### Trade Marks Ordinance 《商標條例》

1. Short title
(Amended E.R. 7 of 2020)(1) This Ordinance may be cited as the Trade Marks Ordinance.
(2) (Omitted as spent—E.R. 7 of 2020)

2. Interpretation
(1) In this Ordinance, unless the context otherwise requires—
certification mark (證明商標) has the meaning assigned by section 62(1) (certification marks);
certified (核證), in relation to a copy or extract, means certified by the Registrar and sealed with the seal of the Registrar;
collective mark (集體商標) has the meaning assigned by section 61(1) (collective marks);
corporation (法團) means—(a) a company as defined by section 2(1) of the Companies Ordinance (Cap. 622); or
(b) any other body corporate incorporated or established in or outside Hong Kong; (Replaced 3 of 2020 s. 4)

court (法院), except in Part XIIA, means the Court of First Instance; (Amended 3 of 2020 s. 4)
defensive trade mark (防禦商標) means a trade mark registered as a defensive trade mark under section 60 (defensive trade marks);
infringement proceedings (反侵犯法律程序), in relation to a registered trade mark, includes proceedings under section 23 (order for delivery up) and section 25 (order for disposal);
International Bureau (國際局) means the International Bureau of the World Intellectual Property Organization established under the Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967; (Added 3 of 2020 s. 4)
international designation (HK) (國際指定(香港)) means a request, made under Article 3ter

3. Meaning of trade mark
(1) In this Ordinance, a trade mark (商標) means any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically.
(2) Without affecting the generality of subsection (1), a trade mark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their 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 whether 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 certification mark, collective mark and defensive trade mark.

### Trade Marks Ordinance 《商標條例》

4. Meaning of well-known trade mark
(1) References in this Ordinance to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be construed 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 ordinarily 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 subsection (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).

5. Meaning of earlier trade mark
(1) In this Ordinance, earlier trade mark (在先商標), 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 application for registration of the other trade mark or, where appropriate, at the date of the priority 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 during the 2 years immediately preceding that date.

6. References to use of trade mark or sign
References in this Ordinance to use (or to any particular 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.

### Trade Marks Ordinance 《商標條例》

7. References to use likely to cause confusion
(1) For greater certainty, in determining for the 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 the 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, including whether the use is likely to be associated with a registered trade mark.

8. Meaning of the register and registration
(1) In this Ordinance, the register (註冊紀錄冊) means the register of trade marks kept under section 67 (register to be kept).
(2) Unless the context otherwise requires, references in this Ordinance to registration (in particular, in the expression registered trade mark) shall be construed as references to registration in the register.

9. Ordinance binds Government
This Ordinance binds the Government.

10. Registered trade 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 has 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 Ordinance affects the law relating to passing off.