each other co-owner- 
(a) grant a licence to use the registered trade mark; or 
(b) assign or charge his share in the registered trade mark. 
(5) Infringement proceedings may be brought under Part III (infringement of registered trade 
marks) by any co-owner, but one co-owner may not, without the leave of the court, 
proceed with the action unless each other co-owner is either joined as a plaintiff or added as a defendant. 
(6) A co-owner who is added as a defendant as mentioned in subsection (5) shall not be made 
liable for any costs in the action unless he takes part in the proceedings.  
(7) Nothing in this section affects the granting of interlocutory relief on the application of one 
co-owner alone. 
(8) Nothing in this section affects the mutual rights and obligat ions of trustees or personal 
representatives, or their rights and obligations as such. 
 
Section: 29 Registration of transact ions affecting registered trade mark 
(1) On application being made to the Registrar by- 
(a) a person claiming to be entitled to an inter est in or under a registered trade mark by 
virtue of a registrable transaction; or 
(b) any other person claiming to be affected by a registrable transaction, the prescribed 
particulars of the transaction shall be entered in the register. 
(2) The following are registrable transactions- 
(a) an assignment of a registered trade mark or any right in it; 
(b) the grant of a licence under a registered trade mark; 
(c) the granting of any security interest, whether fixed or floating, over a registered trade 
mark or any right in or under it; 
(d) the making by personal representatives of an assent in relation to a registered trade mark 
or any right in or under it; and IP/N/1/HKG/T/4 
Page 14  
 
(e) an order of a court, or any authority recognized by the Registrar as a competent 
authority, transferring a registered trade mark or any right in or under it. 
(3) Until an application has been made for registration of the prescribed particulars of a 
registrable transaction- 
(a) the transaction is ineffective as against a pe rson acquiring a conflicting interest in or 
under the registered trade mark in ignorance of the transaction; and 
(b) a person claiming to be a licensee by virtue of the transaction does not have the 
protection of section 35 (rights of licensees generally), section 36 (rights of certain 
exclusive licensees) or section 37 (rights of  sub-licensees under certain exclusive 
licences). 
(4) Where a person becomes the owner or a licensee of a registered trade mark by virtue of a 
registrable transaction, then unless- 
(a) an application for registration of the prescr ibed particulars of the transaction is made 
before the end of the period of 6 months beginning on the date of the transaction; or 
(b) the court is satisfied that it was not practicab le for such an application to be made before 
the end of that period and that an application was made as soon as practicable thereafter, 
he is not entitled to damages or an account of profits in respect of any infringement of the 
registered trade mark occurring after the date of the transaction and before the prescribed 
particulars of the transaction are registered. 
(5) Provision may be made by the rules as to- 
(a) the amendment of registered particulars relati ng to a licence so as to reflect any alteration 
of the terms of the licence; and 
(b) the removal of such particulars from the register- 
(i) where it appears from the registered pa rticulars that the licence was granted for 
a fixed period and that period has expired; or 
(ii) where no such period is indicated and, after such period as may be prescribed, 
the Registrar has notified the parties of his intention to remove the particulars from the register. 
(6) Provision may also be made by the rules as to the amendment or removal from the register 
of particulars relating to a security interest on the application of, or with the consent of, the person 
entitled to the benefit of that interest. 
 
Section: 30 Trust and equities 
(1) No notice of any trust (whether express, impl ied or constructive) shall be entered in the 
register; and the Registrar shall not be affected by any such notice. 
(2) Subject to this Ordinance, equities in respect of a registered trade mark may be enforced in 
like manner as in respect of other personal property. 
(3) For greater certainty, nothing in this section prevents the registration of a trade mark, or 
the registration of particulars of a registrable tran saction, in the name of a person as a trustee of a 
trust. 
Section: 31 Application for registration of a trade mark as an object of property 
Expanded Cross Reference: 
27, 28, 29, 30 
(1) Sections 27 to 30 (which relate to a register ed trade mark as an object of property) apply, 
with any necessary modifications, in relation to an app lication for the registration of a trade mark as in 
relation to a registered trade mark. <* Note - Exp. X-Ref.: Sections 27, 28, 29, 30 *> 
(2) In section 28 (co-ownership of registered tr ade mark), as it applies in relation to an 
application for registration, the refe rence in subsection (1) of that section to the registration of a trade 
mark shall be construed as a referenc e to the making of the application. 
(3) In section 29 (registration of transactions affecting registered trade mark), as it applies in 
relation to a transaction affecting an application for the registration of a trade mark, the references to 
the entry of particulars in the register, and to the ma king of an application to register particulars, shall 
be construed as references to the giving of notice to the Registrar of those particulars. 
  IP/N/1/HKG/T/4 
 Page 15 
 
 
PART V 
LICENSING OF REGISTERED TRADE MARKS 
 
Preliminary 
 
Section: 32 Interpretation 
In this Part, unless the context otherwise requires- 
"exclusive licence" ( □□□ ) means a licence, whether general or li mited, authorizing the licensee to the 
exclusion of all other persons, including the person gr anting the licence, to use a registered trade mark 
in the manner authorized by the licence; and "exclusive licensee" ( □□□ ) shall be construed 
accordingly; 
"licence" ( □□□ ) includes a sub-licence; and "licensee" ( □□□ ) shall be construed accordingly. 
 
Licences 
 
Section: 33 Licences may be general or limited 
(1) A licence to use a registered trade mark may be general or limited. 
(2) A limited licence may, in particular, apply- 
(a) in relation to some but not all of the goods or services for which the trade mark is 
registered; or 
(b) in relation to use of the trade mark in a particular manner or a particular locality. 
(3) A licence is not effective unless it is in writing and is signed by or on behalf of the 
grantor. 
(4) The requirement in subsection (3) may be satisfied in a case where the grantor is a 
corporation by the affixing of the seal of the corporation. 
(5) Unless the licence provides otherwise, it is  binding on a successor in title to the grantor's 
interest; and references in this Ordinance to doing anything with, or without, the consent of the owner 
of a registered trade mark shall be construed accordingly. 
(6) A licence may authorize a li censee to grant a sub-licence. 
 
Section: 34 Exclusive licence may provide same rights as assignment, etc. 
(1) An exclusive licence may prov ide that the exclusive licensee shall, to such extent as may 
be provided by the licence, have the same rights a nd be entitled to the same remedies in respect of 
matters occurring after the grant of the licen ce as if the licence had been an assignment. 
(2) An exclusive licensee has th e same rights against a successor in title who is bound by the 
licence as he has against the person granting the licence. 
 
Infringement proceedings 
 
Section: 35 Rights of licensees generally 
(1) This section has effect with respect to  the rights of a licensee in relation to the 
infringement of a registered trade mark but does not apply where or to the extent that- 
(a) by virtue of section 36(2) (rights of certain exclusive licensees), the licensee has a right 
to bring infringement proceed ings in his own name; or 
(b) by virtue of section 37(2) (rights of sub-licensees under certain exclusive licences), a 
sub-licensee has the right to call on the exclusive licensee to take infringement 
proceedings in respect of any matter whic h affects the sub-licensee's interests. 
(2)  A licensee is entitled, unless his licence or  any licence through which his interest is 
derived provides otherwise, by notice in writing served on the owner of the registered trade mark, to call on the owner to take infringement proceedings  in respect of any matter which affects the 
licensee's interests. 
(3) Unless the licence or any licence through whic h the licensee's interest is derived provides 
otherwise, if the owner of the registered trade mark- IP/N/1/HKG/T/4 
Page 16  
 
(a) refuses to do so; or 
(b) fails to do so within 1 month after being called on to do so, 
the licensee may bring the proceedings in his own name as if he were the owner. 
(4) Where infringement proceedings are brought by a licensee by virtue of this section, the 
licensee may not, without the leave of the court, proceed with the action unless the owner of the 
registered trade mark is either joined as a plaintiff or added as a defendant. 
(5) An owner of a registered trade mark who is added as a defendant as mentioned in 
subsection (4) shall not be made liable for any costs in the action unless he takes part in the 
proceedings. 
(6) Nothing in subsection (4) affects the granting of interlocutory relief on application by a 
licensee alone. 
(7) In infringement proceedings brought by the owner of a registered trade mark, any loss 
suffered or likely to be suffered by licensees shall be taken into account; and the court may give such 
directions as it thinks fit as to the extent to which th e plaintiff is to hold the proceeds of any pecuniary 
remedy on behalf of licensees. 
 
Section: 36 Rights of ce rtain exclusive licensees 
(1) This section applies in relation to an exclusive licensee if, or to the extent that, by virtue of 
section 34(1) (exclusive licence ma y provide same rights as assignment, etc.), he has the same rights 
and is entitled to the same remedies in respect of matters occurring after the grant of the licence as if 
the licence had been an assignment. 
(2) The exclusive licensee is entitled, subject to the provisions of the licence and to this 
section, to bring infringement proceedings in his own name against any pers on other than the owner 
of the registered trade mark. 
(3) The rights of the exclusive licensee and the remedies to which he is entitled are concurrent 
with those of the owner of the registered trade mark ; and references to the owner of a registered trade 
mark in this Ordinance relating to infringement shall be construed accordingly. 
(4) In infringement proceedings brought by an ex clusive licensee by virtue of this section, a 
defendant may avail himself of any defence whic h would have been available to him if the 
proceedings had been brought by the owner of the registered trade mark. 
(5) Where proceedings for infringement of a regi stered trade mark brought by the owner of 
the registered trade mark or an ex clusive licensee relate wholly or partly to an infringement in respect 
of which they have concurrent rights of action, the owner or the exclusive licensee, as the case may 
be, may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant. 
(6) A person who is added as a defendant as men tioned in subsection (5) shall not be made 
liable for any costs in the action unless he takes part in the proceedings. 
(7) Nothing in subsection (5) affects the granti ng of interlocutory relief on application by the 
owner of a registered trade mark or an exclusive licensee alone. 
(8) Where proceedings for infringement of a re gistered trade mark are brought which relate 
wholly or partly to an infringement in respect of which the owner of the registered trade mark and an 
exclusive licensee have or had concurrent rights of action- 
(a) the court shall in assessing damages take into account- 
(i) the terms of the licence; and 
(ii) any pecuniary remedy already awarded or available to either of them in respect of 
the infringement; 
(b) no account of profits shall be directed if an award of damages has been made, or an 
account of profits has been directed, in favour of the other of them in respect of the infringement; and 
(c) if an account of profits is directed, the court shall apportion the profits between them as 
the court considers just. 
(9) Subsection (8) applies whether or not the owner of the registered trade mark and the 
exclusive licensee are both parties to the proceedings; and if they are not both parties, the court may  IP/N/1/HKG/T/4 
 Page 17 
 
 
give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the 
proceeds of any pecuniary reme dy on behalf of the other. 
(10) The owner of a registered trade mark  shall notify any exclusive licensee who has a 
concurrent right of action before applying for an order under section 23 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit 
having regard to the terms of the licence. 
(11) Subsections (5) to (10) have effect subject  to any agreement to the contrary between the 
owner of the registered trade mark and the exclusive licensee. 
 
Section: 37 Rights of sub-licens ees under certain exclusive licences 
(1) This section applies in relation to a sub- licensee of an exclusive licensee if, or to the 
extent that, by virtue of section 36(2) (rights of certain exclusive licensees) , the exclusive licensee has 
a right to bring infringement proceedings in his own name. 
(2) A sub-licensee is entitled, unless his sub-licen ce or any licence through which his interest 
is derived provides otherwise, by notice in wr iting served on the exclusive licensee, to call on the 
exclusive licensee to take infringement proceedings in respect of any matter which affects the sub-
licensee's interests. 
(3) Unless the sub-licence or any licence through which the sub-licensee's interest is derived 
provides otherwise, if the exclusive licensee- 
(a) refuses to do so; or 
(b) fails to do so within 1 month after being called on to do so, 
the sub-licensee may bring the proceedings in his ow n name as if he were the exclusive licensee. 
(4) Where infringement proceedings are brought by  a sub-licensee by virtue of this section, 
the sub-licensee may not, without the leave of th e court, proceed with the action unless both the 
exclusive licensee and the owner of the registered trade mark are either joined as plaintiffs or added as 
defendants. 
(5) A person who is added as a defendant as men tioned in subsection (4) shall not be made 
liable for any costs in the action unless he takes part in the proceedings. 
(6) Nothing in subsection (4) affects the granting of interlocutory relief on application by a 
sub-licensee alone. 
 
PART VI 
APPLICATION AND REGISTRATION PROCEDURES 
 
Application for registration of trade mark 
 
Section: 38 Application for registration 
(1) An application for registration of a trade ma rk shall be filed with the Registrar in the 
prescribed manner. 
(2) The application shall include- 
(a) a request for registration of the trade mark; 
(b) the name and address of the applicant; 
(c) a statement of the goods or services in relation to which it is sought to register the trade 
mark; 
(d) a representation of the trade mark; and 
(e) such other information, documents or matter as may be required by the rules. 
(3) The application shall state whether the trade mark is being used, by the applicant or with 
his consent, in relation to the goods or services in re spect of which it is sought to be registered, and if 
it is not being so used, whether the applicant honestly  intends to use the trade mark, or to allow it to 
be used, in relation to those goods or services. 
(4) The application shall be filed in one of th e official languages and shall also comply with 
the requirements of this Ordinance and the rul es as to the provision of information in, or the 
translation of documents into, one or both of the official languages. IP/N/1/HKG/T/4 
Page 18  
 
(5) The application shall be accompanied by the prescribed application fee and such other 
fees as may be prescribed. 
 
Section: 39 Filing date 
(1) The filing date of an application for regi stration of a trade mark is the date on which 
documents containing everything required by section 38(2)(a) to (d) (application for registration) are 
filed with the Registrar. 
(2) If the documents are filed on different dates, the filing date is the last of those dates. 
(3) References in this Ordinance to the date of  application for registration of a trade mark 
shall be construed as references to the filing date of the application for registration. 
 
Section: 40 Classification of goods and services 
(1) Goods and services shall be classified for the purposes of the registration of trade marks 
according to a prescribed system of classification. 
(2) Any question arising as to the class within  which any goods or services fall shall be 
determined by the Registrar. 
 
Section: 41 Claim to priority 
(1) A person who has duly filed an application for the registration of a trade mark in, or in 
respect of, a Paris Convention country or WTO member , or his successor in title, shall enjoy, for the 
purpose of registering the same trade mark under this Ordinance in respect of any or all of the same 
goods or services, a right of priority for a period of  6 months beginning on the date of filing of the 
first of any such applications, subject to  compliance with any prescribed conditions. 
(2) If the application for registration under this Ordinance is made within the 6-month period 
referred to in subsection (1)- 
(a) the relevant date for the purposes of establishing which rights take precedence shall be 
the date of filing of the first Convention a pplication or WTO application, as the case may 
be; and 
(b) the registrability of the trade mark shall not be affected by any use of the trade mark in 
Hong Kong in the period between that date a nd the date of the application for registration 
under this Ordinance. 
(3) Any filing of an application for registration of a trade mark in, or in respect of, a Paris 
Convention country or WTO member which is equivale nt to a regular national filing under the law of 
that Paris Convention country or WTO member, or under any bilateral or multilateral agreement to 
which it is a party, shall be recognized as giving rise to a right of priority. 
(4) In subsection (3), "regular national filing" ( □□□ ) means a filing of an application for 
registration of a trade mark in, or in respect of, a Paris Convention country or WTO member that establishes the date on which the application was file d, whatever the outcome of the application may 
be. 
(5) A subsequent application for registration of a trade mark that was the subject of a previous 
application, and that is filed in, or in respect of, the same Paris Convention country or WTO member, 
shall be considered as the first application for the purpose of determining priority if, and only if, on 
the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to pub lic inspection and without leaving any rights 
outstanding, and has not served as a basis for claiming a right of priority. 
(6) The previous application referred to in s ubsection (5) may not thereafter serve as a basis 
for claiming a right of priority. 
(7) Provision may be made by the rules as to the manner of claiming a right to priority on the 
basis of a Convention application or WTO application, as the case may be. 
(8) A right to priority arising as a result of a Convention application or WTO application, as 
the case may be, may be assigned or otherwise tr ansmitted, either with the application or 
independently; and the reference in subsecti on (1) to the person's "successor in title" ( □□□ ) shall be 
construed accordingly.  IP/N/1/HKG/T/4 
 Page 19 
 
 
(9) In this section- 
"Convention application" ( □□□ ) means an application for registration of a trade mark in, or in respect 
of, a Paris Convention country; 
"WTO application" ( □□□ ) means an application for registration of a trade mark in, or in 
respect of, a WTO member. 
 
Examination and publication 
 
Section: 42 Examination of application 
(1) The Registrar shall examine whether th e application satisfies the requirements for 
registration under this Ordinance,  including any requirements imposed  by the rules for the purposes of 
this section. 
(2) For the purpose of subsection (1), the Regi strar shall carry out a search of earlier trade 
marks to such extent as he considers necessary. 
(3) If it appears to the Registrar that the requirements for registration are not met, the 
Registrar shall, by notice in writing- 
(a) inform the applicant of the Registrar's opinion; 
(b) inform him that he may make representations to the Registrar to establish that the 
requirements for registration are met or that he  may amend the application so as to meet 
those requirements, but that he must do so within the prescribed period; and 
(c) inform him of the provisions of subsection (4). 
(4) The Registrar shall refuse to accept the application if the applicant- 
(a) fails to respond to the notice before the end of the period prescribed for the purposes of 
subsection (3)(b); or 
(b) fails, before the end of that period, to sa tisfy the Registrar that the requirements for 
registration are met or to amend the application so as to meet those requirements. 
(5) If it appears to the Registrar that the require ments for registration are met, he shall accept 
the application, but the Registrar may withdraw th e acceptance at any time before particulars of the 
application have been published under section 43 ( publication of particulars of application) if it 
appears to him that the application has been accepted in error. 
(6) The Registrar shall notify the applicant in writing of any decision made by him under 
subsection (4) or (5). 
 
Section: 43 Publication of particulars of application 
Where the Registrar accepts an application for registration of a trade mark under section 42 (examination of application), particulars of the appli cation shall be published in the official journal in 
accordance with the rules. 
 
Opposition, withdrawal and amendment 
 
Section: 44 Opposition proceedings 
(1) Any person may, within the prescribed peri od beginning on the date of publication of 
particulars of an application under section 43 (publica tion of particulars of application), give notice to 
the Registrar of opposition to the registration. 
(2) A notice of opposition shall be given in writing in the prescribed manner and shall include 
a statement of the grounds of opposition. 
 
Section: 45 Withdrawal of application 
(1) An applicant for registration of a trade mark may at any time withdraw his application. 
(2) If particulars of the application have been published in accordance with section 43 
(publication of particulars of application), particul ars of the withdrawal shall be published in the 
official journal in acco rdance with the rules. 
 IP/N/1/HKG/T/4 
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Section: 46 Amendment of application 
(1) At the request of the applicant, the Regist rar may amend an application for registration of 
a trade mark as provided in this section. 
(2) An application for registration of a trade mark may be amended for the purpose of adding 
a representation of a registered trade mark to the representation of the trade mark in question but only 
if all of the following conditions are met- 
(a) at the time the request for amendment is made, the registered trade mark is registered in 
the name of the applicant; 
(b) the goods or services for which the registered  trade mark is registered are identical or 
similar to the goods or services covered by the application; and 
(c) the date of registration of the registered trade mark is earlier than the date of application 
for registration of the trade mark in question. 
(3) An application for registration of a trade mark may be amended- 
(a) for the purpose of restricting the goods or services covered by the application; or 
(b) for such other purposes as may be prescribed. 
(4) An application for registration of a trade mark may be amended in other respects but only 
for the purpose of correcting- 
(a) the name or address of the applicant; 
(b) errors of wording or of copying; or 
(c) obvious mistakes, 
and then only where the correction does not substan tially affect the identity of the trade mark or 
extend the goods or services covered by the application. 
(5) Provision shall be made by the rules for- 
(a) the publication of particulars of any am endment which affects the representation of 
the trade mark, or the goods or services covered by the application; and 
(b) the making of objections by any person cl aiming to be affected by the amendment. 
 
Registration 
 
Section: 47 Registration 
(1) Where an application has been accepted by the Registrar under section 42(5) (examination 
of application) and- 
(a) no notice of opposition is given within the pr escribed period referred to in section 44(1) 
(opposition proceedings); or 
(b) all opposition proceedings are withdrawn or decided in favour of the applicant, 
the Registrar shall register the trade mark by enteri ng the prescribed particulars in the register, unless 
it appears to him having regard to matters coming to  his notice since he accepted the application, that 
it was accepted in error. 
(2) On the registration of a trade mark under subsection (1), the Registrar shall issue a 
certificate of registration to the applicant. 
(3) Notice of the registration shall be published in the official journal in accordance with the 
rules. 
 
 
Section: 48 Date of registration 
A trade mark shall be registered as of the filin g date of the application for registration; and 
that date shall be deemed for the purposes of this Or dinance to be the date of registration of the trade 
mark. 
 
Section: 49 Duration of registration 
(1) A trade mark shall be registered for a period of 10 years beginning on its date of 
registration.  IP/N/1/HKG/T/4 
 Page 21 
 
 
(2) Registration may be renewed in accordance with section 50 (renewal of registration) for 
further periods of 10 years. 
 
Section: 50 Renewal of registration 
(1) The owner of a registered trade mark may,  in the prescribed manner, request the renewal 
of the registration of the trade mark, subject to payment of the prescribed renewal fee. 
(2) Provision may be made by the rules for the Re gistrar to inform the owner of a registered 
trade mark, before the expiry of the registration, of the date of expiry and the manner in which the 
registration may be renewed. 
(3) A request for renewal must be made, and th e renewal fee paid, before the expiry of the 
registration; and failing this, the request may be ma de and the renewal fee paid within such further 
period, of not less than 6 months, as may be pr escribed, in which case an additional prescribed fee 
must also be paid within that period. 
(4) Renewal shall take effect from the expiry of the previous registration. 
(5) If the registration is not renewed in accordance with this section, the Registrar shall 
remove the trade mark from the register. 
(6) Provision may be made by the rules for the r estoration of the registration of a trade mark 
which has been removed from the register under subsec tion (5), subject to such conditions, if any, as 
may be prescribed. 
(7) Notice of the renewal or restoration of the registration of a trade mark shall be published 
in the official journal in  accordance with the rules. 
 
Supplementary 
 
Section: 51 Division, merger and registration of series 
(1) Provision may be made by the rules as to- 
(a) the division of an application for the regist ration of a trade mark into 2 or more separate 
applications, each of which claims the same protection under this Ordinance as the 
original application; 
(b) the merging of separate applications for registration of a trade mark, each of which 
claims the same protection under this Ordinance, into a single application; 
(c) the merging of separate registrations, each of which provides the same protection under 
this Ordinance in relation to the same trade mark, into a single registration; and 
(d) the registration of a series of trade marks. 
(2) Without prejudice to the generality of subsec tion (1), provision may be made by the rules 
as to- 
(a) the circumstances in which, and conditi ons subject to which, the division of an 
application for registration, the merging of sep arate applications or registrations, or the 
registration of a series of trade marks, is permitted; 
(b) the effect of a division of an application for registration or of a merger of separate 
applications or registrations; and 
(c) the purposes for which an application for the registration of a trade mark is to be treated 
as a single application and those for which it is to be treated as a number of separate applications. 
(3) In this section, "series of trade marks" ( □□□ ) means a number of trade marks which 
resemble each other as to their material particul ars and differ only as to matters of a non-distinctive 
character not substantially affecting the identity of the trade mark. 
 
PART VII 
PROCEEDINGS AFFECTING REGISTRATION 
 
Revocation, invalidity and variation 
 IP/N/1/HKG/T/4 
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Section: 52 Revocation of registration 
(1) An application for the revocation of the regi stration of a trade mark may be made by any 
person, and may be made either to  the Registrar or to the court. 
(2) The registration of a trade mark may be revoked on any of the following grounds, namely- 
(a) that the trade mark has not been genuinely used in Hong Kong by the owner or with his 
consent, in relation to the goods or services fo r which it is registered, for a continuous 
period of at least 3 years, and there are no valid reasons for non-use (such as import 
restrictions on, or other governmental requi rements for, goods or services protected by 
the trade mark); 
(b) that the trade mark consists of a sign that, in consequence of the acts or the inactivity of 
the owner- 
(i) has become the common name in the trade for goods or services for which the 
trade mark is registered; or 
(ii) has become generally accepted within the trade as the sign that describes goods 
or services for which the trade mark is registered; 
(c) that in consequence of the use made of it by  the owner or with his consent, in relation to 
the goods or services for which it is registered , the trade mark is liable to mislead the 
public, particularly as to the nature, quality or geographical origin of those goods or 
services; or 
(d) that there has been a contravention of or a failure to observe any condition entered in the 
register in relation to its registration. 
(3) For the purposes of subsection (2)- 
(a) use of a trade mark includes use in a form  which differs in elements which do not alter 
the distinctive character of the trade mark  in the form in which it was registered; 
(b) use of a trade mark in Hong Kong includes applying the trade mark to goods or to the 
packaging of goods in Hong Kong solely for export purposes; and 
(c) use of a trade mark in Hong Kong includes, where the trade mark is registered in respect 
of services, use in relation to services provi ded or to be provided outside Hong Kong. 
(4) Subject to subsection (5), the registration of a trade mark shall not be revoked on the 
ground mentioned in subsection (2)(a) if the use described in that sub section is commenced or 
resumed after the expiry of the 3-year period a nd before the application for revocation is made. 
(5) Any commencement or resumption of the u se described in subsection (2)(a) after the 
expiry of the 3-year period but within the period of  3 months before the making of the application for 
revocation shall be disregarded unless preparations for the commencement or resumption began before the owner of the registered trade mark became aware that the application might be made. 
(6) Where grounds for revocation exist in respect of only some of the goods or services for 
which the trade mark is registered, revocati on shall relate to those goods or services only. 
(7) Where the registration of a trade mark is revoked to any extent, the rights of the owner 
shall be deemed to have ceased to that extent as from- 
(a) the date of the application for revocation; or 
(b) if the Registrar or the court is satisfied  that the grounds for revocation existed at an 
earlier date, that earlier date. 
(8) For the purposes of subsection (2)(a), the 3- year period may begin at any time on or after 
the actual date on which particulars of the trade ma rk were entered in the register under section 47(1) 
(registration). 
 
Section: 53 Declaration of invalidity of registration 
(1) An application for a declaration of invalidit y of the registration of a trade mark may be 
made by any person, and may be made eith er to the Registrar or to the court. 
(2) In the case of bad faith in the registration of a trade mark, the Registrar himself may apply 
to the court for a declaration of the invalidity of the registration. 
(3) The registration of a trade mark may be decl ared invalid on the ground that the trade mark 
was registered in contravention of section 11 (absolute grounds for refusal of registration).  IP/N/1/HKG/T/4 
 Page 23 
 
 
(4) Where the trade mark was registered in c ontravention of section 11(1)(b), (c) or (d), it 
shall not be declared invalid if, in consequence of  the use which has been made of it, it has after 
registration acquired a distinctive character in relation to the goods or services for which it is 
registered. 
(5) Subject to subsections (6) and (7), the regi stration of a trade mark may also be declared 
invalid on the ground- 
(a) that there is an earlier trade mark in re lation to which the conditions set out in section 
12(1), (2) or (3) (relative grounds for refusal of registration) apply; or 
(b) that there is an earlier right in relation to  which the condition set out in section 12(4) or 
(5) (relative grounds for refusal of registration) is satisfied. 
(6) The registration of a trade mark may not be declared invalid under subsection (5) if the 
owner of the earlier trade mark or other earlier right has consented to the registration. 
(7) Where a trade mark has been registered on the ground that there has been an honest 
concurrent use of the trade mark and the earlier trade mark or other earlier right, as provided for by section 13 (honest concurrent use, etc.), the registra tion of a trade mark may not be declared invalid 
under subsection (5) unless the Registrar or the court is  satisfied that in fact there had been no honest 
concurrent use of the trade mark and the earlier trade mark or other earlier right. 
(8) Where the grounds of invalidity exist in respect of only some of the goods or services for 
which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. 
(9) Without affecting transactions past and clo sed, where the registration of a trade mark is 
declared invalid under this section to any extent, the registration shall to that extent be deemed never 
to have been made. 
 
Section: 54 Variation of registration 
(1) An application for the variation of the regi stration of a trade mark may be made by any 
person, and may be made either to  the Registrar or to the court. 
(2) The registration of a trade mark may be va ried only on the ground that there has been a 
contravention of or a failure to observe any cond ition entered in the register in relation to its 
registration. 
 
Alteration and surrender 
 
Section: 55 Alteration of registered trade mark 
(1) Except as provided in this section, a regist ered trade mark shall not be altered in the 
register. 
(2) The Registrar may, at the request of any ow ner of a registered trade mark which contains 
or consists of the owner's name or address, allow the alteration of that name or address but only to the extent that the alteration does not substantia lly affect the identity of the trade mark. 
(3) Provision may be made by the rules- 
(a) as to the effect of any such alteration; 
(b) for the publication in the official journal of particulars of any such alteration; and 
(c) for the making of objections by any person claiming to be affected by it. 
 
Section: 56 Surrender of registered trade mark 
(1) The registration of a trade mark may be surre ndered by the owner in respect of some or all 
of the goods or services for which the trade mark is registered. 
(2) Provision may be made by the rules- 
(a) as to the manner and effect of a surrender; and 
(b) for protecting the interests of other persons having a right in the trade mark. 
 
Rectification, correction and amendment of the register 
 IP/N/1/HKG/T/4 
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Section: 57 Rectific ation or correction 
(1) Subject to subsection (2), any person havi ng a sufficient interest may apply for the 
rectification of an error or omission in the register. 
(2) An application for rectification may not be  made in respect of a matter affecting the 
validity of the registration of a trade mark. 
(3) An application for rectification may be made  either to the Registrar or to the court. 
(4) Except where the Registrar or the court directs otherwise, the effect of rectification of the 
register is that the error or omission in qu estion is deemed never to have been made. 
(5) The Registrar may, on request made by the owner of a registered trade mark or a licensee, 
or by any person having an interest in or charge on a registered trade mark the particulars of which 
have been entered in the register under section 29 (registration of transactions affecting registered 
trade mark), enter any change in his name or addr ess, or in any other particulars identifying such 
person, as recorded in the register. 
(6) Where the Registrar is satisfied that an error or  omission in the register is attributable to an 
error or omission on his part or on the part of the staff of the Registry, he may on his own initiative correct the error or omission in the register, but be fore doing so he shall give notice of the proposed 
correction to any person who appears to him to be concerned. 
(7) The Registrar may remove from the register matter appearing to him to have ceased to 
have effect. 
Section: 58 Amendment of entries to a ccord with new classification, etc. 
(1) Provision may be made by the rules to em power the Registrar to do such things as he 
considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks. 
(2) Provision may in particular be made by the rules to empower the Registrar to amend 
entries in the register so as to accord with th e amended or substituted cl assification of goods or 
services. 
(3) Where the rules empower the Registrar to amend entries in the register, provision shall 
also be made by the rules for- 
(a) the giving of notice to any owner of a registered trade mark who may be affected by an 
amendment proposed to be made by the Registrar; 
(b) the publication in the official journal of pa rticulars of the amendments proposed to be 
made by the Registrar; 
(c) the making of objections, within such time as may be prescribed, by any owner of a 
registered trade mark claiming to be affected; and 
(d) the filing of oppositions, within such time  as may be prescribed, by any other person 
claiming to be affected. 
(4) Provision may also be made by the rules to empower the Registrar- 
(a) to require the owner of a registered trade mark, within such time as may be prescribed, to 
file a proposal for amendment of entries in th e register so as to accord with any amended 
or substituted classification of goods or services; and 
(b) to cancel or refuse to renew the registration of the trade mark in the event of the owner 
failing to do so. 
(5) Any such power of amendment shall not be exercised so as to extend the rights conferred 
by the registration, except where it appears to the Registrar that compliance with this requirement 
would involve undue complexity and that any exte nsion would not be substantial and would not 
adversely affect the rights of any person. 
 
Acquiescence in use of registered trade mark 
 
Section: 59 Effect of acquiescence 
(1) Where the owner of an earlier trade mark or other earlier right has acquiesced for a 
continuous period of 5 years in the use of a regist ered trade mark in Hong Kong, being aware of that 
use, there shall cease to be any en titlement on the basis of that earlier trade mark or other earlier right-  IP/N/1/HKG/T/4 
 Page 25 
 
 
(a) to apply for a declaration that the regist ration of the later trade mark is invalid; or 
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to 
which it has been so used, 
unless the application for registration of the later trade mark was made in bad faith. 
(2) Where subsection (1) applies, the owner of the later trade mark is not entitled to oppose 
the use of the earlier trade mark or the expl oitation of the earlier right, as the case may be, 
notwithstanding that the earlier trade mark or earlier right may no longer be invoked against his later 
trade mark. 
 
PART VIII 
DEFENSIVE TRADE MARKS, COLLECTIVE MARKS 
AND CERTIFICATION MARKS 
 
Section: 60 Defensive trade marks 
(1) If a registered trade mark h as been used so much in relation to all or any of the goods or 
services for which it is registered that it has b ecome exceptionally well known in Hong Kong and, as a 
result, its use in relation to other goods or servi ces would be likely to detract from its distinctive 
character in relation to the goods or services for which it has been so used, th e trade mark may, on the 
application of the owner of the registered trade mark made to the Registrar, be registered as a 
defensive trade mark in respect of any or all of those other goods or services. 
(2) A trade mark may be registered as a defensiv e trade mark in respect of particular goods or 
services even if the owner of the registered trade ma rk does not use or intend to use the trade mark in 
relation to those goods or services. 
(3) A trade mark may be registered as a defensiv e trade mark in respect of particular goods or 
services even if it is already registered (otherwise than as a defensive trade mark) in the name of the 
applicant in respect of those goods or services. 
(4) A trade mark that is registered as a defens ive trade mark in respect of particular goods or 
services may be subsequently registered (otherwise th an as a defensive trade mark) in the name of the 
owner of the registered trade mark in respect of the same goods or services. 
(5) The Registrar shall refuse an application made under subsection (1) if- 
(a) the trade mark is not registered as a tr ade mark in the name of the applicant; or 
(b) the extent to which the regi stered trade mark is being or  has been used does not accord 
with the circumstances described in subsection (1). 
(6) Any person may apply to the Registrar or to the court for the revocation of the registration 
of a trade mark as a defensive trade mark on any of the following grounds-  
(a) that the trade mark is not otherwise register ed in the name of the owner of the registered 
defensive trade mark; or 
(b) that the extent to which the registered tr ade mark is being or has been used does not 
accord with the circumstances de scribed in subsection (1), 
and such revocation may be in respect of all or an y of the goods or services in respect of which the 
registered trade mark is registered as a defensive trade mark. 
(7) Section 38(3) (application for registration) , section 52(2)(a), (b) and (c) (revocation of 
registration) and such other provisions of this Ordi nance as may be inconsistent with this section shall 
not apply in relation to defensive trade marks. 
 
Section: 61 Collective marks 
(1) A collective mark is a sign distinguishin g the goods or services of members of the 
association which is the owner of the sign from those of other undertakings. 
(2) This Ordinance applies to collective marks in the manner and to the extent specified in 
Schedule 3. 
 
Section: 62 Certification marks IP/N/1/HKG/T/4 
Page 26  
 
(1) A certification mark is a sign indicating that the goods or services in connection with 
which it is used are certified by the owner of th e sign in respect of origin, material, mode of 
manufacture of goods or performance of servi ces, quality, accuracy or other characteristics. 
(2) This Ordinance applies to certification marks in the manner and to the extent specified in 
Schedule 4. 
 
PART IX 
PARIS CONVENTION AND WORLD TRADE ORGANIZATION 
AGREEMENT: SUPPLEMENTARY PROVISIONS 
 
Section: 63 Well-known trade marks: Article 6bis of Paris Convention 
(1) Subject to section 59 (effect of acquiescence), the owner of a trade mark which is entitled 
to protection under the Paris Convention as a well-known trade mark is entitled to restrain by 
injunction the use in Hong Kong of a trade mark whic h, or the essential part of which, is identical or 
similar to his trade mark, in relation to identical or similar goods or services, where such use is likely 
to cause confusion on the part of the public. 
(2) Nothing in subsection (1) affects the continua tion of any use in good faith of a trade mark 
which was begun before the commencement of this section. 
Section: 64 National em blems, etc.: Article 6ter of Paris Convention 
(1) Subject to section 11(6) (absolute grounds for refusal of registration), a trade mark which 
consists of or contains the flag of a Paris Conven tion country or WTO member shall not be registered 
without the authorization of the competent authorities of that country or member, unless it appears to the Registrar that use of the flag in the manner proposed is permitted without such authorization. 
(2) Subject to section 11(6) (absolute grounds for refusal of registration), a trade mark which 
consists of or contains the armorial bearings or any other state em blem of a Paris Convention country 
or WTO member which is protected under the Paris Convention (including any armorial bearings or state emblems entitled to such protection by virtue of the World Trade Organization Agreement) shall 
not be registered without the authorization of the competent authorities of that country or member. 
(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Paris 
Convention country or WTO member and indicating c ontrol and warranty shall not, where the sign or 
hallmark is protected under the Paris Convention (including any sign or hallmark entitled to such 
protection by virtue of the World Trade Organization Agreement), be registered in relation to goods or services which are the same as, or are of a similar kind to, those in relation to which it indicates control and warranty, without the authorization of the competent authorities of that country or 
member. 
(4) The provisions of this section as to nationa l flags and other state emblems, and official 
signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such 
flag or other emblem, or sign or hallmark. 
(5) Nothing in this section prevents the regist ration of a trade mark on the application of a 
national of a country who is authorized to make use of a state emblem, or official sign or hallmark, of 
that country, notwithstanding that it is similar to that of another country. 
(6) Where by virtue of this section the authorization of the competent authorities of a Paris 
Convention country or WTO member is or would be  required for the registration of a trade mark, 
those authorities are entitled to restrain by injunction any use of the trade mark in Hong Kong without their authorization. 
 
Section: 65 Emblems, etc ., of certain internationa l organizations: Article 6 ter of Paris 
Convention 
(1) This section applies to- 
(a) the armorial bearings, flags or other emblems; and 
(b) the abbreviations and names, 
of international intergovernmental  organizations of which one or more Paris Convention countries or 
WTO members are members.  IP/N/1/HKG/T/4 
 Page 27 
 
 
(2) A trade mark which consists of or contains  any such emblem, abbreviation or name which 
is protected under the Paris Convention (including any emblem, abbreviation or name entitled to such 
protection by virtue of the World Trade Organizati on Agreement) shall not be registered without the 
authorization of the international intergovernment al organization concerned, unless it appears to the 
Registrar that the use of the emblem, a bbreviation or name in the manner proposed- 
(a) is not such as to suggest to the public th at a connection exists between the organization 
and the trade mark; or 
(b) is not likely to mislead the public as to the existence of a connection between the user 
and the organization. 
(3) The provisions of this section as to em blems of an internati onal intergovernmental 
organization apply equally to anything which from a he raldic point of view imitates any such emblem. 
(4) Where by virtue of this section the author ization of an international intergovernmental 
organization is or would be required for the registra tion of a trade mark, that organization is entitled to 
restrain by injunction any use of the trade mark in Hong Kong without its authorization. 
(5) Nothing in this section affects the rights of a person whose use in good faith of the trade 
mark in question began before  16 November 1977 (when the relevant provisions of the Paris 
Convention entered into force in relation to Hong Kong). 
Section: 66 Notification under Ar ticle 6ter of Paris Convention 
(1) For the purposes of section 64 (national emblems, etc.), state emblems of a country (other 
than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris 
Convention, or as protected under the Paris Conven tion by virtue of the World Trade Organization 
Agreement, only if, or to the extent that- 
(a) the country in question has notified the World Intellectual Property Organization in 
accordance with Article 6ter(3) of the Paris Convention that it desires to protect that emblem, sign or hallmark; 
(b) the notification remains in force; and 
(c) no objection to the notification has been transmitted to the World Intellectual Property 
Organization on behalf of Hong Kong in acco rdance with Article 6ter(4) of the Paris 
Convention or any such objection has been withdrawn. 
(2) For the purposes of section 65 (emblems, etc., of certain international organizations), the 
emblems, abbreviations and names of an intern ational intergovernmental organization shall be 
regarded as protected under the Paris Convention, or as protected under the Paris Convention by virtue of the World Trade Organization Agreement, only if, or to the extent that- 
(a) the organization in question has notified the World Intellectual Property Organization in 
accordance with Article 6ter(3) of the Paris Convention that it desires to protect that emblem, abbreviation or name; 
(b) the notification remains in force; and 
(c) no objection to the notification has been transmitted to the World Intellectual Property 
Organization on behalf of Hong Kong in acco rdance with Article 6ter(4) of the Paris 
Convention or any such objection has been withdrawn. 
(3) Notification in accordance with Article 6ter(3) of the Paris Convention shall have effect 
only in relation to applications fo r registration made more than 2 months after the receipt of the 
notification. 
(4) The Registrar shall keep and make availabl e for public inspection at the Registry by any 
person, during the normal business hours of the Registry, and free of charge, a list of- 
(a) the state emblems and official signs or hallmarks; and 
(b) the emblems, abbreviations and names of international intergovernmental organizations, 
which are for the time being protected under the Pa ris Convention by virtue of a notification under 
Article 6ter(3) of the Paris Convention. 
 
PART X 
ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS 
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The register of trade marks 
 
Section: 67 Register to be kept 
(1) The Registrar shall keep at the Registry a register to be known as the register of trade 
marks. 
(2) There shall be entered in the register in accordance with this Ordinance and the rules- 
(a) particulars as to applications for registra tion of trade marks, including the filing dates 
and dates of priority; 
(b) the names of owners of registered trade marks; 
(c) particulars as to transactions, instruments or events affecting rights in or under registered 
trade marks and applications for registration; and 
(d) such other matters as the Registrar may think fit. 
(3) The register need not be kept in documentary form. 
 
Section: 68 Right to inspect the register 
(1) Subject to any rules, the public shall have a right to inspect the register during the normal 
business hours of the Registry. 
(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. 
 
Section: 69 Right to copies of entries 
(1) Any person who applies for a certified copy of an entry in the register or a certified extract 
from the register shall be entitled to obtain such a co py or extract on payment of a fee prescribed in 
relation to certified copies and extracts. 
(2) Any person who applies for an uncertified copy  or extract shall be entitled to such a copy 
or extract on payment of a fee prescribed in relation to uncertified copies and extracts. 
(3) Applications under this section shall be made in such manner as may be prescribed. 
(4) 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  (2) 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. 
 
Powers and duties of Registrar 
 
Section: 70 Decisions of Regist rar to be taken after hearing 
(1) Without prejudice to any rule of law or to any provision of this Ordinance requiring the 
Registrar to hear any party to proceedings before him,  or to give any such party an opportunity to be 
heard, the Registrar shall, before taking any decision on any matter under this Ordinance or the rules which is or may be adverse to any party to any proceedings before him,  give that party an opportunity 
to be heard. 
(2) The Registrar shall give a party to proceedi ngs before him at least 14 days' notice of the 
time when he may be heard unless that party consents to shorter notice. 
 
Section: 71 Registrar's powers in proceedings before the Registrar 
(1) The Registrar may, for the purposes of pro ceedings before him under this Ordinance- 
(a) summon witnesses; 
(b) receive written or oral evidence on oath or affirmation; and 
(c) require the production of documents or articles for inspection and provide for the manner 
of inspection. 
(2) The Registrar may make such orders as he thinks fit as respects any matter mentioned in 
subsection (1). 
(3) Any order made by the Registrar under this section shall, with leave of the court, be 
enforceable in like manner as an order of the court. 
  IP/N/1/HKG/T/4 
 Page 29 
 
 
Section: 72 Power to give preliminary advice, etc. 
(1) The Registrar shall have the power to gi ve to a person who proposes to apply for the 
registration of a trade mark 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 thos e of other undertakings 
within the meaning of section 3(1) (meaning of "trade mark"). 
(2) Any person who wishes to obtain such advice shall apply to the Registrar in the prescribed 
manner. 
(3) If, on an application for the registration of a trade mark as to which the Registrar has given 
such advice in the affirmative, made within 3 months after the advice is given, the Registrar, after 
further investigation or consideration, gives notice to the applicant of objection on the ground that the 
trade mark is not capable of distinguishing the goods or services of one undertaking from those of 
another, the applicant shall be entitled, on giving no tice of withdrawal of the application under section 
45 (withdrawal of application) within the prescribed period, to have repaid to him any fees paid for 
the filing of the application. 
 
Section: 73 Power to specify official journal, etc. 
(1) The Registrar may from time to time, by  notice published in the Gazette, specify a 
publication to be the official journal of record for the purposes of this Ordinance, with effect as of the 
date specified in the notice. 
(2) Where a publication is specified under subsec tion (1), every notice, request, document or 
other matter required by this Ordinance or the rules to be published in the official journal shall, from 
the effective date specified in the notice, be published in the publication so specified, and any 
reference in this Ordinance or the rules to the official journal shall be construed accordingly. 
(3) The Registrar may publish or cause to be published a journal in which there may be 
published such documents and info rmation relating to trade marks as the Registrar thinks fit. 
(4) For the avoidance of doubt, the Registrar ma y specify the Gazette or the journal referred 
to in subsection (3) to be the official journal of record. 
(5) A publication specified under subsection (1) and the journal referred to in subsection (3) 
need not be in a documentary form. 
(6) A notice published under subsection (1) shall not  be regarded as subsidiary legislation for 
the purpose of section 34 of the Interpretati on and General Clauses Ordinance (Cap 1). 
 
Section: 74 Power to require use of forms 
(1) The Registrar may require the use of such forms as he may, by notice published in the 
official journal, specify in connection with the re gistration of a trade mark or any other proceeding 
before him under this Ordinance. 
(2) A notice under subsection (1) may contain any direction of the Registrar with respect to 
the use of a form specified in the notice. 
(3) A notice published under subsection (1) shall not  be regarded as subsidiary legislation for 
the purpose of section 34 of the Interpretati on and General Clauses Ordinance (Cap 1). 
 
Section: 75 Immunity of Regist rar as regards official acts 
Neither the Registrar nor any public officer- 
(a) shall be taken to warrant the validity of  the registration of a trade mark under this 
Ordinance; or 
(b) shall incur any liability by reason of, or in  connection with, any examination required or 
authorized by this Ordinance, or any repor t or other proceeding consequent on any such 
examination. 
 
Legal proceedings, appeals and related matters 
 
Section: 76 Language of proceedings before Registrar IP/N/1/HKG/T/4 
Page 30  
 
(1) Except as otherwise provided in the rules, and notwithstanding section 5 of the Official 
Languages Ordinance (Cap 5), the official language in  which an application for registration of a trade 
mark is filed shall be used as the language of the proceedings in all proceedings before the Registrar 
under this Ordinance. 
(2) The rules may- 
(a) require, in respect of any document filed or to be filed with the Registrar in proceedings 
under this Ordinance, the filing of a transla tion of the document into the language of the 
proceedings or into one or both official languages; 
(b) provide for the use by any person in oral pr oceedings before the Registrar, of a language 
other than the language of the proceedings; 
(c) in respect of documents to be used for th e purpose of evidence in proceedings before the 
Registrar and which are in a language othe r than the language of the proceedings, 
provide for the filing of the document in that other language and the filing of a 
translation of the document into the language of the proceedings or into one of the official languages; 
(d) in respect of information provided or to be provided to the Registrar and which is to be 
entered in the register, require the provisi on of that information in both official 
languages; and 
(e) provide for the issue of and specify the power  of the Registrar to issue documents in one 
or both official languages. 
(3) Rules made for the purposes of subsection (2)(a) or (d)- 
(a) may specify periods within which transla tions of documents into the language of the 
proceedings or into the official languages are to be filed or within which information in 
the official languages is to be provided; and 
(b) may provide for extensions, upon applicati on by a party to the proceedings, of such 
periods, and may require that applications fo r such extension shall be subject to the 
payment of a prescribed fee. 
 
Section: 77 Procedure in case of opti on to apply to court or Registrar 
(1) Where under this Ordinance a person has an option to make an application either to the 
court or to the Registrar on a question concerning a registered trade mark or an application for 
registration of a trade mark, then- 
(a) if any proceedings concerning the registered trade mark or application for registration in 
question is pending before the court, the application must be made to the court; and 
(b) if in any other case the application is made to  the Registrar, he may, at any stage of the 
proceedings, refer the application to the court, or he may, after hearing the parties, determine the question. 
(2) Subsection (1) is without prejudice to the court's powers, apart from this section, to 
determine any question referred to in that subsection. 
 
Section: 78 Application of rules of evidence 
Except as otherwise provided in this Ordinance,  the Registrar is not bound by the rules of 
evidence in any proceedings before him under this Ordinance and may inform himself of any matter 
that is before him in any way that he  reasonably believes to be appropriate. 
 
Section: 79 Register is prima facie evidence 
(1) Subject to subsection (4), the register shall be prima facie evidence of anything required or 
authorized by this Ordinance or the rules to be registered. 
(2) A certificate purporting to be signed by the Registrar and certifying that any entry in the 
register which he is authorized by this Ordinance or the rules to make has or has not been made, or 
that any other thing which he is so authorized to  do has or has not been done, shall be prima facie 
evidence of the matters so certified. 
(3) Each of the following, that is to say-  IP/N/1/HKG/T/4 
 Page 31 
 
 
(a) a copy of an entry in the register or an extract from the register which is supplied under 
section 69(1) (right to copies of entries); 
(b) a copy of- 
(i) any document kept in the Registry; 
(ii) an extract from any such document; or 
(iii) any application for registration of a trade mark, 
which purports to be a certified copy or a certified ex tract shall, subject to subsection (4), be admitted 
in evidence in all courts, and in all proceedings, without further proof and without production of any 
original. 
(4) This section is without prejudice to section 22A or 22B or Part IV of the Evidence 
Ordinance (Cap 8) and any provision made by virtue of that section or Part. 
Section: 80 Registration is prima facie evidence of validity, etc. 
In any proceedings relating to a registered trad e mark, including proceedings for rectification 
of the register, the registration of a person as owner of a trade mark shall be prima facie evidence of 
the validity of the original registration and of any subsequent assignment or other transmission of it. 
 
Section: 81 Certificate of valid ity of contested registration 
(1) If in proceedings before the court the validity of the registration of a trade mark is 
contested and it is found by the court that the trad e mark is validly registered, the court may give a 
certificate to that effect. 
(2) If the court gives such a certificate and in any subsequent proceedings, either before the 
court or the Registrar- 
(a) the validity of the registration is again questioned on the same or substantially the same 
grounds; and 
(b) the owner of the registered trade mark obtai ns a final order, judgment or decision in his 
favour, 
the owner is entitled to his costs on an indemnity basis unless the court or the Registrar, as the case may be, directs otherwise. 
(3) Subsection (2) does not extend to the cost s of an appeal in any such proceedings. 
 
Section: 82 Burden in civil proceedin gs of proving use of trade mark 
(1) If, in any civil proceedings under this Ordina nce in which the owner of a registered trade 
mark is a party, a question arises as to the use to which the trade ma rk has been put, the burden of 
proving that use shall lie with the owner. 
(2) If, in any civil proceedings under this Ordi nance in which a licensee of a registered trade 
mark is a party, a question arises as to the use to which the trade ma rk has been put, the burden of 
proving that use shall lie with- 
(a) the owner of the trade mark, where he is a party to the proceedings; or 
(b) the licensee, where the owner is not a party to the proceedings. 
 
Section: 83 Registrar's appearance in  proceedings involving the register 
(1) In proceedings before the c ourt involving an application for- 
(a) the revocation or variation of the registration of a trade mark; 
(b) a declaration of the invalidity of the registration of a trade mark; or 
(c) the rectification of the register, 
the Registrar is entitled to appear and be heard, and shall appear if so directed by the court. 
(2) Unless otherwise directed by the court, the Registrar may instead of appearing, submit to 
the court a statement in writing signed by him, giving particulars of- 
(a) any proceedings before him in relation to the matter in issue; 
(b) the grounds of any decision given by him; 
(c) the practice of the Registrar or the Registry in like cases, if any; and 
(d) such matters relevant to the issues involved in the proceedings and within his knowledge 
as the Registrar thinks fit, IP/N/1/HKG/T/4 
Page 32  
 
and the statement shall be deemed to form part of  the evidence in the proceed ings before the court. 
 
Section: 84 Appeals from decisi ons or orders of Registrar 
(1) An appeal lies to the court from any decision or order of the Registrar under this 
Ordinance. 
(2) Unless the court otherwise directs, any appeal under this Ordinance which concerns an 
application for registration of a trade mark shall be heard in public. 
(3) In any appeal under this Ordinance- 
(a) the Registrar shall be entitled to appear a nd be represented and be heard in support of his 
decision or order; and 
(b) the Registrar shall appear if so directed by the court. 
(4) In this section, "decision" ( □□□ ) includes any act of the Registrar made in the exercise of 
a discretion vested in him by or under this Ordinance. 
 
Section: 85 General powers of court 
The court may, for the purpose of determining an y question in the exercise of its original or 
appellate jurisdiction under this Ordinance, make  any order or exercise any other power which the 
Registrar could have made or exercised fo r the purpose of determining that question. 
 
Section: 86 Costs of proceedings before court 
(1) In all proceedings before the court under th is Ordinance the court may award to any party 
such costs as it may consider reasonable. 
(2) If in any such proceedings the court directs that any costs of one party shall be paid by 
another party, the court may settle the amount of the co sts by fixing a lump sum or may direct that the 
costs shall be taxed on a scale specified by the co urt, being a scale of cost s prescribed by rules of 
court. 
 
Section: 87 Costs of pro ceedings before Registrar 
(1) The Registrar may, in proceedings before him under this Ordinance, by order award to any 
party such costs as he may consider reasonable and dir ect how and by what parties they are to be paid. 
(2) Any costs awarded under this section shall, if the court so orders, be recoverable by 
execution issued from the court as if they were payable under an order of that court. 
(3) Provision may be made by the rules- 
(a) to empower the Registrar, in such cases as may be prescribed, to require a party to any 
proceedings before him to give security for costs in relation to those proceedings; and 
(b) as to the consequences if security is not given. 
 
Miscellaneous matters 
 
Section: 88 Recognition of agents 
(1) Except as otherwise provided by the rules,  any act required or authorized by this 
Ordinance to be done by or to a person in connection with the registration of a trade mark, or any 
procedure relating to a trade mark, may be done by or to an agent authorized by that person orally or in writing. 
(2) The rules may in particular authorize the Registrar to refuse to recognize as an agent in 
respect of any business under this Ordinance any person specified for the purpose in the rules. 
(3) The Registrar shall refuse to recognize as an  agent a person having neither residence nor a 
place of business in Hong Kong. 
 
Section: 89 Hours of business and business days  IP/N/1/HKG/T/4 
 Page 33 
 
 
(1) The Registrar may give directions specifying the hours of business of the Registry for the 
purpose of the transaction of business under this Or dinance and the days which are business days for 
that purpose. 
(2) Business done on any day after the specified  hours of business, or on a day which is not 
a business day, shall be deemed to have been done  on the next business day; and where the time for 
doing anything under this Ordinance expires on a day which is not a business day, that time shall be 
extended to the next business day. 
(3) Directions given by the Registrar under th is section may make different provision for 
different classes of business and shall be published in the prescribed manner. 
 
Section: 90 Government's right to sell forfeited articles 
Nothing in this Ordinance affects the right of  the Government or any person deriving title 
directly or indirectly from the Government to dis pose of or use articles forfeited under the law relating 
to customs or excise. 
 
PART XI 
SUBSIDIARY LEGISLATION 
 
Section: 91 Rules 
(1) The Registrar may make rules- 
(a) for the purposes of any provision of this Ordinance which contemplates or authorizes the 
making of rules (other than rules of court) with respect to any matter; 
(b) prescribing anything authorized or require d by a provision of this Ordinance to be 
prescribed; and 
(c) generally for regulating the practi ce and procedure under this Ordinance. 
(2) Without prejudice to the generality of sub section (1), rules made under this section may 
make provision- 
(a) as to the manner of filing of applications  for registration of a trade mark and other 
documents with the Registrar; 
(b) as to the making of applications for registration of a trade mark by a partnership, 
association or other unincorporated body and th e registration of trade marks in the name 
of such a body; 
(c) requiring and regulating the translation of documents and the filing and authentication of 
any translation; 
(d) as to the manner of publication of any notice, request, document or other matter required 
by this Ordinance or the rules to be published in the official journal; 
(e) specifying the person or class of persons by whom any such notice, request, document or 
matter shall be published in the official j ournal and specifying the consequences of a 
failure to publish; 
(f) as to the time when applications and other documents shall be treated as having been 
filed with the Registrar for the purpo ses of this Ordinance or the rules; 
(g) as to the service of documents; 
(h) regulating the procedure to be followed in connection with any proceedings or other 
matter before the Registrar and authorizing the rectification of irregularities of procedure; 
(i) requiring fees to be paid in connection with any such proceedings or matter or in 
connection with the provision of any service by the Registry; 
(j) empowering the Registrar to tax costs awar ded by him in any proceedings before him; 
(k) regulating the mode of giving evidence in any such proceedings, whether orally or in 
writing and whether by means of the production of documents or articles or otherwise; 
(l) regulating the inspection of documents or articles; 
(m) prescribing time limits for doing anything re quired to be done in connection with any   
proceedings under this Ordinance; IP/N/1/HKG/T/4 
Page 34  
 
(n) providing for the extension of any time lim it so prescribed, or specified by the Registrar, 
whether or not it has already expired; 
(o) as to the public inspection of the register and the supply of certified or uncertified copies 
of entries in, or certified or uncertified copies of extracts from, the register in the event 
the register is not kept in documentary form; and 
(p) providing for the publication and sale of documents and information by the Registry. 
(3) Rules made under this section may make different provisions for different cases. 
(4) Rules made under this section- 
(a) authorizing the rectification of irregularities of procedure; or 
(b) providing for the alteration of any period of time, 
may authorize the extension or further extension of any period of time notwithstanding that the period 
has already expired. 
(5) Rules made under this section prescribing fees shall not be made except with the consent 
of the Financial Secretary. 
(6) Any rules made under subsection (2)(i) may- 
(a) prescribe fees fixed at; or 
(b) provide for fees to be fixed at, 
levels that provide for the recovery of expendi ture incurred or likely to be incurred by the 
Government or other authority in the exercise of a ny or all functions under this Ordinance, and shall 
not be limited by reference to the amount of admini strative or other costs incurred or likely to be 
incurred in the exercise of any particular function. 
(7) Provision may in particular be made by the rules as to- 
(a) the payment of a single fee in respect of 2 or more matters; and 
(b) the circumstances, if any, in which a fee may be waived or refunded. 
(8) Rules may be made under this section providing for arrangements to be made by the 
Registrar for the publication of reports of decisions  or orders made by the Registrar under this 
Ordinance or decisions or orders relating to trade marks made by any court or body (whether in Hong 
Kong or elsewhere). 
 
Section: 92 Regulations 
The Chief Executive in Council may by regulation- 
(a) add to Schedule 1 (Paris Convention countries and WTO members) the name of- 
(i) any country which has acceded to the Paris Convention; 
(ii) any country, territory or area which has acceded to the World Trade Organization 
Agreement; 
(b) delete from Schedule 1 the name of- 
(i) any country which has denounced the Paris Convention; 
(ii) any country, territory or area which has denounced the World Trade Organization Agreement; 
(c) otherwise amend Schedule 1; 
(d) amend Schedule 2 (determination of well-known trade marks); 
(e) amend Schedule 3 (collective marks); and 
(f) amend Schedule 4 (certification marks). 
 
PART XII 
OFFENCES 
 
Section: 93 Falsification of the register 
(1) Any person who makes or causes to be made  a false entry in the register, knowing or 
having reason to believe that it is false, commits an offence. 
(2) Any person who- 
(a) makes or causes to be made anything falsel y purporting to be a copy of an entry in the 
register; or  IP/N/1/HKG/T/4 
 Page 35 
 
 
(b) produces or tenders or causes to be produced  or tendered in evidence any such thing, 
knowing or having reason to believe that it is false, commits an offence. 
(3) Any person who commits an offence under this section is liable- 
(a) on summary conviction, to a fine at leve l 5 and to imprisonment for 6 months; and 
(b) on conviction on indictment, to a fine at level 5 and to imprisonment for 2 years. 
 
Section: 94 Falsely representing trade mark as registered 
(1) Any person who- 
(a) falsely represents that a sign is a registered trade mark; or 
(b) makes a false representation as to the goods or services for which a trade mark is 
registered, 
knowing or having reason to believe that the representa tion is false, commits an offence and is liable 
on conviction to a fine at level 3. 
(2) For the purposes of this section, the use in  Hong Kong in relation to a trade mark of- 
(a) the word "registered" ( □□□ ); or 
(b) any other word or symbol importing a reference, either express or implied, to 
registration, 
is deemed to be a representation as to registration under this Ordinance unless it is shown that the 
reference is to registration elsewhere than in Hong  Kong and that the trade mark is in fact so 
registered for the goods or services in question. 
 
Section: 95 Misuse of titl e "Trade Marks Registry" 
Any person who uses on his place of business, or on any document issued by him, or 
otherwise, the words "Trade Marks Registry" ( □□□ ) or any other words suggesting that his place of 
business is, or is officially connected with, the Re gistry, commits an offence and is liable on summary 
conviction to a fine at level 4. 
 
Section: 96 Offences committed by and proceedings relating to corporations 
(1) Where an offence under this Ordinance committe d by a corporation is proved to have been 
committed with the consent or connivance of a director, manager, secretary or other similar officer of the corporation, or a person purporting to act in an y such capacity, he as well as the corporation is 
guilty of the offence and liable to be pr oceeded against and punished accordingly. 
(2) The following provisions apply for the pur poses of proceedings for an offence under this 
Ordinance alleged to have been committed by a corporation- 
(a) any rules of court relating to the service of documents; and 
(b) section 19A (plea by a corporation before a magistrate) and section 87 (procedure on 
charge of indictable offence against corporation) of the Magistrates Ordinance (Cap 
227). 
(3) In this section, "director" ( □□□ ) includes- 
(a) any person who occupies the position of di rector, by whatever name called; and 
(b) any person in accordance with whose direc tions or instructions the directors of a 
corporation are accustomed to act. 
(4) A person shall not be treated as a direct or of a corporation by reason only that the 
directors of the corporation act on advice given by him in a professional capacity. 
 
PART XIII 
TRANSITIONAL PROVISIONS, CONSEQUENTIAL AND 
RELATED AMENDMENTS AND REPEALS 
 
Section: 97 Transitional matters, etc. 
(1) Schedule 5 (transitional matters) has effect as respects transitional matters. 
(2) The Chief Executive in Council may make re gulations containing provisions of a savings 
or transitional nature consequent on  the enactment of this Ordinance. IP/N/1/HKG/T/4 
Page 36  
 
(3) Without prejudice to the generality of subsec tion (2), the regulations may in particular 
provide for- 
(a) the application of provisions of this Ordina nce or the rules made under this Ordinance; or 
(b) the continued application of provisions of the repealed Trade Marks Ordinance (Cap 43) 
or the repealed Trade Marks Rules (Cap 43 sub. leg.), 
in connection with any matter specified in the regulations. 
(4) Regulations made under this section may, if they  so provide, be deemed to have come into 
operation on a date earlier than the date on which they are published in the Gazette but not earlier than 
the date on which Schedule 5 (transitio nal matters) comes into operation. 
(5) To the extent that any regulations come in to operation on a date earlier than the date on 
which they are published in the Gazette, those regulations shall be construed so as not to- 
(a) affect, in a manner prejudicial to any person,  the rights of that person existing before the 
date on which the regulations are published in the Gazette; or 
(b) impose liabilities on any person in respect of anything done, or omitted to be done, 
before that date. 
(6) In the event of an inconsistency between any regulations made under this section and the 
provisions of Schedule 5, the latter shall prevail to the extent of the inconsistency. 
 
Section: 98 Consequential and related amendments 
The enactments specified in Schedule 6 are amended in accordance with that Schedule. 
 
Section: 99 Repeals 
(1) The Trade Marks Ordinance (Cap 43) is repealed. 
(2) The Trade Marks Rules (Cap 43 sub. leg.) are repealed. 
(3) The Trade Marks (Emergency) Or dinance (Cap 263) is repealed. 
(4) The Trade Marks (Emergency) Rul es (Cap 263 sub. leg.) are repealed. 
 
Schedule: 1 PARIS CONVENTION COUNTRIES AND WTO MEMBERS 
[sections 2 & 92] 
 
Countries which have acceded to 
the Paris Convention 
 
The Republic of Albania 
The Democratic People's Republic of Algeria 
Antigua and Barbuda 
Republic of Argentina 
The Republic of Armenia 
The Commonwealth of Australia 
The Republic of Austria 
The Republic of Azerbaijan 
The Commonwealth of The Bahamas 
The State of Bahrain 
The People's Republic of Bangladesh 
Barbados 
The Republic of Belarus 
The Kingdom of Belgium 
Belize 
The Republic of Benin 
The Kingdom of Bhutan 
The Republic of Bolivia 
Bosnia and Herzegovina 
The Republic of Botswana  IP/N/1/HKG/T/4 
 Page 37 
 
 
The Federative Republic of Brazil 
The Republic of Bulgaria 
The Burkina Faso 
The Republic of Burundi 
Kingdom of Cambodia 
The Republic of Cameroon 
Canada 
The Central African Republic 
The Republic of Chad 
Republic of Chile 
The People's Republic of China 
The Republic of Colombia 
The Democratic Republic of Congo 
The Republic of Congo 
The Republic of Costa Rica 
The Republic of Cote d'Ivoire 
The Republic of Croatia 
The Republic of Cuba 
The Czech Republic 
The Kingdom of Denmark 
The Republic of Djibouti 
The Commonwealth of Dominica 
The Dominican Republic 
The Republic of Ecuador 
The Arab Republic of Egypt 
The Republic of El Salvador 
The Republic of Equatorial Guinea 
Republic of Estonia 
The Republic of Finland 
The Republic of France 
The Gabonese Republic 
The Republic of the Gambia 
Georgia 
The Federal Republic of Germany 
The Republic of Ghana 
Grenada 
The Republic of Guatemala 
The Republic of Guinea 
The Republic of Guinea-Bissau 
The Cooperative Republic of Guyana 
The Republic of Haiti 
The Hellenic Republic (Greece) 
Holy See 
The Republic of Honduras 
The Republic of Hungary 
The Republic of Iceland 
The Republic of India 
The Republic of Indonesia 
The Islamic Republic of Iran 
The Republic of Iraq 
Ireland 
The State of Israel 
The Republic of Italy 
Jamaica IP/N/1/HKG/T/4 
Page 38  
 
Japan 
The Hashemite Kingdom of Jordan 
The Republic of Kazakhstan 
The Republic of Kenya 
The Democratic People's Republic of Korea 
Republic of Korea 
Kyrghyz Republic 
The Lao People's Democratic Republic 
Republic of Latvia 
The Republic of Lebanon 
The Kingdom of Lesotho 
The Republic of Liberia 
The Great Socialist People's Libyan Arab Jamahiriya 
The Principality of Liechtenstein 
The Republic of Lithuania 
The Grand Duchy of Luxembourg 
The Republic of Macedonia 
The Republic of Madagascar 
The Republic of Malawi 
Malaysia 
The Republic of Mali 
The Republic of Malta 
The Islamic Republic of Mauritania 
The Republic of Mauritius 
The Republic of Moldova 
The Principality of Monaco 
Mongolia 
The Kingdom of Morocco 
The Republic of Mozambique 
The Kingdom of Nepal 
The Kingdom of the Netherlands 
New Zealand 
The Republic of Nicaragua 
The Republic of Niger 
The Federal Republic of Nigeria 
The Kingdom of Norway 
The Sultanate of Oman 
The Republic of Panama 
The Independent State of Papua New Guinea 
Republic of Paraguay 
The Republic of Peru 
Republic of the Philippines 
The Republic of Poland 
The Portuguese Republic 
The State of Qatar 
Romania 
The Russian Federation 
The Republic of Rwanda 
The Federation of Saint Kitts and Nevis 
Saint Lucia 
Saint Vincent and the Grenadines 
The Republic of San Marino 
The Democratic Republic of Sao Tome and Principe 
The Republic of Senegal  IP/N/1/HKG/T/4 
 Page 39 
 
 
The Republic of Sierra Leone 
The Republic of Singapore 
The Slovak Republic 
The Republic of Slovenia 
The Republic of South Africa 
Spain 
The Democratic Socialist Republic of Sri Lanka 
The Republic of the Sudan 
The Republic of Suriname 
The Kingdom of Swaziland 
The Kingdom of Sweden 
Swiss Confederation 
The Republic of Syprus (Cyprus) 
The Syrian Arab Republic 
The Republic of Tajikistan 
The Republic of Togo 
The Kingdom of Tonga 
The Republic of Trinidad and Tobago 
The Republic of Tunisia 
The Republic of Turkey 
Turkmenistan 
The Republic of Uganda 
Ukraine 
The United Arab Emirates 
The United Kingdom of Great Britain and Northern Ireland 
The United Republic of Tanzania 
The United States of America 
The United States of Mexico 
Oriental Republic of Uruguay 
The Republic of Uzbekistan 
The Bolivar Republic of Venezuela 
The Socialist Republic of Viet Nam 
The Federal Republic of Yugoslavia 
The Republic of Zambia 
The Republic of Zimbabwe 
 
Countries, territories and areas 
which have acceded to the World 
Trade Organization Agreement 
 
The Republic of Albania 
The Republic of Angola 
Antigua and Barbuda 
Republic of Argentina 
The Commonwealth of Australia 
The Republic of Austria 
The State of Bahrain 
The People's Republic of Bangladesh 
Barbados 
The Kingdom of Belgium 
Belize 
The Republic of Benin 
The Republic of Bolivia 
The Republic of Botswana IP/N/1/HKG/T/4 
Page 40  
 
The Federative Republic of Brazil 
Negara Brunei Darussalam 
The Republic of Bulgaria 
The Burkina Faso 
The Republic of Burundi 
The Republic of Cameroon 
Canada 
The Central African Republic 
The Republic of Chad 
Republic of Chile 
The People's Republic of China 
The Republic of Colombia 
The Democratic Republic of Congo 
The Republic of Congo 
The Republic of Costa Rica 
The Republic of Cote d'Ivoire 
The Republic of Croatia 
The Republic of Cuba 
The Czech Republic 
The Kingdom of Denmark 
The Republic of Djibouti 
The Commonwealth of Dominica 
The Dominican Republic 
The Republic of Ecuador 
The Arab Republic of Egypt 
The Republic of El Salvador 
Republic of Estonia 
European Community 
The Republic of The Fiji Islands 
The Republic of Finland 
The Republic of France 
The Gabonese Republic 
The Republic of the Gambia 
Georgia 
The Federal Republic of Germany 
The Republic of Ghana 
Grenada 
The Republic of Guatemala 
The Republic of Guinea 
The Republic of Guinea-Bissau 
The Cooperative Republic of Guyana 
The Republic of Haiti 
The Hellenic Republic (Greece) 
The Republic of Honduras 
The Republic of Hungary 
The Republic of Iceland 
The Republic of India 
The Republic of Indonesia 
Ireland 
The State of Israel 
The Republic of Italy 
Jamaica 
Japan 
The Hashemite Kingdom of Jordan  IP/N/1/HKG/T/4 
 Page 41 
 
 
The Republic of Kenya 
Republic of Korea 
The State of Kuwait 
Kyrghyz Republic 
Republic of Latvia 
The Kingdom of Lesotho 
The Principality of Liechtenstein 
The Republic of Lithuania 
The Grand Duchy of Luxembourg 
The Macao Special Administrative Region 
The Republic of Madagascar 
The Republic of Malawi 
Malaysia 
The Republic of Maldives 
The Republic of Mali 
The Republic of Malta 
The Islamic Republic of Mauritania 
The Republic of Mauritius 
The Republic of Moldova 
Mongolia 
The Kingdom of Morocco 
The Republic of Mozambique 
The Union of Myanmar 
The Republic of Namibia 
Netherlands  For the Kingdom in Europe and for the Netherlands Antilles 
New Zealand 
The Republic of Nicaragua 
The Republic of Niger 
The Federal Republic of Nigeria 
The Kingdom of Norway 
The Sultanate of Oman 
The Islamic Republic of Pakistan 
The Republic of Panama 
The Independent State of Papua New Guinea 
Republic of Paraguay 
The Republic of Peru 
Republic of the Philippines 
The Republic of Poland 
The Portuguese Republic 
The State of Qatar 
Romania 
The Republic of Rwanda 
The Federation of Saint Kitts and Nevis 
Saint Lucia 
Saint Vincent and the Grenadines 
The Republic of Senegal 
Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu 
The Republic of Sierra Leone 
The Republic of Singapore 
The Slovak Republic 
The Republic of Slovenia 
The Solomon Islands 
The Republic of South Africa 
Spain IP/N/1/HKG/T/4 
Page 42  
 
The Democratic Socialist Republic of Sri Lanka 
The Republic of Suriname 
The Kingdom of Swaziland 
The Kingdom of Sweden 
Swiss Confederation 
The Republic of Syprus (Cyprus) 
Royal Thai (Thailand) 
The Republic of Togo 
The Republic of Trinidad and Tobago 
The Republic of Tunisia 
The Republic of Turkey 
The Republic of Uganda 
The United Arab Emirates 
The United Kingdom of Great Britain and Northern Ireland 
The United Republic of Tanzania 
The United States of America 
The United States of Mexico 
Oriental Republic of Uruguay 
The Bolivar Republic of Venezuela 
The Republic of Zambia 
The Republic of Zimbabwe 
(Schedule 1 replaced L.N. 181 of 2002) 
 
Schedule: 2 DETERMINATION OF WELL-KNOWN TRADE MARKS 
[sections 4 & 92] 
 
1. Factors for consideration 
(1) In determining for the purposes of section 4 (meaning of "well-known trade mark") 
whether a trade mark is well known in Hong Kong, th e Registrar or the court shall take into account 
any factors from which it may be inferred th at the trade mark is well known in Hong Kong. 
(2) In particular, the Registrar or the court shall consider any information submitted to the 
Registrar or the court from which it may be inferred that the trade mark is, or is not, well known in 
Hong Kong, including, but not limited to, information concerning the following- 
(a) the degree of knowledge or recognition of the trade mark in the relevant sectors of the 
public; 
(b) the duration, extent and geographical area of any use of the trade mark; 
(c) the duration, extent and geographical area of any promotion of the trade mark, including 
advertising or publicity and the presentation, at fairs or exhibitions, of the goods or 
services to which the trade mark applies; 
(d) the duration and geographical area of an y registrations, or any applications for 
registration, of the trade mark, to the extent that they reflect use or recognition of the trade mark; 
(e) the record of successful enforcement of rights  in the trade mark, in particular, the extent 
to which the trade mark has been recognized as a well-known trade mark by competent 
authorities in foreign jurisdictions; and 
(f) the value associated with the trade mark. 
(3) The factors mentioned in subsection (2) are intended to serve as guidelines to assist the 
Registrar and the court to determine whether the trade mark is well known in Hong Kong. It is not 
a precondition for reaching that determination that information be submitted with respect to any of 
those factors or that equal weight be given to each of them. Rather, the determination in each case 
will depend upon the particular circumstances of that case. In some cases all of the factors may be 
relevant. In other cases some of the factors may be relevant. In still other cases none of the factors  IP/N/1/HKG/T/4 
 Page 43 
 
 
may be relevant, and the decision may be based on  additional factors that are not mentioned in 
subsection (2). Such additional factors may be rele vant alone, or in combination with one or more 
of the factors mentioned in subsection (2). 
(4) For the purpose of subsection (2)(a), "relevant sectors of the public" ( □□□ ) includes, but 
is not limited to-  
(a) actual or potential consumers of the type of goods or services to which the trade mark 
applies; 
(b) persons involved in channels of distribution of the type of goods or services to which the 
trade mark applies; and 
(c) business circles dealing with the type of goods or services to which the trade mark 
applies. 
(5) Where a trade mark is determined to be well known in at least one relevant sector of the 
public in Hong Kong, it shall be cons idered to be well known in Hong Kong. 
(6) For the purpose of subsection (2)(e), "com petent authorities in foreign jurisdictions" 
(□□□ ) means administrative, judicial or quasi-judicial authorities in jurisdictions other than Hong 
Kong that are competent to determine whether a trade mark is a well-known trade mark, or in 
enforcing the protection of well-known trade marks, in their respective jurisdictions. 
 
2. Factors not required to be established 
For the purpose of determining whether a trade mark is well known in Hong Kong, it is not 
necessary to establish- 
(a) that the trade mark has been used, or has been registered, in Hong Kong; 
(b) that an application for registration of the trade mark has been filed in Hong Kong; 
(c) that the trade mark is well known, or has been registered, in a jurisdiction other than 
Hong Kong; 
(d) that an application for registration of the tr ade mark has been filed in a jurisdiction other 
than Hong Kong; or 
(e) that the trade mark is well known by the public at large in Hong Kong. 
 
Schedule: 3 COLLECTIVE MARKS 
[sections 61 & 92] 
 
General 
 
1. This Ordinance applies to collective marks subject to the provisions of this Schedule. 
 
Signs of which a collective mark may consist 
 
2. In relation to a collective mark, the reference in section 3(1) of this Ordinance (meaning of "trade 
mark") to distinguishing goods or services of one undertaking from those of other undertakings shall 
be construed as a reference to dis tinguishing goods or services of members of the association which is 
the owner of the collective mark from those of other undertakings. 
 
Indication of geographical origin 
 
3.  (1) Notwithstanding section 11(1)(c) of this  Ordinance (absolute grounds for refusal of 
registration), a collective mark which consists of a sign which may serve, in trade or business, to 
designate the geographical origin of goods or services may be registered. 
(2) However, the owner of such a collective mark is not entitled to prohibit the use of the sign 
in accordance with honest practices in industrial or  commercial matters, in particular, by a person who 
is entitled to use a geographical name. 
Mark not to be misleading as to 
character or significance IP/N/1/HKG/T/4 
Page 44  
 
 
4.  (1) A collective mark shall not be registered if the public is liable to be misled as regards its 
character or significance, in particular, if it is likely to be taken to be someth ing other than a collective 
mark. 
(2) The Registrar may accordingly require that a sign in respect of which an application is 
made for registration as a collective mark include some indication that it is a collective mark. 
(3) Notwithstanding section 46 of this Ordinance (amendment of application), an application 
may be amended so as to comply with any require ment imposed by the Registrar under subsection (2). 
 
Regulations governing use of collective mark 
 
5.  (1) An applicant for registration of a collectiv e mark must file with the Registrar regulations 
governing the use of the collective mark. 
(2) The regulations must specify- 
(a) the persons authorized to use the collective mark; 
(b) the conditions of membership of the association; and 
(c) where they exist, the conditions of use of the collective mark, including any sanctions 
against misuse. 
(3) The rules may impose further requirements with which the regulations must comply. 
 
Approval of regulations by Registrar 
 
6.  (1) A collective mark shall not be register ed unless the regulations governing its use comply 
with section 5(2) of this Schedule and any fu rther requirements imposed by the rules. 
(2) A collective mark shall not be registered if  the regulations governing its use are contrary 
to accepted principles of morality. 
(3) An applicant for registration of a collectiv e mark must file the regulations and pay the 
prescribed fee before the end of the prescribed period after the date of the application for registration. 
(4) If an applicant fails to comply with subsection (3), the application shall be deemed to be 
withdrawn. 
7.  (1) The Registrar shall consider whether th e requirements mentioned in section 6(1) and (2) 
of this Schedule are met. 
(2) If it appears to the Registrar that the require ments mentioned in section 6(1) and (2) of this 
Schedule are not met, he shall inform the a pplicant and give him an opportunity to mak 
representations or to file amended regulations w ithin such period as the Registrar may specify. 
(3) The Registrar shall refuse the application if th e applicant fails to respond before the end of 
the specified period or fails before the end of that period- 
(a) to satisfy the Registrar that the requiremen ts mentioned in section 6(1) and (2) of this 
Schedule are met; or 
(b) to file regulations amended so as to meet those requirements. 
(4) If it appears to the Registrar that the require ments mentioned in section 6(1) and (2) of this 
Schedule, and the other requirements for registration,  are met, he shall accept the application and shall 
proceed in accordance with section 43 of this Ordinance (publication of particulars of application). 
8. In addition to any other grounds on which th e registration may be opposed, notice of opposition 
may be given relating to any of the matters mentioned in section 6(1) and (2) of this Schedule. 
 
Regulations to be open to inspection 
 
9. The regulations governing the use of a registered collective mark shall be open to public inspection 
in the same way as the register. 
 
Amendment of regulations 
  IP/N/1/HKG/T/4 
 Page 45 
 
 
10.  (1) An amendment of the regulations governi ng the use of a registered collective mark is not 
effective until the amended regulations are filed and are accepted by the Registrar. 
(2) Before accepting any amended regulations the Registrar may, in any case where it 
appears to him expedient to do so, cause or require notice of the amendment to be published in the 
official journal. 
(3) If notice of the amendment is published in the official journal, notice of opposition may 
be given relating to any of the matters mentioned in section 6(1) and (2) of this Schedule. 
 
Infringement: rights of authorized users 
 
11. The following provisions apply in relation to an authorized user of a registered collective 
mark as in relation to a licensee of a registered trade mark- 
(a) section 18(6) of this Ordinance (infri ngement of registered trade mark); and 
(b) section 25(3) of this Ordinance (order for disposal). 
12.  (1) The following provisions, which corr espond to the provisions of section 35 of this 
Ordinance (rights of licensees generally), have effect  as regards the rights of an authorized user in 
relation to infringement of a registered collective mark. 
(2) An authorized user is entitled, subject to any agreement to the contrary between him and 
the owner of the registered collective mark, to call on the owner to take infringement proceedings in 
respect of any matter which affects his interests. 
(3) If the owner- 
(a) refuses to do so; or 
(b) fails to do so within 1 month after being called upon to do so, 
the authorized user may bring the proceedings in his own name as if he were the owner. 
(4) Where infringement proceedings are brought by virtue of this section, the authorized user 
may not, without the leave of the court, proceed with  the action unless the owner is either joined as a 
plaintiff or added as a defendant. 
(5) Nothing in subsection (4) affects the granti ng of interlocutory relief on an application by 
an authorized user alone. 
(6) A person who is added as a defendant as men tioned in subsection (4) shall not be made 
liable for any costs in the action unless he takes part in the proceedings. 
(7) In infringement proceedings brought by the ow ner of a registered collective mark, any loss 
suffered or likely to be suffered by authorized users shall be taken into account; and the court may 
give such directions as it thinks fit as to the extent to which the plaintiff is to  hold the proceeds of any 
pecuniary remedy on behalf of such users. 
 
Grounds for revocation of registration 
 
13. Apart from the grounds of revocation mentioned in section 52 of this Ordinance (revocation of 
registration), the registration of a collec tive mark may be revoked on the ground- 
(a) that the manner in which the owner uses the collective mark or allows it to be used has 
caused it to become liable to mislead the public  in the manner referred to in section 4(1) 
of this Schedule; 
(b) that the owner has failed to observe, or to secure the observance of, the regulations 
governing the use of the collective mark; or 
(c) that an amendment of the regulations has been made so that the regulations- 
(i) no longer comply with section 5(2) of th is Schedule and any further requirements 
imposed by the rules; or 
(ii) are contrary to accepted principles of morality. 
 
Grounds for invalidity of registration 
 IP/N/1/HKG/T/4 
Page 46  
 
14. Apart from the grounds of invalidity mentioned in  section 53 of this Ordinance (declaration of 
invalidity of registration), the registration of a collective mark may be declared invalid on the ground 
that the collective mark was registered in breach of section 4(1) or 6(1) or (2) of this Schedule. 
 
Schedule: 4 CERT IFICATION MARKS 
[sections 62 & 92 & Schedule 5] 
 
General 
 
1. This Ordinance applies to certification mark s subject to the provisions of this Schedule. 
 
Signs of which a certification mark may consist 
 
2. In relation to a certification mark, the reference in  section 3(1) of this Or dinance (meaning of "trade 
mark") to distinguishing goods or services of one undertaking from those of other undertakings shall 
be construed as a reference to di stinguishing goods or services which are certified from those which 
are not. 
 
Indication of geographical origin 
 
3.  (1) Notwithstanding section 11(1)(c) of this  Ordinance (absolute grounds for refusal of 
registration), a certification mark which consists of a sign which may serve, in trade or business, to 
designate the geographical origin of goods or services may be registered. 
(2) However, the owner of such a certification mark is not entitled to prohibit the use of the 
sign in accordance with honest practices in industria l or commercial matters, in particular, by a person 
who is entitled to use a geographical name. 
 
Nature of owner's trade or business 
 
4. A certification mark shall not be registered if the owner carries on a trade or business involving the supply of goods or services of the kind certified. 
 
 
 
 
 
 
Mark not to be misleading as to 
character or significance 
 
5.  (1) A certification mark shall not be registered if the public is liable to be misled as regards its 
character or significance, in particular, if it is likely to be taken to be something other than a 
certification mark. 
(2) The Registrar may accordingly require that a sign in respect of which an application is 
made for registration as a certification mark include some indication that it is a certification mark. 
(3) Notwithstanding section 46 of this Ordinance (amendment of application), an application 
may be amended so as to comply with any require ment imposed by the Registrar under subsection (2). 
 
Regulations governing use of certification mark 
 
6.  (1) An applicant for registration of a certification mark must file with the Registrar regulations governing the use of the certification mark. 
(2) The regulations must indicate-  IP/N/1/HKG/T/4 
 Page 47 
 
 
(a) the persons authorized to use the certification mark; 
(b) the characteristics to be certified by the certification mark; 
(c) how the certifying body is to test those characteristics and to supervise the use of the 
certification mark; 
(d) the fees, if any, to be paid in connection with the use of the certification mark; and 
(e) the procedures for resolving disputes. 
(3) The rules may impose further requirements with which the regulations must comply. 
 
Approval of regulations, etc. 
 
7.  (1) A certification mark shall not be registered unless- 
(a) the regulations governing its use comply with section 6(2) of this Schedule and any 
further requirements imposed by the rules; and 
(b) the applicant is competent to certify the goods or services for which thecertification mark 
is to be registered. 
(2) A certification mark shall not be registered if  the regulations governing its use are contrary 
to accepted principles of morality. 
(3) An applicant for registration of a certificati on mark must file the regulations and pay the 
prescribed fee before the end of the prescribed period after the date of the application for registration. 
(4) If an applicant fails to comply with subsecti on (3), the application shall be deemed to be 
withdrawn. 
8.  (1) The Registrar shall consider whether th e requirements mentioned in section 7(1) and (2) 
of this Schedule are met. 
(2) If it appears to the Registrar that the require ments mentioned in section 7(1) and (2) of this 
Schedule are not met, he shall inform the a pplicant and give him an opportunity to make 
representations or to file amended regulations w ithin such period as the Registrar may specify. 
(3) The Registrar shall refuse the application if th e applicant fails to respond before the end of 
the specified period or fails before the end of that period- 
(a) to satisfy the Registrar that the requiremen ts mentioned in section 7(1) and (2) of this 
Schedule are met; or 
(b) to file regulations amended so as to meet those requirements. 
(4) If it appears to the Registrar that the require ments mentioned in section 7(1) and (2) of this 
Schedule, and the other requirements for registration,  are met, he shall accept the application and shall 
proceed in accordance with section 43 of this Ordinance (publication of particulars of application). 
9. In addition to any other grounds on which th e registration may be opposed, notice of opposition 
may be given relating to any of the matters mentioned in section 7(1) and (2) of this Schedule. 
 
 
Regulations to be open to inspection 
 
10. The regulations governing the use of a registered certification mark shall be open to public 
inspection in the same way as the register. 
 
Amendment of regulations 
 
11.  (1) An amendment of the regulations governin g the use of a registered certification mark is 
not effective until the amended regulations are filed and are accepted by the Registrar. 
(2) Before accepting any amended regulations th e Registrar may, in any case where it appears 
to him expedient to do so, cause or require notice of  the amendment to be published in the official 
journal. 
(3) If notice of the amendment is published in the official journal, notice of opposition may be 
given relating to the matters mentioned in  section 7(1) and (2) of this Schedule. 
 
Consent to assignment of registered certification mark IP/N/1/HKG/T/4 
Page 48  
 
 
12. The assignment or other transmission of a registered certification mark is not effective without the 
consent of the Registrar. 
 
Infringement: rights of authorized users 
 
13. The following provisions apply in relation to an authorized user of a registered certification mark 
as in relation to a licensee of a registered trade mark- 
(a) section 18(6) of this Ordinance (infri ngement of registered trade mark); and 
(b) section 25(3) of this Ordinance (order for disposal). 
14. In infringement proceedings brought by the ow ner of a registered certification mark, any loss 
suffered or likely to be suffered by authorized users shall be taken into account; and the court may 
give such directions as it thinks fit as to the extent to which the plaintiff is to  hold the proceeds of any 
pecuniary remedy on behalf of such users. 
 
Grounds for revocation of registration 
 
15. Apart from the grounds of revocation mentioned in section 52 of this Ordinance (revocation of 
registration), the registration of a certifi cation mark may be revoked on the ground- 
(a) that the owner has begun to carry on such a trade or business as is mentioned in section 4 
of this Schedule; 
(b) that the manner in which the owner uses the ce rtification mark or allows it to be used has 
caused it to become liable to mislead the public  in the manner referred to in section 5(1) 
of this Schedule; 
(c) that the owner has failed to observe, or to secure the observance of, the regulations 
governing the use of the certification mark; 
(d) that an amendment of the regulations has been made so that the regulations- 
(i) no longer comply with section 6(2) of th is Schedule and any further requirements 
imposed by the rules; or 
(ii) are contrary to accepted principles of morality; or 
(e) that the owner is no longer competent to certify the goods or services for which the 
certification mark is registered. 
 
Grounds for invalidity of registration 
 
16. Apart from the grounds of invalidity mentioned in  section 53 of this Ordinance (declaration of 
invalidity of registration), the registration of a certification mark may be declared invalid on the 
ground that the certification mark was registered in br each of section 4, 5(1) or 7(1) or (2) of this 
Schedule. 
 
Schedule: 5 TRANSITIONAL MATTERS 
 
Expanded Cross Reference: 
14, 15, 16, 17, 18, 19, 20, 21 
[section 97] 
 
Preliminary 
 
1.  (1) In this Schedule- 
"commencement date" ( □□□ ) means the date on which this Schedule comes into operation; 
"existing registered mark" ( □□□ ) means a mark that, immediately before the 
commencement date, constituted a registered trade ma rk, certification trade mark or defensive trade 
mark under the repealed Ordinance;  IP/N/1/HKG/T/4 
 Page 49 
 
 
"new register" ( □□□ ) means the register of trade marks kept under section 67 of this Ordinance 
(register to be kept); 
"old law" ( □□□ ) means- 
(a) the repealed Ordinance and the repealed Rules; and 
(b) any other enactment or rule of law applyi ng to existing registered marks immediately  
before the commencement date; 
"old register" ( □□□ ) means the register of trade marks kept under the repealed Ordinance; 
"the repealed Ordinance" ( □□□ ) means the Trade Marks Ordinance (Cap 43), as in operation 
immediately before its repeal by this Ordinance; 
"the repealed Rules" ( □□□ ) means the Trade Marks Rules (Cap 43 sub. leg.), as in 
operation immediately before their repeal by this Ordinance. 
(2) Unless the context otherwise requires, all words and expressions used in this Schedule and 
defined in section 2(1) of the repealed Ordina nce have the same meaning as in the repealed 
Ordinance. 
(3) In the event of an inconsistency between  this Schedule and section 92 of the repealed 
Ordinance (transitional provisions relating to the Intellectual Property (World Trade Organization 
Amendments) Ordinance 1996), section 92 of the repealed  Ordinance shall prevail to the extent of the 
inconsistency. 
(4) For the purposes of this Schedule, a matter shall be treated as pending on the 
commencement date if- 
(a) the matter was pending before the Registrar under the old law but no written decision on the matter had been issued by the Registrar before the commencement date; 
(b) the matter was the subject of a written decisi on issued by the Registrar under the old law before 
the commencement date but the decision was subject  to appeal under the old law and the period for 
commencing the appeal had not yet expired; 
(c) the matter was the subject of proceedings under the old law which were pending before a court 
immediately before the commencement date; or 
(d) the matter was the subject of an order made by a court before the commencement date but the 
order was subject to appeal under the old law and the period for commencing the appeal had not yet 
expired. 
(5) For ease of reference, provisions of the repealed Ordinance referred to in this Schedule, 
and other relevant provisions of the repealed Ordi nance, are set out in the Annex to this Schedule. 
 
Existing registered marks 
 
2.  (1) Existing registered marks shall be deemed  to be transferred on the commencement date to 
the new register and, subject to this Schedule, sha ll be deemed to be registered under this Ordinance. 
(2) Existing registered marks registered as a se ries under section 26 of the repealed Ordinance 
(series of trade marks) shall be deemed to be similarly registered in the new register. 
(3) Provision may be made by the rules for putting any entries in the old register of any such 
series in the same form as is required for new entries made in the new register on or after the 
commencement date. 
(4) In any other case notes indicating that existi ng registered marks are associated with other 
marks shall cease to have effect on the commencement date. 
3.  (1) Proceedings brought under section 49 of th e repealed Ordinance (power to expunge or 
vary registration for breach of condition) which ar e pending on the commencement date shall be dealt 
with under the old law, and any necessary alterations and entries shall be made in the new register. 
(2) Any entry in the old register of a disclaimer, condition or limitation which relates to an 
existing registered mark shall be deemed to be transf erred to the new register and shall have effect as 
if entered in the new register in  accordance with this Ordinance. 
 
Effects of registration-infringement 
 IP/N/1/HKG/T/4 
Page 50  
 
4.  (1) Subject to subsections (2) and (3)- 
(a) sections 14 to 21 of this Ordinance (which  relate to registration and infringement) apply 
in relation to an existing registered mark as from the commencement date; and <* Note - 
Exp. X-Ref.: Sections 14, 15, 16, 17, 18, 19, 20, 21 *> 
(b) section 22 of this Ordinance (action fo r infringement) applies in relation to the 
infringement of an existing registered mark  committed on or after the commencement 
date. 
(2) The old law applies to infringements committed before the commencement date. 
(3) It is not an infringement of- 
(a) an existing registered mark; or 
(b) a registered trade mark of which the distin ctive elements are the same or substantially 
the same as those of an existing registered mark and which is registered for the same 
goods or services, to continue on or after the commencement date any use which did not 
constitute an infringement of the existin g registered mark under the old law. 
 
Infringing goods, material or articles 
 
5. Section 23 (order for delivery up), section 24 (limitation on order for delivery up) and section 25 
(order for disposal) of this Ordinance apply to infringing goods, material or articles whether made before, on or after the commencement date. 
 
Rights and remedies of licensee or authorized user 
 
6.  (1) Section 35 of this Ordinance (rights of  licensees generally) applies to licences granted 
before the commencement date, but only in relation to infringements committed on or after that date. 
(2) Section 14 of Schedule 4 to this Ordinan ce (court to take into account loss suffered by 
authorized users, etc.) applies only in relation to infringements committed on or after the commencement date. 
 
Co-ownership of registered mark 
 
7.  (1) Subject to subsection (2), section 28 of th is Ordinance (co-ownership of registered trade 
mark) applies as from the commencement date to an existing registered mark of which 2 or more persons were immediately before the comme ncement date registered as joint owners. 
(2) So long as the relations between the joint owners remain such as are described in section 
19 or 19A of the repealed Ordinance (jointly owned trade marks relating to goods; and to services), as 
the case may be, there shall be taken to be an agreement to exclude the operatio n of section 28 of this 
Ordinance (co-ownership of registered trade mark). 
Assignment, etc. of registered mark 
 
8.  (1) Section 27 of this Ordinance (nature of registered trade mark) applies to transactions and events occurring on or after the commencement date  in relation to an existing registered mark. 
(2) Existing entries under section 43 of the repealed Ordinance (registration of assignments 
and transmissions) shall be deemed to be transferred on the commencement date to the new register and shall have effect as if made under section 29  of this Ordinance (registration of transactions 
affecting registered trade mark). 
(3) Provision may be made by the rules for putti ng such existing entries in the same form as is 
required for new entries made in the new register on or after the commencement date. 
(4) An application for registration under section 43 of the repealed Ordinance (registration of 
assignments and transmissions) which is pending on the commencement date shall be treated as an application for registration under section 29 of this Ordinance (registration of transactions affecting 
registered trade mark) and shall proceed accordingly. 
(5) The Registrar may require the applicant to amend his application for registration so as to 
conform with the requirements of this Ordinance.  IP/N/1/HKG/T/4 
 Page 51 
 
 
(6) Where before the commencement date a person has become entitled by assignment or 
transmission to an existing registered mark but has not registered his title, any application for 
registration made on or after that date shall be made under section 29 of this Ordinance (registration 
of transactions affecting registered trad e mark) and shall proceed accordingly. 
(7) Section 43 of the repealed Ordinance (registration of assignments and transmissions) 
continues to apply to cases to which subsections (4) to (6) apply and, in such cases, section 29(3) and 
(4) of this Ordinance (registration of transactions affecting registered trade mark) does not apply as 
regards the consequences of failing to register. 
 
Licensing of registered mark 
 
9.  (1) Section 33 (licences may be general or limited) and section 34(2) (exclusive licence may provide same rights as assignment, etc.) of this Ordinance apply only in relation to licences granted on or after the commencement date; and the old law c ontinues to apply in re lation to licences granted 
before that date. 
(2) Existing entries under section 58 of the repeal ed Ordinance (registered users) shall be 
deemed to be transferred to the new register on the commencement date and sh all have effect as if 
made under section 29 of this Ordinance (registration of  transactions affecting registered trade mark). 
(3) Provision may be made by the rules for putti ng such existing entries in the same form as is 
required for new entries made in the new register on or after the commencement date. 
(4) An application made under section 58 of th e repealed Ordinance (registered users) for 
registration as a registered user which is pending on the commencement date shall be treated as an 
application for registration of a licence under sec tion 29(1) of this Ordinance (registration of 
transactions affecting registered trade mark) and shall proceed accordingly. 
(5) The Registrar may require the applicant to amend his application so as to conform with 
the requirements of this Ordinance. 
(6) Any proceedings pending on the commencem ent date under section 60 of the repealed 
Ordinance (variation or cancellation of registration as a registered user) shall be dealt with under the 
old law, and any necessary alterations and entr ies shall be made to the new register. 
 
Pending applications for registration 
 
10.  (1) Subject to subsection (6), an application for registration of a mark under the repealed Ordinance which is pending on the co mmencement date shall be dealt with under the old law, and if 
registered, the mark shall be treated for the purposes of this Schedule as an existing registered mark. 
(2) Section 15 of the repealed Ordinance (opposition to registration) and any other provisions 
of the old law relating to oppositions to registration continue to appl y in relation to an application 
mentioned in subsection (1). 
(3) Provision may be made by the rules for regulating the practice and procedure in 
connection with an application mentioned in subsec tion (1) or an opposition to registration mentioned 
in subsection (2). 
(4) Without prejudice to the generality of s ubsection (3), the rules may make provision- 
(a) authorizing the rectification of irregularities of procedure; 
(b) modifying time limits for anything required to be done under the rules; and 
(c) providing for the extension of  any time limit so prescribed whether or not it has already 
expired. 
(5) The power of the Registrar under section 91 of this Ordinance (rules) to make rules 
regulating the practice and procedure, and as to th e matters mentioned in subsection (2) of that 
section, is exercisable in relation to such applica tions; and different provision may be made for such 
applications from that made for other applications. 
(6) Sections 24, 25(2), 26(2) and 56 of the repealed Ordinance (provisions as to associated 
trade marks) shall be disregarded in dealing, on or after the commencement date, with an application 
for registration of a mark under the repealed Ordinance. 
 IP/N/1/HKG/T/4 
Page 52  
 
Conversion of pending application 
 
11.  (1) In the case of pending applications for registration referred to in section 10(1) of this 
Schedule which have not been adve rtised under section 14 of the repealed Ordinance (advertisement 
of application) before the commencement date, the applicant may give notice to the Registrar 
claiming to have the registrability of the mark determined in accordance with this Ordinance. 
(2) The notice mentioned in subsection (1) must be in the prescribed form, be accompanied 
by the prescribed fee and be given no later than 6 months after the commencement date. 
(3) A notice duly given under subsection (1) is irrevocable and has the effect that the 
application for registration is to be tr eated as if made on the commencement date. 
 
Trade marks registered accord ing to old classification 
 
12. (1) The Registrar may exercise the powers conferred by any rules made for the purposes of section 58 of this Ordinance (amendment of entries to accord with new classification, etc.) to secure 
that any existing registered marks which do not conform to the system of classification prescribed 
under section 40 of this Ordinance (classification of goods and services) are brought into conformity 
with that system. 
(2) Subsection (1) applies, in particular, to ex isting registered marks classified according to 
the classification set out in Schedule 3 to the repealed Rules. 
 
Claim to priority 
 
13. Section 41 of this Ordinance (claim to priority) applies to an application for registration under this 
Ordinance made on or after the commencement date notwithstanding that the Convention application or WTO application concerned was made before that date. 
 
Duration and renewal of registration 
 
14.  (1) Section 49 of this Ordinance (duration of registration) applies in relation to the registration 
of a trade mark in pursuance of an application ma de on or after the commencement date; and the old 
law applies in any other case. 
(2) Sections 49(2) and 50 of this Ordinance (which  relate to the renewal of registration) apply 
where the renewal falls due on or after the commencem ent date; and the old law continues to apply in 
any other case. 
(3) In either case it is immaterial when the fee for renewal, if any, is paid. 
 
 
Pending application for alteration of registered mark 
 
15. An application under section 51 of the repealed Ordinance (alteration of registered trade mark) 
which is pending on the commencement date shall be dealt with under the old law, and any necessary alterations and entries shall be made to the new register. 
 
Revocation for non-use 
 
16.  (1) An application made under section 37 of  the repealed Ordinance (removal from register 
and imposition of limitations on ground of non-us e) which is pending on the commencement date 
shall be dealt with under the old law, and any n ecessary alterations and entries shall be made to the 
new register. 
(2) An application for the revocation of an existing registered mark may be made under 
section 52 of this Ordinance (revocation of registra tion) at any time on or after the commencement 
date, but such an application may be made only on the ground mentioned in section 52(2)(a) of this 
Ordinance.  IP/N/1/HKG/T/4 
 Page 53 
 
 
 
Application for rectification, etc. 
 
17.  (1) An application or request made unde r section 48 or 50 of the repealed Ordinance 
(rectification or correction of the register) which is pending on the commencement date shall be dealt 
with under the old law, and any necessary alterations and entries shall be made to the new register. 
(2) For the purposes of proceedings under section 53 of this Ordinance (declaration of 
invalidity of registration), as it applies in relation to an existing registered mark, this Ordinance shall 
be deemed to have been in force at all material times. 
(3) No objection to the validity of the registrati on of an existing registered mark may be taken 
on the ground mentioned in section 12(4) of th is Ordinance (relative grounds for refusal of 
registration). 
 
Regulations as to use of certification mark 
 
18.  (1) Any regulations governing the use of an existing registered certification trade mark which have been transmitted to or deposited with the Re gistrar under section 65 of the repealed Ordinance 
(application for registration as certification tr ade mark) shall be treated on and after the 
commencement date as if filed under section 6 of Schedule 4 (certification marks) to this Ordinance. 
(2) Any request for amendment of the regul ations which was pending on the commencement 
date shall be dealt with under the old law. 
 
Certificate of validity of contested registration 
 
19. A certificate given under section 75 of the repealed  Ordinance (certificate of validity) shall have 
effect as if given under section 81(1) of this Ordinance (certificate of validity of contested 
registration). 
 
 
 
 
ANNEX 
[section 1(5) of Schedule 5] 
 
PROVISIONS OF THE REPEALED TRADE MARKS ORDINANCE (CAP 43) 
REFERRED TO IN SCHEDULE 5 (TRANSITIONAL MATTERS) AND 
OTHER RELEVANT PROVISIONS OF THE REPEALED ORDINANCE 
(AS IN OPERATION IMMEDIATELY BEFORE ITS REPEAL 
BY SECTION 99 OF THIS ORDINANCE) 
 
2. Interpretation 
(1) In this Ordinance, unless the context otherwise requires- 
... 
"mark" ( •W ‹L ) means any sign that is visually per ceptible and capable of being represented 
graphically and may, in particular, consist of words, personal names, letters, numerals, 
figurative elements or combination of colours,  and includes any combination of such signs; 
... 
"trade mark" ( □□□ ) means (except in the expressions "trade mark relating to goods", "trade mark 
relating to services", "defensive trade mark" and "cer tification trade mark") a trade mark relating to 
goods or a trade mark relating to services; 
"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 IP/N/1/HKG/T/4 
Page 54  
 
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; 
"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 indi cate, that a particular person is connected, in the 
course of business, with the provision of those servic es, whether with or without any indication of the 
identity of that person; 
... 
(2) References in this Ordinance to- 
(a) the use of a mark shall be construed as refere nces to the use of a printed or other visual 
representation of the mark; 
(b) the use of a mark in relation to goods sha ll 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. 
(3) For the purposes of this Ordinance, goods an d 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. 
(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. 
(5) For the purposes of this Ordinance, a pers on 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. 
 
9. Trade marks registrable in Part A 
(1) A trade mark (other than a certification trad e mark) to be registrable in Part A of the 
register shall contain or consist of at l east one of the following essential particulars- 
(a) the name of a company, individual, or firm, represented in a special or particular manner; 
(b) the signature (in other than Chinese characters) of the applicant for registration or of 
some predecessor in his business; 
(c) an invented word or invented words; 
(d) a word or words having no direct reference to the character or quality of the goods or 
services, as the case may be, and not being according to its ordinary signification a 
geographical name or a surname; 
(e) any other distinctive mark, but a name, signatu re, or word or words, other than such as 
fall within the descriptions in paragraphs (a),  (b), (c) and (d), sh all not be registrable 
under the provisions of this paragraph ex cept 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 ser vices, 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 provis ion of which he is not so connected,  
either generally or, where the trade mark is regi stered or proposed to be registered subject to 
limitations, in relation to use within the extent of the registration. 
(3) In determining whether a trade mark is ad apted 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  IP/N/1/HKG/T/4 
 Page 55 
 
 
(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. 
 
10. Trade marks registrable in Part B 
(1) A trade mark relating to goods to be registrabl e 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 co nnexion 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. 
(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 th e proprietor of the mark is or may be connected 
in the course of business from services with the provi sion 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. 
(2) In determining whether a trade mark is ca pable of distinguishing as aforesaid the tribunal 
may have regard to the extent to which- 
(a) the trade mark is inherently capab le of distinguishing as aforesaid; and 
(b) by reason of the use of the trade mark or of  any other circumstances, the trade mark is in 
fact capable of distinguishing as aforesaid. 
(3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the 
name of the same proprietor of the same trade mark or any part or parts thereof. 
 
14. Advertisement of application 
When an application for registration of a trade mark has been accepted, whether absolutely or 
subject to conditions or limitations, the Registrar shall require the applicant to advertise it, as 
accepted, in the prescribed manner. The advertisemen t shall set forth all conditions and limitations 
subject to which the application has been accepted: 
Provided that the Registrar may require an application for registration of a trade mark to be 
advertised by the applicant before acceptance- 
(a) if it be made under section 9(1)(e); or 
(b) in any other case where it appears to him th at it is expedient by reason of any exceptional 
circumstances so to do, 
and where an application has been so advertised the Registrar may, if he thinks fit, require the applicant to advertise it again when it has been  accepted but shall not be bound so to do. 
 
15. Opposition to registration 
(1) Any person may, within the prescribed time from the date of the advertisement of an 
application, give notice to the Registrar of opposition to the registration. 
(2) The notice shall be given in writing in the prescribed manner, and shall include a 
statement of the grounds of opposition. 
(3) The Registrar shall send a copy of the notice to the applicant, and, within the prescribed 
time after the receipt thereof, the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the grounds on which he relies fo r his application, and if he does not do so he 
shall be deemed to have abandoned his application. 
(4) If the applicant sends such a counter-stateme nt, the Registrar shall furnish a copy thereof 
to the person giving notice of opposition, and shall, after hearing the parties, if so required, and 
considering the evidence, decide whether, and su bject to what conditions or limitations, if any, 
registration is to be permitted. 
(5) The decision of the Registrar shall be subject to appeal to the Court. 
(6) An appeal under this section shall be made in the prescribed manner, and on the appeal the 
Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limita tions, if any, registration is to be permitted. IP/N/1/HKG/T/4 
Page 56  
 
(7) On the hearing of an appeal under this sec tion any party may, either in the prescribed 
manner or by special leave of the Court, bring forw ard further material for the consideration of the 
Court. 
(8) On an appeal under this section no further grounds of objection to the registration of a 
trade mark shall be allowed to be taken by the oppon ent or the Registrar other than those stated by the 
opponent as hereinbefore provided, except by leave of the Court. Where any further grounds of 
objection are taken the applicant shall be entitled to withdraw his application without payment of the 
costs of the opponent on giving notice as prescribed. 
(9) On an appeal under this section the Court may, after hearing the Registrar, permit the 
trade mark proposed to be registered to be modified in any manner not substantially affecting the 
identity thereof, but in any such  case the trade mark as so modified  shall be advertised in the 
prescribed manner before being registered. 
(10) If a person giving notice of opposition or an  applicant sending a counter-statement after 
receipt of a copy of the notice, or an appellant , neither resides nor carries on business in Hong Kong, 
the tribunal may require him to give security for co sts of the proceedings before it relative to the 
opposition or to the appeal, as the case may be, and in default of such security being duly given may 
treat the opposition or application, or the appeal, as the case may be, as abandoned. 
 
16. Registration subject to disclaimer 
(1) If a trade mark contains any part not separ ately registered by the proprietor as a trade 
mark or if- 
(a) in the case of a trade mark relating to goods it contains matter common to the trade or 
otherwise of a non-distinctive character; or 
(b) in the case of a trade mark relating to services it contains matter common to the 
provision of services of that description or otherwise of a non-distinctive character, 
the Registrar or the Court, in deciding whether such trade mark shall be entered or shall remain on the 
register, may require, as a condition of its being on the register- 
(i) that the proprietor shall disclaim any right to the exclusive use of any part of the trade mark, or of all or any portion of any such matter, to the exclusive use of 
which the tribunal holds him not to be entitled; or 
(ii) that he shall make such other disclaimer as the tribunal may consider necessary for the purpose of defining his rights under such registration. 
(2) No disclaimer on the register shall affect any rights of the proprietor of a trade mark 
except such as arise out of the registration of the trade mark in respect of which the disclaimer is made. 
 
19. Jointly owned trade marks relating to goods 
Where the relations between 2 or more persons interested in a trade mark relating to goods 
are such that no one of them is entitled as between hi mself and the other or others of them to use it 
except- 
(a) on behalf of both or all of them; or 
(b) in relation to an article with which both or  all of them are connected in the course of 
trade, 
those persons may be registered as joint proprietors  of the trade mark, and this Ordinance shall have 
effect in relation to any rights to the use of the tr ade mark vested in those persons as if those rights 
had been vested in a single person. 
 
19A. Jointly owned trade marks relating to services 
Where the relations between 2 or more persons interested in a trade mark relating to services 
are such that no one of them is entitled as between hi mself and the other or others of them to use it 
except- 
(a) on behalf of both or all of them; or 
(b) in relation to services with the provision of which both or all of them are connected in 
the course of business,  IP/N/1/HKG/T/4 
 Page 57 
 
 
those persons may be registered as joint proprietors  of the trade mark, and this Ordinance shall have 
effect in relation to any rights to the use of the tr ade mark vested in those persons as if those rights 
had been vested in a single person. 
 
22. Concurrent use 
 
In case of honest concurrent use, or of other sp ecial circumstances which in the opinion of the 
Court or of the Registrar make it proper to do so, the Court or the Registrar may permit the 
registration by more than one proprietor, in respect of- 
(a) the same goods or services; 
(b) the same description of goods or services; or 
(c) goods and services or descriptions of goods and services which are associated with each 
other, 
of trade marks that are identical or nearly resemble each other, subject to such conditions and 
limitations, if any, as the Court or the Registrar, as the case may be, may think it right to impose. 
 
24. Associated trade marks 
 
(1) Where a trade mark relating to goods that is registered, or is the subject of an application 
for registration, in respect of any goods is identical w ith another trade mark that is registered, or is the 
subject of an application for registration, in the name of the same proprietor in respect of- 
(a) the same goods or description of goods; or 
(b) services that are associated with those goods or goods of that description, or so nearly 
resembles it as to be likely to deceive or cause confusion if used by a person other than 
the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks. 
(1A) Where a trade mark relating to services that is registered, or is the subject of an 
application for registration, in respect of any servi ces is identical with another trade mark that is 
registered, or is the subject of an application for registration, in the name of the same proprietor in respect of- 
(a) the same services or description of services; or 
(b) goods that are associated with tho se services or services of that description, 
or so nearly resembles it as to be likely to d eceive or cause confusion if used by a person other 
than the proprietor, the Registrar may at any time require that the trade marks shall be entered on 
the register as associated trade marks. 
(2) On application made in the prescribed manner by the registered proprietor of 2 or more 
trade marks registered as associat ed trade marks, the Registrar may dissolve the association as 
respects any of them if he is satisfied that th ere would be no likelihood of deception or confusion 
being caused if that trade mark were used by anothe r person in relation to any of the goods or services 
in respect of which it is registered, a nd he may amend the register accordingly. 
(3) Any decision of the Registrar under the provisi ons of subsections (1), (1A) and (2) shall 
be subject to appeal to the Court. 
 
25. Combined trade marks 
(1) If the proprietor of a trade mark claims to be  entitled to the exclusive use of any portion of 
such trade mark separately, he may apply to regist er the whole and any such part as separate trade 
marks. Each such separate trade mark must satisfy all the conditions of an independent trade mark and 
shall, subject to the provisions of subsection (2) hereof and section 38(2), have all the incidents of an 
independent trade mark. 
(2) Where a trade mark and any part or parts thereof are thus registered as separate trade 
marks in the name of the same proprietor, they sh all be deemed to be, and shall be registered as, 
associated trade marks. 
 
26. Series of trade marks IP/N/1/HKG/T/4 
Page 58  
 
(1) Where a person claiming to be the proprietor of  several trade marks, in respect of the same 
goods or services or the same description of goods or ser vices, seeks to register those trade marks and 
the trade marks, while resembling each other in the ma terial particulars thereof, differ in respect of- 
(a) statements of the goods or services in relation to which they are respectively used or 
proposed to be used; or 
(b) statements of number, price, quality or names of places; or 
(c) other matter of a non-distinctive character which does not substantially affect the identity 
of the trade mark; or 
(d) colour, 
the trade marks may be registered as a series in one registration. 
(2) All trade marks so registered shall be deemed to be, and shall be registered as, associated 
trade marks. 
 
37. Removal from register and imposition of limitations on ground of non-use 
(1) Subject to the provisions of sections 55(1), 55A(1) and 57(1), a registered trade mark may 
be taken off the register in respect of any of the goods or services in respect of which it is registered 
on application by any person aggrieved to the Court, or, at the option of the applicant and subject to 
the provisions of section 80, to the Registrar, on the ground either- 
(a) that the trade mark was re gistered without any bona fide intention on the part of the 
applicant for registration that it should be used in relation to those goods or services by 
him or, if it was registered under section 18(1 ), by the corporation or registered user 
concerned, and that there has in fact been no bo na fide use of the trade mark in relation to 
those goods or services by any proprietor thereof for the time being up to the date one month before the date of the application; or 
(b) that up to the date one month before the date of the application a continuous period of 5 
years or longer elapsed during which the tr ade mark was a registered trade mark and 
during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being. 
(1A) Subject to subsection (1C), the tribunal may refuse an application made under 
subsection (1)(a) or (b) in relation to any goods if it is shown that there has been, before the relevant 
date or during the relevant period, as the case ma y be, bona fide use of the trade mark by the 
proprietor thereof for the time being in relation to- 
(a) goods of the same description; or 
(b) services associated with those goods or goods of that description,  
being goods or, as the case may be, services in resp ect of which the trade mark is registered. 
(1B) Subject to subsection (1C), the tribunal may refuse an application made under subsection 
(1)(a) or (b) in relation to any services if it is shown that there has been, before the relevant date or 
during the relevant period, as the case may be, bona fide use of the trade mark by the proprietor 
thereof for the time being in relation to- 
(a) services of the same description; or 
(b) goods associated with those servi ces or services of that description, 
being services or, as the case may be, goods in resp ect of which the trade mark is registered. 
(1C) Subsections (1A) and (1B) do not appl y where the applicant has been permitted under 
section 22 to register an identical or nearly resembling trade mark in respect of the goods or services 
in question or where the tribunal is of the opinion th at he might properly be permitted so to register 
such a trade mark. 
(2) Where in relation to any goods in respect of which a trade mark is registered- 
(a) the matters referred to in subsection (1)(b ) are shown so far as regards non-use of the 
trade mark in relation to goods to be sold , or otherwise traded in, in Hong Kong 
(otherwise than for export from Hong Kong), or in relation to goods to be exported to a particular market outside Hong Kong; and 
(b) a person has been permitted under section 22 to register an identical or nearly resembling 
trade mark in respect of those goods under a registration extending to use in relation to 
goods to be sold, or otherwise traded in, in Hong Kong (otherwise than for export from  IP/N/1/HKG/T/4 
 Page 59 
 
 
Hong Kong), or in relation to goods to be expor ted to that market, or the tribunal is of 
opinion that he might properly be permitted so to register such a trade mark,  
on application by that person to the Court or, at  the option of the applicant and subject to the 
provisions of section 80, to the Registrar, the tribunal may impose on the registration of the 
firstmentioned trade mark such limitations as th e tribunal thinks proper for securing that that 
registration shall cease to extend to such use as last aforesaid. 
(2A) Where in relation to any services in respect of which a trade mark is registered-  
(a) the matters referred to in subsection (1)(b) are shown so far as regards non-use of the 
trade mark in relation to services for use or available for acceptance in Hong Kong, or for use in a country, territory or place outside Hong Kong; and 
(b) a person has been permitted under section 22 to register an identical or nearly 
resembling trade mark in resp ect of those services under a registration extending to use 
in relation to services for use or available fo r acceptance in Hong Kong or for use in that 
country, territory or place, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, 
on application by that person to the Court or, at the option of the applicant and subject to section 80, to the Registrar, the tribunal may impose on the re gistration of the first-mentioned trade mark such 
limitations as the tribunal thinks proper for securing that the registration shall cease to extend to such 
use as last aforesaid. 
(3) An applicant shall not be entitled to rely for the purposes of subsection (1)(b), (2) or (2A) 
on any non-use of a trade mark- 
(a) in relation to particular goods  that is shown to have been due to special circumstances in 
the trade; or 
(b) in relation to particular services that is s hown to have been due to special circumstances 
affecting the provision of those services, 
and not to any intention not to use or to abandon the trade mark in relation to the goods or services 
to which the application relates. 
 
43. Registration of assignments and transmissions 
(1) Where a person becomes entitled by assignment or transmission to a registered trade 
mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt 
of such application and on proof of title to his satis faction, register him as the proprietor of the trade 
mark in respect of the goods or services in respect  of which the assignment or transmission has effect, 
and shall cause particulars of the assignment or transmission to be entered on the register. 
(2) Any decision of the Registrar under this secti on shall be subject to appeal to the Court. 
(3) Except for the purposes of an appeal under this section or of an application under section 
48, a document or instrument in respect of which no entry has been made in th e register in accordance 
with the provisions of subsection (1) shall not be admitted in evidence in any Court in proof of the 
title to a trade mark unless the Court otherwise directs. 
 
48. General power to rectify entries in register 
(1) Subject to the provisions of this Ordinance- 
(a) any person aggrieved by the non-insertion in or omission from the register of any entry, 
or by any entry made in the register wit hout sufficient cause, or by any entry wrongly 
remaining on the register, or by any error or de fect in any entry in the register, may apply 
in the prescribed manner to the Court or, at the option of the applicant and subject to the provisions of section 80, to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as the tribunal may think fit; 
(b) the tribunal may in any proceeding under th is section decide any question that it may be 
necessary or expedient to decide in connexion with the rectification of the register; 
(c) in case of fraud in the registration, assignment or transmission of a registered trade mark, 
the Registrar may himself apply to the Court under the provisions of this section; IP/N/1/HKG/T/4 
Page 60  
 
(d) any order of the Court rectifying the register shall direct that notice of the rectification 
shall be served in the prescribed manner on the Registrar, and the Registrar shall on 
receipt of the notice rectify the register accordingly. 
(2) The power to rectify the register conferred by this section shall include power to remove a 
registration in Part A of the register to Part B. 
 
49. Power to expunge or vary registration for breach of condition 
On application by any person aggrieved to the Court, or, at the option of the applicant and 
subject to the provisions of section 80, to the Registrar, or on application by the Registrar to the Court, 
the tribunal may make such order as the tribuna l may think fit for expunging or varying the 
registration of a trade mark on the ground of any contravention of, or failure to observe, a condition 
entered on the register in relation thereto. 
 
50. Correction of register 
(1) The Registrar may, on request made in the prescribed manner by the registered proprietor- 
(a) correct any error in the name and address of the registered proprietor of a trade mark; or 
(b) enter any change in the name and address of the person who is registered as proprietor of 
a trade mark; or 
(c) cancel the entry of a trade mark on the register; or 
(d) strike out any goods or services or classes of goods or services from those in respect of 
which a trade mark is registered; or 
(e) enter a disclaimer or memorandum relating to a trade mark which does not in any way 
extend the rights given by the existing registration of such trade mark. 
(2) The Registrar may, on request made in the prescribed manner by a registered user of a 
trade mark, correct any error, or enter any change , in the name and address of the registered user. 
(3) Any decision of the Registrar under this secti on shall be subject to appeal to the Court. 
 
51. Alteration of registered trade mark 
(1) The registered proprietor of a trade mark  may apply in the prescribed manner to the 
Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the 
identity thereof, and the Registrar may refuse such leave or may grant it on such terms and subject to such limitations as he may think fit. 
(2) The Registrar may cause an application unde r this section to be advertised in the 
prescribed manner in any case where it appears to him th at it is expedient so to do, and where he does 
so, if within the prescribed time from the date of  the advertisement any person gives notice to the 
Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter. 
(3) Any decision of the Registrar under this secti on shall be subject to appeal to the Court. 
(4) Where leave as aforesaid is granted, the trade mark as altered shall be advertised in the 
prescribed manner, unless it has already been advertised , in the form to which it has been altered, in 
an advertisement under subsection (2). 
 
56. Defensive trade marks to be reg istered as associated trade marks 
A trade mark registered as a defensive trade mark  and that trade mark as otherwise registered 
in the name of the same proprietor shall, notwithst anding that the respective registrations are in 
respect of different goods or services, be deemed to  be, and shall be registered as, associated trade 
marks. 
 
58. Registration as a registered user. 
Meaning of "permitted use" 
(1)  (a) Subject to the provisions of this section and sections 59 to 63, a person other than 
the proprietor of a trade mark may be register ed as a registered user thereof in respect 
of all or any of the goods or services in r espect of which it is re gistered (otherwise 
than as a defensive trade mark) and either w ith or without conditions or restrictions.  IP/N/1/HKG/T/4 
 Page 61 
 
 
(b) The use of a trade mark by a registered  user of the trade mark in relation to- 
(i) goods with which he is connected in the course of trade; or 
(ii) services with the provision of which he  is connected in the course of business, 
and in respect of which for the time being the trade mark remains registered and he is registered as a 
registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is in this Ordinance referr ed to as the "permitted use" of the trade mark. 
(2)  (a) The permitted use of a trade mark sha ll be deemed to be use by the proprietor 
thereof, and shall be deemed not to be u se by a person other than the proprietor, for 
the purposes of section 37 and for any other purpose for which such use is material 
under this Ordinance or at common law. 
(b) Where a person is registered as a registered user of a trade mark relating to goods 
on an application made within one year from the commencement of this Ordinance, 
this subsection shall have effect in relati on to any previous use (whether before or 
after the commencement of this Ordinance) of the trade mark by that person, being 
use in relation to the goods in respect of which he is registered and, where he is 
registered subject to conditions or restrictions, being use such as to comply 
substantially therewith, as if such pr evious use had been permitted use. 
(3) Where it is proposed that a person should be registered as a registered user of a trade 
mark, the proprietor and the proposed registered user must apply in writing to the Registrar in the prescribed manner, and must furnish him with a stat utory declaration made by the proprietor, or by 
some person authorized to act on his behalf and approved by the Registrar- 
(a) giving particulars of the relationship, ex isting or proposed, between the proprietor and 
the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed re gistered user shall be the sole registered 
user or that there shall be any other restriction as to persons for whose registration as 
registered users application may be made; 
(b) stating the goods or services in respect of which registration is proposed; 
(c) stating any conditions or restrictions propo sed with respect to the characteristics of the 
goods or services, to the mode or place of pe rmitted use, or to any other matter; and 
  (d)  stating whether the permitted use is to be for a period or without limit of period, and, if  
for a period, the duration thereof, 
and with such further documents, information or evidence as may be required under the rules or by 
the Registrar. 
(4) When the requirements of subsection (3) have  been complied with, if the Registrar, after 
considering the information furnished to him under that subsection, is satisfied that in all the 
circumstances the use of the trade mark in relation to the proposed goods or services or any of them 
by the proposed registered user subject to any cond itions or restrictions which the Registrar thinks 
proper would not be contrary to the public interest, the Registrar may register the proposed registered 
user as a registered user in respect of the goods or  services as to which he is  so satisfied subject as 
aforesaid. 
(5) The Registrar shall refuse an application under the provisions of subsections (1) to (3) if it 
appears to him that the grant thereof would te nd to facilitate trafficking in a trade mark. 
(6) The Registrar shall, if so required by an applicant, take steps for securing that information 
given for the purposes of an application under the provisions of subsections (1) to (3) (other than matter entered in the register) is not disclosed- 
(a) in the case of an application for registration in respect of goods, to rivals in the trade; or 
(b) in the case of an application for registrati on in respect of services, to rivals in the 
business. 
 
59. Proceedings for infringement 
(1) Subject to any agreement subsisting between th e parties, a registered user of a trade mark 
shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement 
thereof, and, if the proprietor refuses or neglects to do so within 2 months after being so called upon, IP/N/1/HKG/T/4 
Page 62  
 
the registered user may institute proceedings for infringement in his own name as if he were the 
proprietor, making the proprietor a defendant. 
(2) A proprietor so added as defendant shall not be liable for any costs unless he enters an 
appearance and takes part in the proceedings. 
 
60. Variation or cancellation of registration as a registered user 
(1) Without prejudice to the provisions of section 48, the registration of a person as a 
registered user- 
(a) may be varied by the Registrar as regards the goods or services in respect of which, or 
any conditions or restrictions subject to whic h, it has effect, on the application in writing 
in the prescribed manner of the registered proprietor of the trade mark to which the 
registration relates; 
(b) may be cancelled by the Registrar on the application in writing in the prescribed manner 
of the registered proprietor or of the registered  user or of any other registered user of the 
trade mark; or 
(c) may be cancelled by the Registrar on the a pplication in writing in the prescribed manner 
of any person on any of the following grounds, that is to say- 
(i) that the registered user has used the trade mark otherwise than by way of the 
permitted use, or in such a way as to cause,  or to be likely to cause, deception or 
confusion; 
(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances 
have materially changed since th e date of the registration; or 
(iii) that the registration ought not to have been effected having regard to rights vested 
in the applicant by virtue of a contract in  the performance of which he is interested. 
(2) The Registrar may at any time cancel the regi stration of a person as a registered user of a 
trade mark in respect of any goods or services in  respect of which the trade mark is no longer 
registered. 
 
62. Registrar's decision subject to appeal to Court 
Any decision of the Registrar under sections 58 and 60  shall be subject to appeal to the Court. 
 
 
 
63. Right to use not assignable or transmissible 
Nothing in sections 58, 59 and 60 shall confer on a registered user of a trade mark any 
assignable or transmissible right to the use thereof. 
 
64. Marks registrable as certification trade marks 
(1) A mark adapted in relation to any goods to distinguish in the course of trade goods 
certified by any person in respect of origin, materi al, mode of manufacture, quality, accuracy or other 
characteristic, from goods not so certified shall be regist rable as a certification trade mark in Part A of 
the register in respect of those goods in the name, as proprietor thereof, of that person: Provided that a 
mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind 
certified. 
(1A) A mark adapted in relation to any services to distinguish in the course of business 
services certified by any person in respect of qualit y, accuracy or other characteristic, from services 
not so certified, shall be registrable as a certification trade mark in Part A of the register in respect of 
those services in the name, as proprietor of the certification trade mark, of that person: 
Provided that a mark shall not be so registrable in the name of a person who is connected in 
the course of business with the provision of services of the kind certified. 
(2) In determining whether a mark is adapted to distinguish as aforesaid, the tribunal may 
have regard to the extent to which-  IP/N/1/HKG/T/4 
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(a) the mark is inherently adapted to disti nguish as aforesaid in relation to the goods or 
services in question; and 
(b) by reason of the use of the mark or of any other circumstances, the mark is in fact 
adapted to distinguish as aforesaid in relation to the goods or services in question. 
(3) The fact that a mark consists of signs or indications which may serve, in trade, to 
designate the geographical origin of goods or servi ces shall not preclude it from being registered as a 
certification trade mark in Part A of the register in respect of those goods or services. 
(4) Nothing in this Ordinance shall entitle th e proprietor of a certification trade mark that 
consists of signs or indications d escribed in subsection (3) to interfere  with or restrain the use by any 
person of any signs or indications the use of which is in accordance with honest practices in industrial 
or commercial matters (in particular, by a pers on who is entitled to use a geographical name). 
 
65. Application for registration as certification trade mark 
(1) An application for the registration of a mark under section 64 shall be made to the 
Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof. 
(2) The provisions of section 13(2) and of section 13(4) to (7) shall have effect in relation to 
an application under this section as they have eff ect in relation to an application under section 3(1). 
(3) In dealing under the said provisions with an  application under this section the tribunal hall 
have regard to the like considerations, so far as re levant, as if the application were application under 
section 13 and to any other consider ations relevant to applications  under this ection, including the 
desirability of securing that a certification trade mark  shall comprise some indication that it is such a 
trade mark. 
(4) An applicant for the registration of a mark under this section shall transmit to the Registrar 
draft regulations for governing the use thereof, which shall include provisions as  to the cases in which 
the proprietor is to certify goods or services and to authorize the use of the trade mark, and may 
contain any other provisions that the Registrar may re quire or permit to be inserted therein (including 
provisions conferring a right of appeal to the Regist rar against any refusal of the proprietor to certify 
goods or services or to authorize the use of the trad e mark in accordance with the regulations). The 
regulations, if approved, shall be deposited with the Registrar and sha ll be open to inspection in like 
manner as the register. 
(5) The Registrar shall consider the applica tion with regard to the following matters- 
(a) whether the applicant is competent to certify the goods or services in respect of which 
the mark is to be registered; 
(b) whether the draft regulations are satisfactory; and 
(c) whether in all the circumstances the registration applied for would be to the public 
advantage; and may either- 
(i) refuse to accept the application; or 
(ii) accept the application, and approve the regulations, either without modification and 
unconditionally or subject to an y conditions or limitations, or to any amendments or 
modifications of the application or of th e regulations, which he may think requisite 
having regard to any of the matters aforesaid;  
but, except in the case of acceptance and approval  without modification and unconditionally, the 
Registrar shall not decide the matter without giving to the applicant an opportunity of being heard: 
Provided that the Registrar may, at the request of  the applicant, consider the application with 
regard to any of the matters aforesaid before the application has been accepted, so however that the 
Registrar shall be at liberty to reconsider any matter on which he has given a decision under this 
proviso if any amendment or modification is thereafter made in the application or in the draft regulations. 
(6) Any decision of the Registrar under this secti on shall be subject to appeal to the Court. 
 
75. Certificate of validity 
In any legal proceeding in which the validity of  the registration of a registered trade mark 
comes into question and is decided in favour of the proprietor of the trade mark, the Court may certify IP/N/1/HKG/T/4 
Page 64  
 
to that effect, and if it so certifies then in any s ubsequent legal proceeding in  which the validity of the 
registration comes into question the proprietor of  the trade mark on obtaining a final order or 
judgment in his favour shall have his full costs, ch arges and expenses as between solicitor and client, 
unless in the subsequent proceeding the Court certifies that he ought not to have them. 
 
76. Trade usage, etc., to be considered 
(1) In any action or proceeding relating to a tr ade mark relating to goods or trade name the 
tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark 
relating to goods or trade name or ge t-up legitimately used by other persons. 
(2) In any action relating to a trade mark re lating to services or business name, the tribunal 
shall admit evidence of business usages in the provision of services in question and of  any relevant 
trade mark relating to services or business name or get-up legitimately used by other persons. 
 
92. Transitional provisions relating to the In tellectual Property (World Trade Organization 
Amendments) Ordinance 1996 
(1) In this section- 
"existing registered trade mark" ( □□□ ) means a trade mark, certification trade mark or defensive trade 
mark that is registered under this Or dinance before the commencement of the 
new law; 
"new law" ( □□□ ) means sections 18 to 25 of the Intellectual Property (World Trade 
Organization Amendments) Ordinance 1996 (11 of 1996); 
"old law" ( □□□ ) means this Ordinance and any other enactment or rule of law applying to 
existing registered trade marks immediately before the commencement of the new law. 
(2) An application for the registration of a trade mark (including certification trade marks and 
defensive trade marks), as defined in this Ordina nce before the commencemen t of the new law, shall 
be treated as pending on the commencement of the new law if the application had been made but had 
not been finally determined before that commencement. 
(3) Sections 27(1), 27A(1), 67(1) and 67A(1), as amended by the new law, shall apply in 
relation to an existing registered trade mark as fro m the commencement of the new law but only in so 
far as those sections relate to an infringement of an existing registered trade mark that is committed on 
or after the commencement of the new law; and the ol d law shall continue to apply in relation to an 
infringement that is committed before the commencement of the new law. 
(4) Despite subsection (3), it is not an infringement of- 
(a) an existing registered trade mark; or 
(b) a registered trade mark of which the distin ctive elements are the same or substantially 
the same as those of an existing registered trade mark and which is registered for the 
same goods or services, 
to continue on or after the commencement of th e new law any use that did not, under the old law, 
constitute an infringement of the existing registered trade mark. 
(5) Subject to subsection (6), an application for the registration of a trade mark that is pending 
on the commencement of the new law shall be dealt with under the old law but, if the trade mark is 
registered, it shall be treated for the purposes of subsections (1) to (4) as an existing registered trade 
mark. 
(6) If an application for the registration of a tr ade mark that is pending on the commencement 
of the new law has not been advertised under secti on 14 before its commencement, the applicant may 
give notice to the Registrar electing to have the re gistrability of the mark determined in accordance 
with this Ordinance, as amended by the new law. 
(7) A notice under subsection (6) must be in the prescribed form, be accompanied by the 
appropriate fee and be given to the Registrar not later than 6 months after the commencement of the 
new law. 
(8) A notice given under subsection (6) is irrevocab le and has the effect that the application 
shall be treated as if it had been made after the commencement of the new law.  IP/N/1/HKG/T/4 
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(9) An application made under section 48 that  is pending on the commencement of the new 
law shall be dealt with in accordance with the old law. 
 
Schedule: 6 (Omitted as spent) 
(Omitted as spent)  
 
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