Trade Marks Rules (Chapter 43A), Hong Kong, China

(Cap 43, section 90)

[2 March 1992]

(L.N. 5 of 1992)

(1)

These rules may be cited as the Trade Marks Rules.

(2)

(Omitted as spent)

(1) In these rules, unless the context otherwise requires

“Registry” means the Trade Marks Registry, Hong Kong;

“section” means a section of the Ordinance, a subsection being indicated by a number enclosed in brackets immediately following the number of the section;

“send” includes give;

“specification” means the designation of goods or, as the case may be, services in respect of which a trade mark, or a registered user of a trade mark, is registered or proposed to be registered.

(2) In these rules, references to something being filed at a place or with a person are to be construed as references to its being sent to that place or person or made or left at that place or given or made to or left with that person, or to that person being furnished with it, and references to the filing of anything without an indication of the place at which or person with whom it is to be filed are to be construed as references to its being filed with the Registrar at the Registry.

Amendments retroactively made — see 22 of 1999 s. 3

REGISTRABILITY OF TRADE MARKS (SECTIONS 9 TO 12) PRELIMINARY ADVICE (SECTION 73)

(1)

The Registrar may refuse to accept any application for the registration of a mark upon which any of the following appear—

(a) �

the words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “To counterfeit this is a forgery”, or words to the like effect;

(b) �

(Repealed 22 of 1999 s. 3)

(c) �

the words “Red Cross” or “Geneva Cross” and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours.

(2)

Where there appears in a trade mark the registration of which is applied for a representation of a cross in any colour, not being one of those mentioned in subrule (1)(c) , the Registrar may require the applicant as a condition of acceptance to undertake not to use the cross device in red, or in white on a red ground or silver on a red ground, or in any similar colour or colours.

(3)

Representations of exhibition medals and awards that have been granted to an applicant or his predecessor in business in respect of the goods or services for which a trade mark is proposed to be registered may appear on the mark but shall not be accepted as a registrable feature thereof. Representations of medals and awards that have not been so granted to the applicant or his predecessor in business may not appear on the mark.

Amendments retroactively made — see 22 of 1999 s. 3

Where a representation of the name, initials, armorial bearings, insignia, orders of chivalry, decorations, flags or devices of any state, city, borough, town, place, society, body corporate, institution or person appears on a trade mark, the Registrar shall consider whether to refuse to accept an application for the registration of the mark unless the consent of such official or other person as appears to the Registrar to be entitled to give consent is filed.

Where the name or representation of any person living or recently dead appears on a trade mark, the Registrar shall consider whether to refuse to accept an application for the registration of

the mark unless the consent of the person or, as the case may be, his personal representatives is filed.

(1)

Where the name or description of any goods or services appears on a trade mark, the Registrar shall consider whether to refuse to register such mark in respect of any goods or services, as the case may be, other than the goods or services so named or described.

(2)

Where the name or description of any goods or services appears on a trade mark and the name or description in use varies, the Registrar shall consider whether to refuse to permit the registration of the mark for those and other goods or services, as the case may be, unless the applicant states in his application that the name or description will be varied when the mark is used upon goods or services covered by the specification other than the named or described goods or services.

Rule 8
�Preliminary advice by Registrar as to distinctiveness
�

(1)

Any person who proposes to apply for the registration of a trade mark in Part A or Part B of the register in respect of any goods or services may apply to the Registrar by filing Form TM- No. 2 for advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish within the meaning of section 9 or inherently capable of distinguishing within the meaning of section 10a s the case may be in relation to those goods or services.

(2)

Separate applications under subrule (1) shall be made in respect of goods or services comprised within different classes as set out in Schedule 4 .

(3)

An application for advice under subrule (1) shall contain a representation of the mark to be affixed on the form in the manner provided in rule 9(3A) and be filed together with 2 duplicates of such representation.

(4)

A notice of withdrawal of an application for the registration of a trade mark given under section 73(3) for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given in writing within 6 months from the date of the notice of the Registrar’s objection.

APPLICATION FOR REGISTRATION OF A TRADE MARK (SECTION 13)

(1) An application under section 13 for the registration of a trade mark in Part A or Part B of the register shall be filed with the Registrar on Form TM-No. 3 . The application shall be signed by the applicant or his agent. If the application is made for or on behalf of a firm or a body corporate or

an unincorporated body it shall be signed in the manner provided by rule 96 , but in any case it may be signed by an agent.

(2)

Every application claiming priority under section 13A by reason of an application made or deemed to have been made in a Convention country shall specify the country in which the application was made and the date of that application, and the applicant shall file at any time before acceptance of the application a certificate by the registrar or other registering authority of that country, or otherwise verify the application made or deemed to be made in that country to the satisfaction of the Registrar.

(3)

Each application shall be for registration in respect of goods or services in one class only of Schedule 4 .

(3A) (a) Every application for the registration of a trade mark shall contain a representation of the mark in the space provided on the application form for that purpose.

(b) �Where the representation exceeds the space in size part of the representation shall be affixed in the space and the representation shall not be folded.

(4)

Each application shall be filed together with 14 additional representations of the trade mark exactly corresponding to that affixed to Form TM-No. 3 , one of which shall be affixed on Form TM-No. 3A in the same manner as provided for in subrule (3A) .

(5)

A request under section 13(7) for the amendment of an application for registration shall be made by filing Form TM-No. 33 and in the case of an amendment to the mark the amended mark shall be affixed as provided in subrule (3A) . The request shall be filed together with 14 additional representations of the amended mark which shall correspond exactly with that affixed to Form TM- No. 33 . One of the 14 amended marks shall be affixed to Form TM-No. 33A in the same manner as provided for in subrule (3A) .

Rule 10
�Specification must be justified by use or intended use
�

In the case of an application under section 13 for registration in respect of all the goods or services included in a class, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if and when it is registered.

(1)

Applications under section 13 for the registration of the same mark in different classes shall be treated as separate and distinct applications.

(2)

Where a trade mark relating to goods is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 75 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Ordinance.

In any application under section 13, the representation of a trade mark shall be clear and durable; and the Registrar, if dissatisfied with any representation of a trade mark, may at any time require another representation satisfactory to him to be substituted before proceeding with the application.

Rule 13
�Specimens of trade marks in exceptional cases
�

In any application under section 13

(a) �

where a representation cannot be filed in accordance with rules 9(3A) and 12 , a specimen or copy of the mark either of full size or on a reduced scale may, subject to the consent of the Registrar, be filed in any convenient form; and

(b) �

the Registrar shall retain for inspection by the public each specimen or copy filed under paragraph (a) and may refer to it in the register in such manner as he may think fit.

When application under section 13 is made for the registration of a series of trade marks under section 26 , a representation of each trade mark of the series shall be affixed in accordance with rules 9(3A) and 12 , and subject to rule 13 , to the application form which shall be filed together with 14 additional sets of representations and rule 9(4) shall apply with such modifications as are required to suit the circumstances.

In any application under section 13 —

(a) �

where a trade mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent; and

(b) �

where a trade mark contains a word or words in a language other than English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.

A notice to the Registrar under section 92(6) shall be given by the applicant by filing Form TM-No. 54 .

PROCEDURE ON RECEIPT OF AN APPLICATION FOR REGISTRATION OF A TRADE MARK

(1)

Upon receipt of an application for the registration of a trade mark in respect of any goods or services the Registrar shall, for the appropriate purpose specified in subrule (2) or (3) , cause a search to be made amongst the registered marks and pending applications and the Registrar may cause the search to be renewed at any time before the acceptance of the application, but shall not be bound to do so.

(2)

In the case of an application for the registration of a trade mark relating to goods in respect of any goods the appropriate purpose mentioned in subrule (1) is that of ascertaining whether, for the same goods, for the same description of goods or for services or a description of services associated with the goods or goods of that description, there are on record any marks identical with the mark applied for or so nearly resembling it as to render the mark applied for likely to deceive or cause confusion.

(3)

In the case of an application for the registration of a trade mark relating to services in respect of any services the appropriate purpose mentioned in subrule (1) is that of ascertaining whether, for the same services, for the same description of services or for goods or a description of goods associated with the services or services of that description, there are on record any marks identical with the mark applied for or so nearly resembling it as to render the mark applied for likely to deceive or cause confusion.

Rule 17
�Acceptance, absolute or conditional; objection
�

After such search, and consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to file, the Registrar may accept the application absolutely, or he may object to it, or he may express his willingness to accept it subject to such conditions, amendments, disclaimers, modifications or limitations as he may think right to impose.

If the Registrar objects to the application, he shall send his objections in writing to the applicant, and unless within 6 months from the date of receipt of those objections the applicant files an application with the Registrar for a hearing or files a considered reply in writing to those objections he shall be deemed to have withdrawn his application.

(1A) If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimers, modifications or limitations he shall send to the applicant written notice of such willingness.

(1B) If the applicant objects to such conditions, amendments, disclaimers, modifications or limitations he shall within 6 months from the date of receipt of the notice file an application with the Registrar for a hearing or file his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application.

(1C) If the applicant does not object to such conditions, amendments, disclaimers, modifications or limitations he shall within 6 months from the date of receipt of the notice file a written statement of his absence of objection and alter his application accordingly, and if he does not do so he shall be deemed to have withdrawn his application.

(2) The Registrar may require that a transliteration or translation of a word trade mark, or the name of a device trade mark, appears on the mark in Chinese characters if in his opinion this is necessary to avoid the likelihood of deception or confusion and for the protection of the public.

(1)

When the Registrar has made a decision following a hearing as mentioned in rule 18 or 19(1B) or, if the applicant has not applied for a hearing in accordance with those rules, after considering any considered reply or considered objections filed in accordance with those rules, the Registrar shall send his decision to the applicant in writing.

(2)

If the applicant objects to the decision he may within 3 months from the date of receipt of the decision by filing Form TM-No. 5 require the Registrar to state in writing the grounds for his decision and the materials used by him in arriving at it.

(3)

Where the applicant does not object to every condition, amendment, disclaimer, modification or limitation sent to him under rule 19(1A) , the Registrar may decline to issue a statement as required in subrule (2) until the applicant has altered his application in accordance with those to which he does not object.

(4)

The date when the statement is sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of appeal.

The Registrar may call on an applicant to insert in his application such disclaimer as the Registrar may think fit, in order that the public generally may understand what the applicant’s rights, if his mark is registered, will be.

ADVERTISEMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK (SECTION 14)

(1)

An application for the registration of a trade mark required or permitted to be advertised by section 14 shall be advertised by the applicant in one issue of the Gazette; and subrule (5) shall apply.

(2)

In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant, the words “BY CONSENT” and the number of the other mark shall appear in the advertisement.

(3)

If, with the approval of the Registrar, no representation of the trade mark is included in the advertisement of the application, the applicant shall supply a detailed description of the trade mark, approved by the Registrar, and shall state in the advertisement that a representation of the trade mark is deposited in the Registry for inspection.

(4)

When an application relates to a series of trade marks the Registrar may, if he thinks fit, direct the applicant to insert with the advertisement of the application a statement of the manner in which the several trade marks differ from one another.

(5)

Where a mark consists of other than a word or words in plain type, the applicant for its registration shall, if required by the Registrar for the purposes of advertisement, supply to the Government Printer a representation of the mark which permits direct reproduction by electro-static processes and photo-offset in an unlimited number of copies; and such a representation shall be of such dimensions as the Registrar may require or permit for the purpose.

OPPOSITION TO APPLICATION FOR REGISTRATION OF A TRADE MARK (SECTION 15)

(1)

Any person may within 2 months from the date of any advertisement in the Gazette of an application for registration of a trade mark file in duplicate on Form TM-No. 6 notice of opposition to the registration; and the Registrar shall forthwith send the duplicate to the applicant.

(2)

Notice of opposition shall include a statement of the grounds upon which the opponent objects to the registration opposed.

(3) If registration is opposed on the ground that the mark resembles another mark already on the register or the registration of which is the subject of a current application, the number and class of that other mark and (except in the case of a registered mark or a mark the subject of an application not yet advertised) the date of the Gazette in which it has been advertised shall be set out in the notice.

(1)

Within 2 months from the date of receipt of the duplicate provided for in rule 23 the applicant shall file a counter-statement on Form TM-No. 7 setting out the grounds on which he relies as supporting his application and the facts, if any, alleged in the notice of opposition which he admits.

(2)

The counter-statement shall be filed together with a duplicate which the Registrar shall send to the opponent.

Within 6 months from the date of receipt of the duplicate the opponent shall file such evidence by way of statutory declaration as he may desire to adduce in support of his opposition and shall send to the applicant a copy of that evidence.

If the opponent files no evidence in accordance with rule 25 he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition; but if he does so file evidence the applicant shall, within 6 months from the date of his receipt of the copy of the opponent’s evidence provided for in rule 25 , file such evidence by way of statutory declaration as he may desire to adduce in support of his application and shall send to the opponent a copy of that evidence.

(1) Within 6 months from the date of receipt by the opponent of the copy of the applicant’s evidence provided for in rule 26 the opponent may file evidence in reply by way of statutory declaration and shall send to the applicant a copy of that evidence.

(2) Evidence in reply shall be confined to matters strictly in reply to the applicant’s evidence.

No further evidence shall be filed by either side, but in any proceedings before the Registrar he may at any time, if he thinks fit, give leave to either the applicant or the opponent to file any evidence upon such terms as to costs or otherwise as the Registrar may think fit.

(1)

Where there are exhibits to statutory declarations filed as evidence in an opposition, the party filing them shall, on the request and at the expense of the other party, send to him a copy or impression of each exhibit or, if a copy or impression cannot conveniently be sent, the originals shall be filed in order that they may be open to inspection.

(2)

The originals of the exhibits referred to in subrule (1) shall be produced at the hearing unless the Registrar otherwise directs.

(1)

After completion of the evidence the Registrar shall send to the parties notice of a date when he will hear argument in the case.

(2)

The date for hearing argument shall be at least 14 days after the date of receipt of the notice by the parties, unless the parties consent to shorter notice.

(3)

Within 7 days from the date of receipt of the notice any party who intends to appear shall give notice by filing Form TM-No. 8 ; and any party who does not do so may be treated as not desiring to be heard, and the Registrar may act accordingly.

(4)

The Registrar shall communicate to the parties, in writing, his decision and, if so required by any party, the written grounds of his decision.

Where in opposition proceedings an extension of time is granted under rule 91 to any party, the Registrar may thereafter, if he thinks fit, without giving the party so favoured a hearing, grant any reasonable extension of time to the other party in which to take any subsequent step.

An appellant entitled to withdraw his application under section 15(8) may do so by sending to the Registrar and to any other party, within 7 days from the date of his receipt of the leave referred to in that section, notice of his intention to withdraw.

Rule 33
�Advertisement of trade mark under section 15(9), 51(2) or 51(4)
�

An advertisement under section 15(9) , 51(2) or 51(4) shall be made in the same manner, with such modifications as may be required to suit the circumstances, as an advertisement relating to an application for registration.

Rule 34
�Security for costs. Costs in uncontested cases
�

(1)

Where a party filing notice of opposition or an applicant filing a counter-statement after receipt of a copy of such a notice neither resides nor carries on business in Hong Kong, the Registrar may require him to give security, in such form as the Registrar may deem sufficient, for the costs or expenses of the proceedings before the Registrar, for such amount as to the Registrar may seem fit, and at any stage in the opposition proceedings may require further security to be given at any time before giving his decision in the case.

(2)

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

REGISTRATION OF A TRADE MARK (SECTION 17)

(1) As soon as practicable after the expiration of 2 months from the date of the advertisement in the Gazette of any application for the registration of a trade mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of section 17(1) , and upon receipt of Form TM-No. 9 together with the prescribed fee, enter the trade mark in the register. The entry of a trade mark in the register shall give the date of the registration, the goods or services in respect of which it is registered and all the particulars specified in section 3(1) , including

(a)

the name and the trade or business address of the proprietor;

(b)

any address for service filed underr ule 100 ;

(c)

particulars of any undertakings given by the proprietor; and

(d)

particulars affecting the scope of the registration or the rights conferred by it.

(2)

In the case of an application which the Registrar accepts only after the applicant has filed the written consent to the proposed registration of the registered proprietor of another trade mark or another applicant for registration, the entry referred to in subrule (1) in the register shall state that it is “BY CONSENT”, and shall give the number of the previous registration or the application for registration.

(3)

When a trade mark has been entered in the register, the fact of registration shall be advertised in the Gazette.

Rule 36
�Death of applicant before registration; assignment after application
�

(1)

If an applicant for the registration of a trade mark dies after his application has been made and before the mark has been entered on the register and another person proves to the satisfaction of the Registrar that he enjoys the same rights in or in respect of the mark that the applicant enjoyed, the application shall proceed and rule 35s hall apply as if that person were the applicant.

(2)

Where an applicant for the registration of a trade mark is also the registered proprietor of a trade mark registered in respect of relevant goods or services and both the registered mark and the mark the subject of the application are assigned or transmitted (other than on death) to the same person, that person may include in his application under rule 40 an application to be treated as the applicant for registration; and in such a case the application shall proceed and rule 35 shall apply as if that person were the applicant.

(3)

Rule 42(2) and (3) shall apply in respect of an application under subrule (2) as it applies in respect of an application under rule 40 .

(4)

For the purposes of subrule (2) , relevant goods or services are—

(a) �

in the case of an application for the registration of a trade mark relating to goods in respect of any goods—

(i) �

the same goods; or

(ii) �

the same description of goods; or

(iii) �services or a description of services associated with the goods or goods of that description; and

(b) �

in the case of an application for the registration of a trade mark relating to services in respect of any services—

(i) �

the same services; or

(ii) �

the same description of services; or

(iii) �goods or a description of goods associated with the services or services of that description.

Upon the registration of a trade mark the Registrar shall send to the proprietor a certificate in Form TM-No. 10 , and shall affix thereto a representation of the mark filed by the applicant under rule 9(4) . No fee shall be charged for the certificate.

NON-COMPLETION OF REGISTRATION

(1)

In any case falling within section 17(4) , that is to say, in any case in which, by reason of default on the part of the applicant, registration of the trade mark in question is not completed on or before the first anniversary of the date on which the application in question was filed under rule 9 , the time specified in the notice of non-completion given by the Registrar under that section within which the application must be completed if it is not to be liable to be treated as abandoned shall be not less than 14 days from the date on which the notice is given.

(2)

In any case not falling within section 17(4) , that is to say, in any case in which registration of the mark is not completed on or before the said anniversary but the failure to register the mark on or before that anniversary is not attributable to default on the part of the applicant, the provisions of subrules (3) to (5) shall apply; but those subrules shall not otherwise apply.

(3)

If the requirements for completion are not satisfied before the end of the period of 1 month beginning on the day following whichever of the events specified in subrule (4) last occurs the Registrar may give notice of non-completion to the effect that if the requirements for completion are not satisfied within the time specified in the notice he may treat the application as abandoned; and the time so specified shall be not less than 14 days from the date on which the notice is given.

(4)

The events referred to in subrule (3) are—

(a) �

expiry of the time within which notice of opposition may be filed under rule 23 or, as the case may be, rule 54 ;

(b) �

the final determination of any opposition proceedings (including the disposal of any appean( �

(c) �

acceptance by the Registrar of the application absolutely;

(d) �

the final determination of any proceedings under rule 20 (including the disposal of any appeal).

(5)

If the requirements for completion are not satisfied within the time specified in a notice of non-completion given under subrule (3) the Registrar may, subject to subrule (7) , treat the application as abandoned.

(6)

The Registrar shall give notice of non-completion under section 17(4) or under subrule (3) , as the case may be, by sending it to the applicant or his agent.

(7)

The Registrar shall not treat an application as abandoned under section 17(4) or under subrule (5) if the requirements for completion are satisfied before he does so.

(8)

For the purposes of this rule, the requirements for completion are satisfied when the Registrar has received the prescribed fee referred to in rule 35(1) and Form TM-No. 9 duly completed.

ASSOCIATED TRADE MARKS (SECTION 24)
�

(1)

Where a mark is registered as associated with any other mark or marks the Registrar shall note upon the register in connection with the first-mentioned mark the numbers of the marks with which it is associated, and shall also note upon the register in connection with each of the associated marks the number of the first-mentioned mark as being a mark associated therewith.

(2)

An application by a registered proprietor under section 24(2) to dissolve the association between 2 or more associated trade marks shall be made by filing Form TM-No. 12 , and shall include a statement of the grounds of the application.

Rule 40
�Application by subsequent proprietor for registration of assignment or
�transmission
�

ASSIGNMENT AND TRANSMISSION (SECTIONS 41 TO 44)

Where a person becomes entitled by assignment or transmission to a registered trade mark, application to register his title shall be made by filing Form TM-No. 14 .

Rule 41
�Joint application for registration of assignment or transmission
�

Application under rule 40 may be made jointly with the registered proprietor.

Rule 42
�Particulars to be stated and copies of documents
�

(1)

An application under rule 40 shall contain the name and trade or business address of the applicant, and shall include full particulars of the instrument, if any, under which he claims his entitlement.

(2)

There shall be filed with the application for retention by the Registrar, an attested copy of any instrument of which particulars are given, but such a copy shall not be open to public inspection.

(3)

The Registrar may at any time, by notice in writing sent to the applicant, require him to produce for inspection any instrument of which an attested copy has been filed.

(1) Where an applicant under rule 40 does not claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, file with the application a statement of case setting forth the full particulars of the facts upon which his claim to be proprietor of the mark in question is based and showing that it has been assigned or transmitted to him.

(2) If the Registrar so requires the case shall be verified by statutory declaration.

The Registrar may call on any person who applies to be registered as proprietor of a registered trade mark for such proof or additional proof of title as he may require for his satisfaction.

Rule 45
�Application for registration of assignment without goodwill
�

(1) An application under rule 40 relating to an assignment, on or after the date of the commencement of the Ordinance, of a trade mark in respect of any goods or services shall state

(a) �

whether the trade mark was, at the time of the assignment, used in a business in any of those goods or services; and

(b) �

whether the assignment was made otherwise than in connection with the goodwill of that business,

and, if both these circumstances subsisted, then the applicant shall file with the Registrar a copy of the Registrar’s directions to advertise the assignment, obtained upon application under section 41(6) or 41A(6) and rule 49 , and such proof, including copies of advertisements or otherwise, as the Registrar may require that his directions have been fulfilled.

(2)

If the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.

(3)

For the purposes of section 18(3) the period within which a corporation may be registered as the subsequent proprietor of a registered trade mark upon application made under rule 40 shall be 6 months from the date on which the trade mark was entered in the register or such further period not exceeding 6 months as the Registrar may allow, on application being made to him by filing Form TM-No. 16 , by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.

When the Registrar is satisfied as to the title of an applicant under rule 40 he shall cause him to be registered as proprietor of the mark in question in respect of the relevant goods or services and shall enter in the register—

(a)

the name and the trade or business address of the new proprietor;

(b)

any address for service filed under rule 100 ; and

(c)

particulars of the assignment or transmission.

Where pursuant to an application under rule 40, and as the result of a division and separation of the goods or services of a registration, or a division and separation of places or markets, different persons become registered separately whether or not under different official numbers as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Ordinance.

(1)

Any person wishing to obtain the Registrar’s certificate under section 41(5) or 41A(5) shall file an application on Form TM-No. 17, a statement of case in duplicate setting out the circumstances and a copy of any instrument or proposed instrument effecting the assignment or transmission in question.

(2)

The Registrar may call for any evidence or further information that he may consider necessary, and the statement of case shall if required be amended to include all the relevant circumstances or verified by statutory declaration; and if the statement of case is amended, 2 fair copies in its final form shall be filed.

(3)

After hearing the applicant (if so required) and any other person whom he may consider to be interested in the transfer, the Registrar shall consider the matter and issue a certificate thereon and shall attach a copy of the statement of case in its final form to the certificate and affix his seal thereto.

Rule 49
�Registrar’s directions for advertisement of assignment without goodwill of trade
�mark in use
�

(1) An application to the Registrar under section 41(6) or 41A(6) shall be made by the assignee by filing Form TM-No. 18a nd shall state the date on which the assignment was made.

(2)

In the case of a registered trade mark the application shall give particulars of the registration.

(3)

In the case of an unregistered trade mark the application shall show the mark and shall give particulars of the registered trade mark that has been assigned with it in accordance with section 41(3) or 41A(3).

(4)

The Registrar may call for any evidence or further information, and if he is satisfied about the matters in question he shall issue directions in writing with respect to the advertisement of the assignment.

(5)

Extension of the period within which the application may be made shall be for not more than 6 months; and a request to the Registrar for such extension shall be made by filing Form TM- No. 19 before the end of the period for which extension may be allowed.

CERTIFICATION TRADE MARKS (SECTIONS 64, 65, 66 AND 68)

An application for the registration of a certification trade mark under section 64 shall be filed with the Registrar on Form TM-No. 20 .

Rule 51
�Rules to apply as to applications for registration of ordinary trade marks
�

(1)

These rules shall apply to applications for the registration of certification trade marks as they apply to applications for the registration of ordinary trade marks.

(2)

The address of an applicant to register a certification trade mark shall be deemed to be a trade or business address for all the purposes for which such an address is required by these rules.

(1)

The applicant for registration of a certification trade mark shall file (with his application or when required by the Registrar) a statement of case setting out the grounds on which he relies in support of his application and draft regulations for governing the use of the mark, both being in duplicate.

(2)

The Registrar may send to the applicant any observations which he may wish to make on the sufficiency of the case or the suitability of the draft regulations and the applicant may modify either of those documents.

(3)

The Registrar may at any time call for such evidence, if any, as he thinks fit, and shall if required hear the applicant before acting as provided in section 65(5).

(4) Where the application has been accepted, the approved regulations and the form of application shall be open to public inspection.

An application for the registration of a certification trade mark required to be advertised under section 66 shall be advertised by the applicant in one issue of the Gazette. The advertisement shall set forth all the conditions and limitations subject to which the application has been accepted. Where the mark consists of other than a word or words in plain type, rule 22(5) shall apply.

Expanded Cross Reference: 23 , 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31 , 32 , 33 , 34

(1)

Any person may within 2 months from the date of the advertisement of an application for registration of a certification trade mark file in duplicate on Form TM-No. 6 with the Registrar notice of opposition under section 66(1).

(2)

Any person may within the same period as mentioned in subrule (1) file in duplicate on Form TM-No. 22 with the Registrar a notice of opposition under section 66(2).

(3)

The Registrar shall forthwith send to the applicant the duplicate filed under subrule (1) or (2) as the case may be and rules 23to 34 shall apply to the proceedings on such notices of opposition with such modifications as may be required to suit the circumstances.

(4) In case of doubt any party may apply to the Registrar for directions.

Rule 55
�Application by registered proprietor for variation of regulations
�

(1)

An application by a registered proprietor of a certification trade mark under section 68(1) for variation of the deposited regulations shall be made by filing Form TM-No. 25 .

(2)

Where the Registrar requires such an application to be advertised by the applicant in the Gazette the time within which any person may file notice with the Registrar of opposition to the application shall be 2 months from the date of the advertisement.

Rule 56
�Rectification of certification trade mark entries in register
�

Expanded Cross Reference: 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31

(1)

An application by an aggrieved person to the Registrar under section 68(2) for the expunging or varying of an entry in the register of or relating to a certification trade mark, or for varying the relevant deposited regulations, shall be made by filing Form TM-No. 26 , together with a statement setting out full particulars of the grounds on which the application is made.

(2)

The application shall be filed together with 2 copies of the application and 2 copies of the statement, and the Registrar shall forthwith send these copies to the registered proprietor at his trade or business address as entered in the register, and, if an address for service different therefrom is entered in the register, at that address also.

(3)

Where an application under this rule has been made and copies have been sent to the registered proprietor, rules 24to 31 and 34 shall apply to the further proceedings thereon with such modifications as may be required to suit the circumstances; but the Registrar shall not rectify the register or remove the certification trade mark in question from the register merely because the registered proprietor has not filed a counter-statement.

(4)

In any case of doubt arising under this rule, any party may apply to the Registrar for directions.

RENEWAL OF REGISTRATION (SECTIONS 45 TO 47)

(1)

At any time not earlier than 3 months and not later than 1 month before the expiration of the last registration of a trade mark the Registrar shall send to the registered proprietor notice of the approaching expiration.

(2)

The said notice shall be in the form of Form TM-No. 27 but need not be a replica of that form.

(1)

Renewal of registration shall be effected upon the filing of either

(a)

the notice sent in accordance with rule 57o r an exact replica thereof; or

(b)

Form TM-No. 27 , together with the prescribed renewal fee.

(2)

If the filing is effected on or before the date 1 month before the expiration of the last registration, it shall be treated as having been effected on the first day after that date.

If the person filing a document under rule 58i s not the registered proprietor he shall enter on that document his name and address and sign a statement thereon to the effect that he is directed by the proprietor to pay the renewal fee.

If on the expiration of the last registration of a trade mark a renewal fee has not been paid, the Registrar shall advertise that fact forthwith in the Gazette and if within 1 month from the date of the advertisement the notice or replica referred to in rule 58(1)(a) or Form TM-No. 27 is filed together with the renewal fee and the prescribed additional fee he shall renew the registration without removing the mark from the register.

If the renewal fee and the prescribed additional fee have not been paid by the end of the period of 1 month referred to in rule 59, the Registrar may remove the mark from the register as of the expiration of the last registration; but upon the filing of Form TM-No. 29 together with the renewal fee and the prescribed restoration fee he may restore the mark to the register and renew its registration upon such conditions as he may think fit if satisfied that it is just to do so.

Where a trade mark has been removed from the register, the Registrar shall cause to be entered in the register a record of the removal and of its cause.

Rule 62
�Notice and advertisement of renewal or restoration
�

Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Gazette.

Rule 63
�Application to rectify or remove a trade mark from the register
�

RECTIFICATION AND CORRECTION OF REGISTER (SECTIONS 37, 48, 49, 50 AND 57)

(1)

An application to the Registrar under section 37, 48, 49, 50 or 57 for the making, expunging or varying of any entry in the register shall be made by filing Form TM-No. 30 together with a statement setting out fully the nature of the applicant’s interest, the facts upon which he bases his case and the relief which he seeks.

(2)

Where the application is made by a person who is not the registered proprietor of the trade mark in question it shall be filed together with 2 copies of the application and 2 copies of the statement, and the Registrar shall forthwith send these copies to the registered proprietor at his trade or business address as entered in the register, and, if an address for service different therefrom is entered in the register, at that address also.

Expanded Cross Reference: 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31

(1)

Where an application under rule 63 has been made and, where appropriate, copies have been sent to the registered proprietor, the provisions of rules 24 to 31 and 34 shall apply to the further proceedings thereon with such modifications as may be required to suit the circumstances; but the Registrar shall not rectify the register or remove the mark in question from the register merely because the registered proprietor has not filed a counter-statement.

(2)

In any case of doubt arising under this rule, any party may apply to the Registrar for directions.

(1)

Any person other than the registered proprietor alleging interest in a registered trade mark in respect of which an application is made under rule 63 may apply for leave to intervene by filing Form TM-No. 31 , stating thereon the nature of his interest, and the Registrar may, after hearing the parties concerned if so required, grant or refuse such leave upon such terms or conditions as he may think fit.

(2)

Before dealing in any way with an application for leave to intervene the Registrar may require the applicant to give an undertaking to pay such costs as he may award to any party.

(1) A request to the Registrar under section 50 for the alteration of the register shall be made by filing Form TM-No. 32 , Form TM-No. 33 , Form TM-No. 34 , Form TM-No. 35 , Form TM- No. 36 , Form TM-No. 37 or Form TM-No. 38 , as may be appropriate.

(2) Where it appears to the Registrar that the description formerly entered in the register of the registered proprietor or registered user of a trade mark is no longer correct, he may, if he thinks fit, remove it from the register.

In the case of a request under section 50, the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.

Rule 68
�Advertisement of request to enter disclaimer or memorandum
�

Before deciding on a request made under section 50(1)(e) for the entry of a disclaimer or memorandum, the Registrar shall advertise the request in the Gazette in order to enable any person wishing to do so to state, within 2 months from the date of the advertisement, any reasons in writing against the making of the entry.

(1)

Where the Court has certified as provided in section 75 with regard to the validity of a registered trade mark, the registered proprietor thereof may by filing Form TM-No. 39 request the Registrar to add to the entry in the register a note that the certificate of validity has been so granted.

(2)

An office copy of the certificate shall be sent with the request, and the Registrar shall enter a note in the register and publish it in the Gazette.

ALTERATION OF REGISTERED TRADE MARK (SECTION 51)

Application under section 51 for addition to or alteration of a registered trade mark shall be made by filing Form TM-No. 40t ogether with 6 representations of the mark as it will appear when added to or altered; and every such representation shall, subject to rule 13 , comply with rule 12 .

Expanded Cross Reference: 24 , 25 , 26 , 27 , 28 , 29 , 30 , 31

(1)

The Registrar shall consider each application filed in accordance with rule 70 and, if it appears to him to be expedient to do so, shall advertise it in the Gazette before deciding it.

(2)

Within 2 months from the date of the advertisement any person may give notice of opposition to the application by filing Form TM-No. 41 together with a statement of objections, both in duplicate.

(3)

The Registrar shall send to the applicant the duplicate of the notice and of any statement of objections filed together with the Form TM-No. 41 , and rules 24 to 31 and 34 shall apply to any further proceedings on the application with such modifications as may be required to suit the circumstances.

(4)

In any case of doubt arising under this rule, any party may apply to the Registrar for directions.

If the Registrar decides to allow an application filed in accordance with rule 70 he shall add to or alter the mark in the register in accordance with the application, and unless the application has been advertised under rule 71(1) and no notice has been given under rule 71(2) he shall advertise the mark in the Gazette as added to or altered.

In connection with an application to alter a registered trade mark the Registrar may for the purposes of advertisement at any time require the applicant to comply with rule 22(5) , if in the opinion of the Registrar an advertisement describing the addition or alteration in words would not be likely to be understood by persons interested in the matter.

CLASSIFICATION (SECTIONS 8 AND 54)

(1)

For the purposes of trade marks registrations dated before the commencement of the Ordinance, goods are classified in the manner appearing in Schedule 3 , unless any specification has been converted to Schedule 4 in accordance with rule 75 .

(2)

For the purposes of registrations of trade marks relating to goods dated on or after the date of the commencement of the Ordinance, and of registrations of registered users thereunder, and for the purposes of any registrations dated before the commencement of the Ordinance in respect of

which the specifications have been converted in accordance with rule 75 , goods are classified in the manner appearing in Part 1of Schedule 4 .

(3) For the purposes of registrations of trade marks relating to services, services are classified in the manner appearing in Part 2of Schedule 4.

Rule 75
�Application by registered proprietor for conversion of specification
�

(1)

Where the specification of a registered trade mark is founded on Schedule 3 the registered proprietor may apply to the Registrar by filing Form TM-No. 42 for the conversion of that specification so that it may be founded on Part 1of Schedule 4 , whether with or without the striking out of goods therefrom, but so that the registration retains its original date, and he shall include in the application a request for the like conversion of the specification of the goods of any registered users under that registration.

(2)

After receipt of such application the Registrar, in accordance with section 54(3), shall send to the registered proprietor a proposal showing the form which, in the Registrar’s view, the amendment of the register should take.

(3)

Two or more registrations of a trade mark in respect of goods falling within the same class of Part 1 of Schedule 4 , having the same date of registration, may be amalgamated upon conversion in accordance with this rule.

Rule 76
�Advertisement of proposed conversion. Opposition
�

(1)

The advertisement of a proposal for amendment under section 54(3) shall be made by the applicant in one issue of the Gazette.

(2)

Notice of any opposition shall be filed on Form TM-No. 43 within 2 months from the date of the advertisement together with a duplicate of the notice and with a statement in duplicate showing how the proposed conversion would be contrary to section 54(2).

(3)

Upon receipt the Registrar shall send the duplicates to the registered proprietor who may, within 2 months from the date of receipt of such duplicates, file a counter-statement setting out fully the grounds on which the opposition is contested, and if he does so he shall send to the opponent a copy of the counter-statement.

(4)

Upon receipt of the counter-statement the Registrar may require or admit evidence directed to the questions in issue, and if so desired by either party he shall before deciding the matter, give the parties an opportunity to be heard thereon.

(5)

If the Registrar decides that the proposal shall be amended it shall be advertised in the Gazette as so amended; and thereupon subrules (1) to (3) and this subrule shall apply, but only in respect of the matter contained in the amended proposal not contained in the proposal before amendment.

(1)

When a proposal for the conversion of a specification in accordance with rule 75 has been advertised and has not been opposed, and the time for notice of opposition has expired, or having been opposed the opposition has been determined and a conversion allowed, the Registrar shall make all the entries in the register necessary to give effect to the conversion in accordance with the proposal as advertised under rule 76(1) , or if it was amended under rule 76(5) , and shall enter in the register the date when such entries were made.

(2)

In respect of the entries made in the register in accordance with subrule (1) , the expiration of the last registration within the meaning of section 45 shall be the same as that in respect of the corresponding entries before conversion.

DEFENSIVE TRADE MARKS (SECTIONS 55 TO 57)

(1)

An application for the registration of a defensive trade mark under sections 55 and 55A shall be made to the Registrar by filing Form TM-No. 44 together with a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration made by the applicant or some other person approved for the purpose by the Registrar.

(2)

The applicant may file with the statutory declaration or within such time as the Registrar may allow such other evidence as he may desire, whether after request made by the Registrar or otherwise, and the Registrar shall consider the whole of the evidence before deciding on the application.

(3)

Subject to subrules (1) and (2) , these rules shall, except to the extent that they are inappropriate or it is otherwise provided, apply to applications for the registration of defensive trade marks as they apply to applications for the registration of ordinary trade marks.

REGISTERED USERS (SECTIONS 58 TO 63)

An application to the Registrar for the registration under section 58 of a person as a registered user of a registered trade mark shall be made by that person and the registered proprietor by filing Form TM-No. 45 .

(1)

The entry of a registered user in the register shall state the date on which the application for such entry was made, and that date shall be deemed to be the date on which the person mentioned in the entry as a registered user was so registered.

(2)

The entry shall state the name and the trade or business address of the registered user and any address for service filed under rule 100 .

(3)

The Registrar shall send to the registered proprietor of the trade mark in question and to the registered user notification in writing of the registration of the registered user and shall insert such notification in the Gazette. The cost of the notification in the Gazette shall be paid by the applicants.

Rule 81
�Application of registered proprietor to vary entry
�

An application by the registered proprietor of a trade mark for the variation of the registration of a registered user of that trade mark under section 60(1)(a) shall be made by filing Form TM- No. 46 , together with a statement of the grounds on which it is made, and, where the registered user in question consents, with the written consent of that registered user.

Rule 82
�Application by registered proprietor or user to cancel entry
�

An application by the registered proprietor or any registered user of a trade mark for the cancellation of the registration of a registered user of that trade mark under section 60(1)(b) shall be made by filing Form TM-No. 47t ogether with a statement of the grounds on which it is made.

Rule 83
�Application under section 60(1)(c) to cancel entry
�

An application by any person for the cancellation of the registration of a registered user under section 60(1)(c) shall be made by filing Form TM-No. 47 together with a statement of the grounds on which it is made.

(1)

When an application is made in accordance with rule 81 , 82 or 83 , the Registrar shall send written notice thereof to the registered proprietor and to each registered user (not being the applicant), and shall advertise the application in the Gazette.

(2)

If the registered proprietor, a registered user or any other interested person intends to intervene in the proceedings he shall give notice within 2 months from the date of publication of the advertisement by filing Form TM-No. 49 together with a statement of the grounds of his intervention.

(3)

The Registrar shall send a copy of the notice and the statement referred to in subrule (2) to the applicant, the registered proprietor, each registered user whose registration is the subject of the application and any other person who intervenes.

(4)

Any of the persons mentioned in subrule (3) may, within such time or times as the Registrar may appoint, file evidence in support of his case.

(5)

After giving such persons the opportunity of being heard the Registrar may accept or refuse the application or accept it subject to any conditions, amendments, modifications or limitations which he may think right to impose.

(1)

In case of the registration of a registered user for a period, in accordance with section 58(3)(d), the Registrar shall cancel the entry of the registered user at the end of that period.

(2)

Where some or all of the goods or services, as the case may be, are struck out from those in respect of which a trade mark is registered, the Registrar shall at the same time strike them out from those specifications of registered users of the trade mark in which they are comprised.

(3)

The Registrar shall send written notice of every cancellation or striking out under this rule to the registered users whose permitted use is affected thereby and to the registered proprietor of the trade mark in question.

DISCRETIONARY POWER (SECTION 74)

Before exercising adversely to any person any discretionary power given to the Registrar by the Ordinance, or these rules, the Registrar shall, if so required by the person who would be so affected, hear him on the subject.

Except where rule 18 or 19 applies a request under rule 86 for a hearing shall be filed within 1 month from the date on which the person filing the request receives notice sent by the Registrar of any objection to an application or of any other proposal to exercise a discretionary power.

(1)

Upon receipt of a request filed under rule 87t he Registrar shall send to the person making the request notice of a time when he may be heard, which shall be not less than 10 days after the date of receipt of the notice by that person.

(2)

If the person making the request intends to be heard on the matter he shall, within 5 days from the date of his receipt of the notice, file notice of his intention; and if he does not do so he may be treated as not intending to be heard.

(1)

The hearing before the Registrar of any dispute between 2 or more parties relating to any matter in connection with a registered trade mark or an application to register a trade mark shall be in public unless the Registrar, after consultation with those parties to the dispute who appear in person or are represented at the hearing, otherwise directs.

(2)

If the Registrar exercises adversely to any person a discretionary power referred to in rule 86 he shall send to that person notice of his decision.

POWER TO DISPENSE WITH EVIDENCE, ETC.

Where under these rules any person is required to do any act or thing, or to sign any document, or to make any declaration on behalf of himself or of any body corporate, or any document or evidence is required to be filed with the Registrar, and it is shown to the satisfaction of the Registrar that from any reasonable cause the person is unable to do the act or thing, or to sign the document, or to make the declaration, or that the document or evidence cannot be filed as aforesaid, it shall be lawful for the Registrar, upon the filing of such other evidence, and subject to such terms as he may think fit, to dispense with any such act or thing, signature, declaration, document or evidence.

EXTENSION OF TIME

If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of the time for doing any act or taking any proceeding under these rules, not being a time expressly provided in the Ordinance or prescribed by rule 45(3) or 49(5) , he may extend the time for so doing upon such terms as he may direct, and shall give notice thereof to other interested parties. The extension may be granted though the time has expired for doing the act or taking the proceeding in question.

Whenever the last day fixed by the Ordinance, or by these rules, for doing any act or thing at the Registry shall fall on a day when the Registry is closed for the transaction of business or on a Saturday, such day shall be an excluded day for the purposes of the Ordinance and these rules, and it shall be lawful to do the act or thing on the first day following such excluded day which is not an excluded day.

POWER TO TAX COSTS

The Registrar shall have power to tax any costs awarded by him under the Ordinance.

(1) The fees to be paid in relation to trade marks shall be those specified in Schedule 1 and in any case where a form listed in that Schedule in relation to any matter is required to be used that form shall be filed together with the fee specified in respect of that matter.

(2) Fees shall be paid by such means, and in such manner, as the Registrar directs.

The forms mentioned in these rules are those contained in Schedule 2 , modified as necessary to enable them to be used and such forms shall be used in all cases in which they are applicable and may be modified as directed by the Registrar to meet other cases.

Subject to any other directions that may be given by the Registrar, all applications, notices, statements, representations, or other documents authorized or required by the Ordinance or by these

rules to be filed with the Registrar shall be upon strong paper of a size of approximately 210 × 297 mm, and, except in the case of statutory declarations and affidavits, on one side only, and shall have on the left-hand side thereof a margin of not less than 40 mm.

Rule 96 Signature of documents by partnerships, companies and associations

(1)

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

(2)

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

(3)

A document signed for or on behalf of an unincorporated body or association of persons other than a firm may be signed by any person who satisfies the Registrar that he is authorized to sign the document.

(1)

Any document, prescribed form, statutory declaration, evidence, application or request required or authorized to be filed under the Ordinance or by these rules must be filed by hand or by post.

(2)

Any thing required or permitted by the Ordinance, or by these rules to be sent to any person or place or otherwise filed may be sent by post and except for the purposes of rule 58(2) shall, if so sent, be deemed to have been received or filed at the time when the letter, properly addressed and the postage thereon prepaid, containing it would be delivered in the ordinary course of post.

Any document filed in any proceedings before the Registrar and any drawing or other representation of a trade mark may, if the Registrar thinks fit, be amended, and any irregularity in procedure in or before the Registry may be rectified, on such terms as the Registrar may direct.

Where any person is by the Ordinance or these rules bound to file with the Registrar an address, the address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of trade or business or residence of the person whose address is given. The Registrar may require the address to include the name of the street, and the number in the street or name of the premises, if any.

(1)

An applicant, opponent, agent, registered proprietor or registered user who does not reside or carry on business within Hong Kong shall file an address for service within Hong Kong.

(2)

Any other applicant, opponent, agent, registered proprietor or registered user may file an address for service within Hong Kong.

(3)

In any case in which an address for service is filed at the same time as the filing of a form prescribed in these rules which makes provision for the furnishing of an address for service, the address shall be filed on that form; and in any other case it shall be filed on Form TM-No. 38 .

(4)

In any case in which no address for service is filed, the Registrar shall treat as the address for service of the person concerned his trade or business address in Hong Kong, if any.

(5)

Anything sent to any person at an address filed by him, or treated by the Registrar as his address for service, shall be deemed to be properly sent.

(6)

Where, in the case of an address for service entered in the register in accordance with rule 35 , 46 or 80 , doubt arises as to whether it is still appropriate, the Registrar may send to that address a letter requesting the person for whom it is entered to confirm it and to the trade or business address of that person a copy of the letter, and if within 3 months from the date of sending the letter and the copy the Registrar receives no confirmation of the address he may strike it off the register.

(1)

A registered proprietor or registered user of a trade mark whose

(a)

trade or business address is changed; or

(b)

address for service as entered in the register is no longer appropriate, whether by reason

of discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect shall forthwith, by filing Form TM-No. 32 or Form TM-No. 38 , as appropriate, request the Registrar to make the appropriate alteration of the address in the register.

(2)

Upon a request under subrule (1) the Registrar shall, if he is satisfied in the matter, alter the register accordingly.

(3)

If the address of one person is the address for service of more than one registered proprietor or registered user, that person may request the Registrar to make the appropriate alteration in respect of every such proprietor or user by filing a single Form TM-No. 38 suitably

amended so as to give particulars of each registration; and the Registrar may, on proof that the address is that of the applicant and if satisfied that it is just to do so, alter the register accordingly.

(1)

Except as otherwise required by these rules but without prejudice to rule 96 , any act required or permitted to be done under the Ordinance or these rules by or to any person may be done by or to an agent authorized by that person.

(2)

In any particular case the Registrar may require the personal signature or presence of any person.

(3)

The Registrar may by notice in writing sent to an agent require him to produce evidence of his authority.

(4)

Where, after a person has become a party to proceedings before the Registrar, he appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file Form TM-No. 50o n or before the first occasion on which he acts as agent.

(5)

The Registrar shall not be bound to recognize as such agent any person who has been convicted criminally or struck off the roll kept under and in accordance with the provisions of the Legal Practitioners Ordinance (Cap 159) and of any regulations made thereunder or (during the term of his suspension) any person who has been suspended from acting as an attorney, solicitor, or proctor.

(1)

Subject to subrule (2) , any person may, by filing Form TM-No. 51 , request the Registrar to give a certificate as to any entry, matter or thing which he is authorized or required by the Ordinance or these rules to make or do, other than a certificate of registration issued under section 17(3) .

(2)

Before giving a certificate under subrule (1) , the Registrar may, if he thinks fit, require the person making the request to show to his satisfaction an interest in the entry, matter or thing in question.

(3)

Except in a case falling under rule 105 the Registrar shall not be obliged to include in the certificate a copy of any mark unless the person making the request has filed such a copy suitable for the purpose.

Rule 104
�Certificate of mark registered without limitation of colour
�

Amendments retroactively made — see 23 of 1998 s. 2

Where a mark is registered without limitation of colour the Registrar may, for the purpose of obtaining registration outside Hong Kong, give a certificate of its registration either in the colour in which it appears in the register or in any other colour or colours; but in the latter case the certificate shall be marked: “FOR USE IN OBTAINING REGISTRATION OUTSIDE HONG KONG ONLY”.

(Enacted 1992. 23 of 1998 s. 2)

Rule 105
�Certificate for use in obtaining registration abroad
�

Amendments retroactively made — see 23 of 1998 s. 2

(1)

Where a certificate of registration of a trade mark is requested for use in obtaining registration outside Hong Kong, the Registrar shall, subject to subrule (2) , include in the certificate a copy of the mark.

(2)

The Registrar may require the person requesting the certificate to file with him a copy of the mark suitable for the purpose, and may refuse to give the certificate until such a copy is filed.

(3)

The Registrar may state in the certificate such particulars concerning the registration of the mark as he thinks fit, and may omit reference to any disclaimers appearing in the register; but in the case of such omission the certificate shall be marked: “FOR USE IN OBTAINING REGISTRATION OUTSIDE HONG KONG ONLY”.

(Enacted 1992. 23 of 1998 s. 2)

Rule 106
�Manner in which, and person before whom, declaration is to be taken
�

(1) The statutory declarations required by the Ordinance, and these rules, or used in any proceedings thereunder, shall be made and subscribed as follows

(a) �

in Hong Kong-before any notary public or any commissioner or other officer authorized by law in Hong Kong to administer an oath for the purpose of any legal proceeding; (47 of 1997 s. 10)

(b) �

in any other part of Her Majesty’s dominions-before any court, judge, justice of the peace, notary public, or any officer authorized by law to administer an oath there for the purpose of a legal proceeding;

(c) �if made out of Her Majesty’s dominions-before a British minister or person exercising the function of a British minister, or a British consul, vice-consul or other person exercising the functions of a British consul, or before a notary public, or a judge or magistrate.

(2) A person signing the declaration by virtue of the provisions of rule 96 shall state thereon the capacity in which he makes the declaration.

Rule 107
�Seal or signature of officer taking declaration to prove itself
�

Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorized by rule 106 to take a declaration in testimony that the declaration was made and subscribed before him, may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.

Rule 108
�Search to ascertain whether trade mark resembling submitted mark is on
�record
�

(1)

Any person may request the Registrar, by filing Form TM-No. 2 , to cause a search to be made in respect of specified goods or services classified in any one class of Schedule 4 to ascertain whether any trade mark is on record at the date of the search which resembles a trade mark of which a representation shall be contained in the space provided on the form for that purpose and where necessary rule 9(3A)(b) shall apply with such modifications as are required to suit the circumstances. The form shall be filed together with 2 duplicates of such representation. The Registrar shall cause such a search to be made and the person making the request to be sent the result thereof.

(2)

The Registrar may permit any person, on request and on payment of the prescribed fee, to

(a) �

inspect or make a search in any one class of the register;

(b) �

inspect and make a search in the list of pending applications filed on or after 15 November 1989; or

(c) �

inspect a notice of opposition, counter-statement or decision in connection with any opposition or application for rectification of the register relating to any particular trade mark.

(3)

The Registrar shall supply, on request in writing by an applicant for registration of a trade mark (including a certification or defensive trade mark) or a registered proprietor of such a mark and on payment of the prescribed fee, a list of the numbers and the class of all other pending applications or, as the case may be, registered marks owned by such registered proprietor.

Rule 109
�Application or appeal to Court. Right of defendant in action for infringement
�

APPLICATIONS AND APPEALS TO THE COURT

(1)

When any person intends to apply to the Court such application shall be made to the Court by notice of motion.

(2)

When any person intends to appeal to the Court such appeal shall be made by notice of motion within 3 months from the date of the decision appealed against.

(3)

When the Registrar decides to refer an application to the Court, the applicant shall apply to the Court within 3 months from the date of the decision so to refer, and unless he so applies he shall be deemed to have abandoned the application.

(4)

Where under section 13(6) or 15(8) an applicant becomes entitled and intends to withdraw his application, he shall give notice of the intention in writing to the Registrar and to the other parties, if any, to the appeal within 3 months after the leave referred to in those subsections has been obtained.

(5)

A defendant in an action for infringement may, in regard to any registered trade mark in issue, counterclaim for the rectification of the register and shall within the time limited for the delivery of the counterclaim serve the Registrar with the same, and the Registrar shall be entitled to take such part in the action as he may think fit without delivering a defence or other pleading.

(6)

The times specified in subrules (2) and (3) may be extended by the Court or the Registrar upon the application of any party interested and notwithstanding that the time so specified has expired.

(7)

The Court appealed to may, on the application of either party or of its own motion, remove any application or appeal from Court to Chambers or vice versa, and may give such directions as to the scale upon which costs may be taxed as to the Court may seem proper.

Every application to the Court under the Ordinance whether by way of appeal or otherwise shall be served on the Registrar.

Rule 111
�Copy of order of Court to be filed with the Registry
�

ORDERS OF THE COURT

(1) Where an order is made by the Court in any case under the Ordinance, the person in whose favour the order is made or, if there is more than one, such one of them as the Registrar may direct, shall file an office copy of the order and, if rectification or alteration of the register is required, Form TM-No. 53 .

(2) The register shall, where appropriate, be rectified or altered by the Registrar accordingly.

Whenever an order is made by the Court under the Ordinance the Registrar may, if he thinks that the order should be made public, cause it to be published in the Gazette by and at the expense of the person in whose favour the order has been made, or such one of them, if more than one, as the Registrar may direct.

DAYS AND HOURS OF BUSINESS

The Registry shall be open to the public—

(a) �

for filing of notices, applications and other documents every week-day, except Saturday, between the hours of 9:00 a.m. and 12:30 p.m. and between the hours of 1:30

p.m. and 5:00 p.m., and on Saturdays between the hours of 9:00 a.m. and 12:00 noon; and

(b) �

for making a search on the register and of any document to which rule 108(2) applies on request, every week-day, except Saturday, between the hours of 9:30 a.m. and 12:30

p.m. and between the hours of 1:30 p.m. and 4:00 p.m., and on Saturdays between the hours of 9:30 a.m. and 11:30 a.m.

(Omitted as spent)

Expanded Cross Reference: 103 , 104 , 105

[rule 93]
Fee No. 1.	Matter or Proceeding On request for the Registrar’s preliminary advice under section 73 and rule 8, for each trade mark submitted in respect of one class	Amount $ 270	Form No. (Schedule 2) TM-No. 2

2. 3. HK	For a search under rule 108(1) for each trade mark in respect of one class On application not otherwise charged to register a trade Marks, Rules (Consolidation), 1992 (1999), No. 5 (No. 22)	270 1400	TM-No. 2 TM-No. 3 or Page 36 / 102

4. 5. 6. 7. 8. 8a. 9. 10. 10a.	mark (section 13(1), and rule 9(1)) or a series of trade marks (section 26(1) and rule 14) or a certification trade mark (section 64 and rule 50) for a specification of goods or services included in one class On a request to the Registrar to state grounds of decision relating to an application to register a trade mark, and materials used (section 13(4) and rule 20) On notice of opposition before the Registrar under section 15 and rule 23, or under section 66(1) and rule 54(1), or under section 66(2) and rule 54(2), for each application opposed, by opponent On lodging a counter-statement in answer to a notice of opposition under section 15 and rule 24, for each application opposed, by the applicant; or in answer to an application under section 37, 48, 49 or 57, by the proprietor in respect of each trade mark; or in answer to a notice of opposition under section 51 or 54, for each application or conversion opposed, by the proprietor; or in answer to a notice of opposition under section 66(1) and rule 54(1), or under section 66(2) and rule 54(2), or in answer to an application under section 68(2) and rule 56, for each application On the hearing of each opposition under 1750 TM-No. 8 section 15 and rule 30, by the applicant and by the opponent respectively; or on the hearing of an application under section 37, 48, 49, 57 or 68(2), by the applicant and by the proprietor respectively; or on the hearing of an opposition under section 51 or 54, by the proprietor and by the opponent respectively; or on the hearing of an opposition under section 66(1) and rule 54(1), or under section 66(2) and rule 54(2) by the applicant and the opponent respectively For registration of a trade mark (including a certification or defensive trade mark) or a series of trade marks for a specification of goods or services included in one class (Repealed L.N. 541 of 1994) On application, under section 24(2) and rule 39(2), to dissolve the association between registered trade marks On application, under section 43 and rule 40, to register a subsequent proprietor in a case of assignment or transmission of a single trade mark On application, under section 43 and rule 40, to register a subsequent proprietor of more than one trade mark standing in the same name, the devolution of title being the same in each ease—	1750 900 600 1750 2000 900 900	TM-No. 20 appropriate TM-No. 5 TM-No. 6 TM-No. 22 appropriate TM-No. 7 TM-No. 9 TM-No. 12 TM-No. 14 TM-No. 14	as or as
11.	(a) for the first mark (b) for every other mark On application, under section 18(3) and rule 45(3), for extension of time for registering a corporation as subsequent proprietor of trade marks on	900 120 600	TM-No. 16

one assignment

12. �On application for certificate of the Registrar, under section 41(5) and section 41A(5) and rule 48

(a)

for the first mark proposed to be assigned

(b)

for every other mark of the same proprietor included in that assignment

13. �On application, under sections 41(6) and 41A(6) and rule 49(1), for directions by the Registrar for advertisement of assignment of trade marks in use, without goodwill—

(a)

for one mark assigned

(b)

and for every other mark assigned with the same devolution of title

14. �On application, under sections 41(6) and 41A(6) and rule 49(5), for extension of time for applying for directions for advertisement of assignment of trade marks in use, without goodwill, in respect of one devolution of title

19. �On request, under section 68(1) and rule 55(1), by the registered proprietor of a certification trade mark to permit alteration of the deposited regulations thereof—

(a)

for the regulations of one such registration

(b)

for the same or substantially the same regulations of each other registration proposed to be altered in the same way and included in the same request

1. On application, under section 68(2) and rule 56(1), to expunge or vary the registration of a certification trade mark or to vary the deposited regulations of a certification trade mark
2. For renewal, under section 45 and rule 58, of registration of a trade mark or series of trade marks (including defensive and certification trade marks) at expiration of last registration
3. Additional fee under rule 59
4. Restoration fee under rule 60
5. On application, under section 37, 48, 49 or 57 and rule 63, for rectification of the register or removal of a trade mark from the register
6. On application, under rule 65(1), for leave to intervene in proceedings under section 37, 48, 49 or 57 for rectification of the register or removal of a trade mark from the register
1. For altering, under section 50 and rule 66(1), one or more entries of the trade or business address of a registered proprietor or a registered user of a trade mark where the address in each case is the same and is altered in the same way—
1. for the first entry
2. for every other entry
7. On request, not otherwise charged, for correction of

clerical error in register

28. �On application, under section 50 and rule 66(1), to change the name of a proprietor or a registered user of a single trade mark where there has been no change in the proprietorship or in the identity of the user

28a. �On application, under section 50 and rule 66(1), to change the name of a proprietor or a registered user of more than one trade mark standing in the same name, where there has been no change in the proprietor or in the identity of the user, the change being the same in each case—

(a)

for the first mark

(b)

for every other mark

1. For cancelling, under section 50(1)(c) or (d) and rule 66(1), the entry or part of the entry of a trade mark upon the register on the application of the registered proprietor of the trade mark
2. On request, under section 50(1)(e) and rule 66(1), by the registered proprietor of a trade mark for entry of disclaimer or memorandum in the register

32. �On request to enter in the register and advertise a certificate of validity, under section 75 and rule 69—

(a)

for the first registration certified

(b)

for every other registration certified in the same certificate

33. �On application to the Registrar, under section 51 and rule 70, for leave to add to or alter a single registered trade mark

33a. �On application to the Registrar, under section 51 and rule 70, for leave to add to or alter more than one registered trade mark of the same proprietor, being identical marks, the addition or alteration to be made, in each case, being the same—

(a)

for the first mark

(b)

for every other mark

1. On notice of opposition, under section 51(2) and rule 71(2), to application for leave to add to or alter registered trade marks, for each application opposed
2. On application by the registered proprietor, under section 54 and rule 75(1), for conversion of specification
1. On notice of opposition, under section 54(3) and rule 76(2), to a conversion of the specification or specifications of a registered trade mark or registered trade marks—
1. for one mark
2. for every other mark of the same proprietor having the same specification
3. On application, under sections 55 and 55A and rule 78(1), to register a defensive trade mark for a

38. 38a.	specification of goods or services included in one class On application, under section 58 and rule registered trade mark in respect of goods or services within the specification thereof On application, under section 58 and rule 79, to enter the same registered user of 79, to enter a registered user of a more than one registered trade mark of the same registered proprietor in respect of goods or services within the respective specifications thereof and subject to the same conditions and restrictions in each case—	1100	TM-No. 45 TM-No. 45
39. 39a. 40. 40a.	(a) for the first mark (b) for every other mark of the proprietor included in the application and statement of case On application by the proprietor of a single trade mark, under section 60(1)(a) and rule 81, to vary the entry of a registered user thereof On application by the proprietor of more than one trade mark under section 60(1)(a) and rule 81, to vary the entries of a registered user thereof— (a) for the first mark (b) for every other mark of the proprietor for which the same user is registered, included in the application On application by the proprietor or registered user of a single trade mark, under section 60(1)(b) and rule 82, for cancellation of the entry of a registered user thereof On application by the proprietor or registered user of more than one trade mark, under section 60(1)(b) and rule 82, for cancellation of the entries of a registered user thereof—	1100 120 900 900 120 900	TM-No. 46 TM-No. 46 TM-No. 47 TM-No. 47
41.	(a) for the first mark (b) for every other mark of the proprietor for which the same user is registered, included in the application On application under section 60(1)(c) and rule 83, to cancel the entry of a registered user of a single trade mark	900 60 900	TM-No. 47
41a.	On application under section 60(1)(c) and rule 83, to cancel the entries of a registered user of more than one trade mark—		TM-No. 47
42.	(a) for the first mark (b) for every other mark of the same proprietor for which the same user is registered included in the application On notice under section 61 and rule 84(2) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of trade marks	900 60 900	TM-No. 49
43.	For certificate of the Registrar (other than certificate under section 17(3)), under rules 103 to 105, of the registration of a trade mark or a series trade marks <* Note— Exp. x-Ref: Rules 103, 104, 105 * >	270	TM-No. 51

1. For inspecting, or making a search in any one class of 100 —
   �the register, or inspecting a notice of opposition,
   �counter-statement or decision in connection with any
   �opposition or application for rectification of the register
   �relating to any particular trade mark, or inspecting or
   �making a search in the list of pending applications, for
   �every half hour or part thereof
   �
1. For every entry in the register of a rectification thereof 550 TM-No. 53
   �or an alteration therein, not otherwise charged
   �45a. On application to the Registrar for an extension of time 270 for —
   �under rule 91 for doing any act or taking any proceeding every 3
   �

months or less

2. Other than providing to an applicant a copy of a device 6 —
   �mark when setting out the Registrar’s objections under
   �rule 18 or giving notice under rule 19(1A), for office
   �copy of entry in the register or of document, for each
   �page or portion of a page
   �
3. For certifying office copy, or MS. or photographic or 140 —
   �printed matter
   �
1. On the taxation of a bill of costs, for every $100 or —
   �fraction of $100 of the amount allowed—
   �
1. for the first $100000 �6
2. for the next $150000 �4
3. for the next $250000 �3
4. for the remainder �1
4. On each request by an applicant or a registered 270 —
   �proprietor for a list of the file numbers of all pending
   �applications or registration numbers of registered marks
   �owned by such applicant or proprietor
   �
5. On filing notice, under section 92(6) and rule 15A, 1000 TM-No. 54
   �electing to have the registrability of a mark determined
   �in accordance with the Ordinance, as amended by the
   �Intellectual Property (World Trade Organization
   �Amendments) Ordinance 1996 (11 of 1996) (L.N. 299
   �of 1996)
   �

(Enacted 1992. L.N. 379 of 1993; L.N. 541 of 1994; L.N. 438 of 1997; L.N. 472 of 1997)

Expanded Cross Reference: 103, 104, 105

Amendments retroactively made — see 23 of 1998 s. 2

Request, under section 73 and rule 8, for Registrar’s preliminary advice on registrability and request for search under rule 108(1) (L.N. 299 of 1996) Application for registration of trade mark or series of trade marks (other than defensive or certification trade marks) Additional representation of trade mark to be filed together with an application for registration Request for statement of Registrar’s grounds of decision Notice of opposition before Registrar to application for registration of a trade mark (other than a certification trade mark under section 66(2) and rule 54(2)) Counter-statement to opposition, rectification, or conversion before Registrar Notice to Registrar of attendance at hearing in opposition matter, or in rectification, removal or certain other proceedings Application for entry of trade mark in register and issue of certificate of registration (L.N. 541 of 1994) Certificate of registration of a trade mark Application to Registrar, under section 24(2) and rule 39(2), to dissolve association between registered trade marks Request, under rule 40, to be registered as subsequent proprietor Application, under section 18(3) and rule 45(3), for extension of time to request registration of corporation-assignee as subsequent proprietor Application for certificate of Registrar under sections 41(5) and 41A(5) and rule 48 with reference to proposed assignment of a registered trade mark Application, under sections 41(6) and 41A(6) and rule 49(1), for Registrar’s directions for advertisement of assignment of trade mark in use, without goodwill Application, under sections 41(6) and 41A(6) and rule 49(5), for extension of time in which to apply for directions for advertisement of assignment of trade mark in use, without goodwill Application, under section 64 and rule 50, for the registration of a certification trade mark Notice to Registrar, under section 66(2) and rule 54(2) of opposition to an application for registration of a certification trade mark Request, under section 68(1) and rule 55(1), for consent of Registrar to alteration of certification trade mark regulations Application to Registrar, under section 68(2) and rule 56(1), for expunging or varying an entry in register relating to a certification trade mark or varying the deposited regulations Application, under section 45 and rule 58, for renewal of registration of a trade mark and forwarding additional fee, under rule 59, to accompany renewal fee within 1 month after

advertisement of non-payment of renewal fee
Application	for		restoration		and			renewal	of	a	trade	mark
removed from register for non-payment of fee
Application,		under		rule 63,		for	rectification			of	register		or
removal of trade mark from register

Schedule 3 to Schedule 4 Application, under sections 55 and 55A and rule 78(1), for registration of a defensive trade mark Application, under section 58 and rule 79, for registration of a registered user Application by a registered proprietor, under section 60(1)(a) and rule 81, for variation of the entry of a registered user Application under section 60(1)(b) and (c)and rules 82 and 83, for cancellation of entry of registered user Notice, under section 61 and rule 84(2), of intention to intervene in proceedings for variation or cancellation of an entry of a registered user Authorization of agent, under rule 102(4) Request for general certificate of Registrar, under

rules 103 to 105
TM-No. 53	Notice of order of court for alteration or rectification of register					45
	(rule 111)
TM-No. 54	Notice, under section 92(6) and rule 15A, electing to have the					50
	registrability of			a	mark determined in accordance with the
	Ordinance,	as	amended by the Intellectual Property (World
	Trade Organization Amendments) Ordinance 1996 (11 of 1996)
	(L.N. 299 of 1996)

HK Marks, Rules (Consolidation), 1992 (1999), No. 5 (No. 22) Page 46 / 102

(L.N. 299 of 1996) Application No. _______________________

(L.N. 299 of 1996)
�

_______________________ 19 Day Month Year Name (BLOCK LETTERS) ___________________________________ See rules 96 and 102

(23 of 1998 s. 2)
�

(23 of 1998 s. 2) An applicant or registered proprietor who is resident outside Hong Kong must give a Hong Kong address for service to which all correspondence from the Trade Marks Registry will be sent

(23 of 1998 s. 2) If the applicant for the hearing is resident outside Hong Kong a Hong Kong address must be given, to which all correspondence from the Trade Marks Registry will be sent

(L.N. 541 of 1994; 23 of 1998 s. 2)

It is hereby certified that the Trade Mark a specimen of which is hereunto annexed has been registered in Part of the Register in the name of

in Class in Under No. as of the date of ,19,
�respect of
�Sealed at my direction this day of ,19.
�Trade Marks Registry, for Registrar of Trade Marks
�Intellectual Property
�Department, Hong Kong.
�

Note: 1. Registration is for a period of 7 years from the date first above-mentioned. At the end of that period it may be renewed for 14 years, after which it may be renewed successively for further periods of 14 years.

1. This certificate is not for use in legal proceedings or for obtaining registration outside Hong Kong.
2. Upon any change of ownership of this trade mark, or change in address, application should AT ONCE be made to the Registrar to register the change.

TRADE MARKS ORDINANCE Form TM-No. 12 Trade Marks Rules

(23 of 1998 s. 2)
�

NOTE: An address for service if not already supplied should be filed on form TM-No. 38.
�

Form TM-No. 20 Trade Marks Rules

Application for Registration of a Certification Trade Mark section 64 and rule 50 01 Part of the register in

(L.N. 299 of 1996)
�

Name (BLOCK LETTERS) ______________________________ See rules 96 and 102 Official capacity of signatory _____________________________

Name (BLOCK LETTERS) ______________________________ See rules 96 and 102

See Schedule 1 to the			TRADE MARKS ORDINANCE		Form TM-No. 31
Trade	Marks	Rules	(CHAPTER 43)	Fee No. 25
for details of fees
Attention is drawn to			Application for Leave to Intervene in Proceedings			FOR OFFICIAL USE
rule 65(1)			relating to Rectification or Removal of a Trade
			Mark from the Register

Name (BLOCK LETTERS) ______________________________ See rules 96 and 102

Name (BLOCK LETTERS) ______________________________ See rules 96 and 102

(L.N. 299 of 1996)
See Schedule 1 to the					TRADE MARKS ORDINANCE				Form TM-No. 34
Trade	Marks		Rules		(CHAPTER 43)			Fee No. 28 or 28a
for details of fees
Attention is drawn to					Request to enter Change of Name of Registered					FOR OFFICIAL USE
section		50		and	Proprietor	or	Registered User of Trade Mark
rule 66(1)					upon the Register

Agent’s own reference See rules 96 and 102

TRADE MARKS ORDINANCE				Form TM-No. 38
(CHAPTER 43)				No Fee
Attention is drawn to			Request to enter, alter or substitute an Address		FOR OFFICIAL USE
rules 100 and 101 of			for Service
the	Trade	Marks
Rules

Name (BLOCK LETTERS) ______________________________ See rules 96 and 102

TRADE MARKS ORDINANCE Form TM-No. 46 Trade Marks Rules

(CHAPTER 43) Fee No. 39 or 39a for details of fees Attention is drawn to

FOR OFFICIAL USE section 60(1)(a) and a Trade Mark for Variation of the rule 81 Registration of a Registered User thereof

This application must be filed together with a statement of the grounds for the application and the written consent (if given) of the registered user If you do not have enough space use a separate sheet of Paper	1. Registration Nos. and Class Nos. of the marks for which application to vary the registration of the registered user is made Registration No. Class No. __________________________________ _____________________ __________________________________ _____________________ __________________________________ _____________________
	__________________________________ _____________________
	2. Full name of registered proprietor of the marks shown above
	3. Full name of registered user whose registration as a user of the marks shown in Part 1 is to be varied
	5. Agent’s details
	Name
	Address
	Agent’s own reference Signature Date
	__________________________ 19 Day Month Year
See rules 96 and 102	Name (BLOCK LETTERS) ______________________________ Official capacity of signatory _____________________________

See Schedule 1 to the	TRADE MARKS ORDINANCE			Form TM-No. 47
Trade Marks Rules for details of fees	(CHAPTER 43)			Fee No. 40, 40a, 41 or 41a
Attention is drawn to section 60(1)(b) and (c) and rules 82 and	Application for Registered User	Cancellation	of	Entry	of	a	FOR OFFICIAL USE

Insert written particulars of the trade mark. If the trade mark includes a device refer only to “a device”	Registration No. Class No. __________________________________ _____________________ __________________________________ _____________________ __________________________________ _____________________ __________________________________ _____________________ 2. Details of *applicant/agent making the request for a general certificate and to which the certificate is to be sent
	Name
	Address
Mark the appropriate box(es) with an X	3. Certificate requirements If a certificate of registration is required, mark this box with an X otherwise set out below the particulars which the Registrar is requested to certify:
	Indicate whether it is:
	For use in legal proceedings
	For use in obtaining registration outside Hong Kong
	For use other than in legal proceedings or in obtaining registration outside Hong Kong Signature Date
	__________________________ 19 Day Month Year
See rules 96 and 102	Name (BLOCK LETTERS) ______________________________ Official capacity of signatory _____________________________

Reminder The new filing date of your converted application will be the commencement date of sections 18 to 25 of the Intellectual Property (World Trade Organization Amendments) Ordinance 1996 (11 of 1996).

(Enacted 1992. L.N. 299 of 1996; 23 of 1998 s. 2)

(Note: This was the Classification in the Third Schedule to the Trade Marks Rules under the Trade Marks Ordinance (Chapter 43, Laws of Hong Kong, Revised Edition 1950)).

Class Goods included in class

1 Chemical substances used in manufactures, photography, or philosophical research, and

anti-corrosives.

2 Chemical substances used for agricultural, horticultural, veterinary, and sanitary

3 Chemical substances prepared for use in medicine and pharmacy.

4 Raw, or partly prepared, vegetable, animal, and mineral substances used in manufactures,

not included in other classes.

5 Unwrought and partly wrought metals used in manufacture.

6 Machinery of all kinds, and parts of machinery, except agricultural and horticultural

machines and their parts included in class 7.

7 Agricultural and horticultural machinery, and parts of such machinery.

8 Philosophical instruments, scientific instruments, and apparatus for useful purposes;

instruments and apparatus for teaching.

9 Musical instruments.

10 Horological instruments.

11 Instruments, apparatus, and contrivances, not medicated, for surgical or curative

purposes, or in relation to the health of men or animals.

12 Cutlery and edge tools.

13 Metal goods, not included in other classes.

14 Goods of precious metals and jewellery, and imitations of such goods and jewellery.

16 Porcelain and earthenware.

17 Manufactures from mineral and other substances for building or decoration.

18 Engineering, architectural, and building contrivances.

19 Arms, ammunition, and stores, not included in class 20.

20 Explosive substances.

21 Naval architectural contrivances and naval equipments not included in other classes.

22	Carriages.
23	(a) Cotton yarn.
	(b) Sewing cotton.
24	Cotton piece goods.
25	Cotton goods not included in other classes.
26	Linen and hemp yarn and thread.
27	Linen and hemp piece goods.
28	Linen and hemp goods not included in other classes.
29	Jute yarns and tissues, and other articles made of jute, not included in other classes.
30	Silk, spun, thrown or sewing.
31	Silk piece goods.
32	Silk goods not included in other classes.
33	Yarns of wool, worsted or hair.
34	Cloths and stuffs of wool, worsted or hair.
35	Woollen and worsted and hair goods, not included in other classes.
36	Carpets, floor-cloth, and oil-cloth.
37	Leather, skins unwrought and wrought, and articles made of leather not included in other
	classes.
38	Articles of clothing.
39	Paper (except paper hangings), stationery, and bookbinding.
40	Goods manufactured from india-rubber and gutta-percha not included in other classes.
41	Furniture and upholstery.
42	Substances used as food or as ingredients in food.
43	Fermented liquors and spirits.
44	Mineral and aerated waters, natural and artificial, including ginger beer.
45	Tobacco, whether manufactured or unmanufactured.
46	Seeds for agricultural and horticultural purposes.
47	Candles, common soap, detergents; illuminating, heating, or lubricating oils; matches;
	and starch, blue, and other preparations for laundry purposes.
48	Perfumery (including toilet articles, preparations for the teeth and hair and perfumed
	soap).
49	Games of all kinds and sporting articles not included in other classes.
50	Miscellaneous
	(1) Goods manufactured from ivory, bone or wood, not included in other classes.
	(2) Goods manufactured from straw or grass, not included in other classes.
	(3) Goods manufactured from animal and vegetable substances, not included in other
	classes.
	(4) Tobacco pipes.
	(5) Umbrellas, walking sticks, brushes and combs for the hair.
	(6) Furniture cream, plate powder.
	(7) Tarpaulins, tents, rick-cloths, rope (jute or hemp), twine.
	(8) Buttons of all kinds other than of precious metal or imitations thereof.
	(9) Packing and hose.
	(10) Other goods not included in the foregoing classes.
	(Enacted 1992)
	Schedule 4