### Trade Marks Ordinance 《商標條例》

19. Exceptions 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 registered (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 necessary to indicate the intended purpose of goods or services (for example, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial matters.
(4) A registered trade mark is not infringed by the 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 been so used in Hong Kong by that person or a predecessor in title continuously from 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.

20. Exhaustion of rights conferred by registered trade mark
(1) Notwithstanding section 18 (infringement of registered 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 conditional 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 distinctive character or repute of the trade mark.

### Trade Marks Ordinance 《商標條例》

21. Use in advertising, etc.
(1) Nothing in section 18 (infringement of registered 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 trade 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 subsection (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 distinctive 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 rights conferred by registered trade mark).

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 relief by way of damages, injunctions, accounts or otherwise shall be available to the owner of a registered trade mark as is available in respect of the infringement of any other property right.

23. Order for delivery up
(1) The owner of a registered trade mark may apply 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 subsection (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, material 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 affects any other power of the court.

### Trade Marks Ordinance 《商標條例》

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;
(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 the end of the period of 6 years beginning on the date on which he ceased to be under a disability or could with reasonable diligence have discovered those facts, as the case may be.
(3) In subsection (2), disability (無行為能力) has the same meaning as in section 22(3) of the Limitation Ordinance (Cap. 347).

### Trade Marks Ordinance 《商標條例》

26. Proceedings for relief from groundless threats of infringement proceedings
(1) Where a person threatens to bring an action against another person (the threatened person) for infringement of a registered trade 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 sustained by the plaintiff by reason of the threats.
(3) The plaintiff is entitled to the relief claimed under subsection (2) unless the defendant shows that the acts in respect of which the action 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 constitute, an infringement of a registered trade mark, the plaintiff is nevertheless entitled to the relief claimed under subsection (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 registered, or that an application for registration has been made, does not constitute a threat to bring an action for infringement for the purposes of this section.
(6) Proceedings for relief under this section may 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.