Legislative Texts
TRADE MARKS RULES
Chapter 43A
Empowering section
�
(Cap 43, section 90)
[2 March 1992]
(L.N. 5 of 1992)
Rule 1
�Citation
� - (1)
- These rules may be cited as the Trade Marks Rules.
- (2)
- (Omitted as spent)
(Enacted 1992)
Rule 2
�Interpretation
�
(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.
(Enacted 1992)
Rule 3
�Unacceptable words and representations
�
Remarks:
Amendments retroactively made — see 22 of 1999 s. 3
Legislative Texts
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- (Repealed 22 of 1999 s. 3)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.
(Enacted 1992)
Rule 4
�(Repealed 22 of 1999 s. 3)
�
Remarks:
Amendments retroactively made — see 22 of 1999 s. 3
Rule 5
�Armorial bearings, insignia, flags, etc.
�
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.
(Enacted 1992)
Rule 6
�Living persons or persons recently dead
�
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
Legislative Texts
the mark unless the consent of the person or, as the case may be, his personal representatives is filed.
(Enacted 1992)
Rule 7
�Name or description of goods or services
� - (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.
(Enacted 1992)
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.
(Enacted 1992)
Rule 9
�Form of application
�
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
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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) .
(Enacted 1992)
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.
(Enacted 1992)
Rule 11
�Separate applications for different classes
� - (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.
(Enacted 1992)
Legislative Texts
Rule 12
�Representations of marks to be satisfactory
�
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.
(Enacted 1992)
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.
(Enacted 1992)
Rule 14
�Series of trade marks
�
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