LC Paper No. CB(1)1890/98-99
(These minutes have been
seen by the Administration)
Bills Committee on Trade Marks Bill
Minutes of first meeting held on
Thursday, 29 July 1999, at 4:30 pm
in Conference Room A of the Legislative Council Building
Members present :
Hon Margaret NG (Chairman)
Hon Kenneth TING Woo-shou, JP
Hon HUI Cheung-ching
Hon CHAN Kam-lam
Hon Mrs Sophie LEUNG LAU Yau-fun, JP
Hon SIN Chung-kai
Hon FUNG Chi-kin
Members absent :
Hon Albert HO Chun-yan
Hon Mrs Selina CHOW LIANG Shuk-yee, JP
Hon MA Fung-kwok
Hon James TO Kun-sun
Public officers attending :
Miss CHEUNG Siu-hing
Deputy Secretary for Trade and Industry
Mr Peter CHEUNG
Acting Director of Intellectual Property
Mr Ray Perera
Assistant Director of Intellectual Property
Mr Johann WONG
Acting Principal Assistant Secretary for Trade and Industry
Clerk in attendance :
Miss Odelia LEUNG
Chief Assistant Secretary (1)1
Staff in attendance :
Miss Anita HO
Assistant Legal Adviser 2
Mr Andy LAU
Senior Assistant Secretary (1)6
I Election of Chairman
Mr Kenneth TING, who had the highest precedence in the Council
among members of the Bills Committee, presided at the election of Chairman.
He invited nominations for the chairmanship.
2. Miss Margaret NG was nominated by Mrs Sophie LEUNG LAU Yau-fun and
seconded by Mr SIN Chung-kai. Miss Margaret NG accepted the nomination.
3. There being no other nomination, Miss Margaret NG was declared Chairman
of the Bills Committee. Miss NG then took the chair.
4. Members agreed to elect a Deputy Chairman at the next meeting.
5. The Chairman urged members to sound out their primary concerns on
the Bill at an early stage so that sufficient time could be set aside for
discussion with a view to completing the scrutiny work before the end of
the 1999/2000 LegCo session.
II Meeting with the Administration
General introduction of the Bill
6. At the invitation of the Chairman, the Deputy Secretary for Trade
and Industry said that Hong Kong had provided an independent registration
system for the protection of trade marks since 1873. The Trade Marks
Ordinance (Cap. 43) set out the criteria and procedures for the registration
and maintenance of trade marks. The Trade Marks Ordinance had remained
largely unchanged since its enactment in 1955. With the evolvement
of international practice in the protection of intellectual property rights
over this period, the Administration considered it necessary to modernize
Hong Kong's trade marks laws.
7. With the aid of a computer, the Assistant Director of Intellectual
Property (AD/IP) briefed members on the background for modernizing the
trade mark law, the consultation conducted, the objectives and the main
features of the Bill. AD/IP explained that the Agreement on Trade-related
Aspects of Intellectual Property Rights of the World Trade Organization
was concluded in 1995 and set out the minimum standards for protection
of intellectual property. To ensure that these standards were met,
the present Trade Marks Ordinance had to be modernized. Development
of trade marks laws in other common law systems also provided an impetus
for Hong Kong to reform its law. The philosophies behind the reform
were to reduce red-tape, enable easier registration of marks, increase
the range of signs that could be registered as trademarks, enhance transparency
of the registration process and provide a higher standard of protection,
taking into account prevailing international developments. He said
that the Bill also touched on other issues like exhaustion of rights and
(Post meeting note : A set of material presented by the Administration
was tabled and circulated to members after the meeting vide LC Paper No.
8. Explaining the concept of "international exhaustion", AD/IP advised
that it was closely related to the notion of parallel imports which referred
to the import of genuine goods into Hong Kong by somebody other than an
authorized distributor. For example, if an owner put a piece of goods
on the Indonesian market and the goods was subsequently brought into Hong
Kong by somebody in Indonesia, the question was whether the owner's right
to stop people bringing the goods into Hong Kong had been exhausted or
did he still have any form of residual rights. As far as trade marks
were concerned, the question would be whether a registered trade mark was
infringed by the use of the trade mark in relation to goods which had been
put on the market anywhere in the world under that trade mark by the owner
or with his consent.
9. To illustrate the meaning of comparative advertising, AD/IP said
that assuming a telephone company, Company A, claimed that its telephone
charges were lower than those charged by Company B selling identical services,
the advertisement placed by Company A would be regarded as comparative
advertising if it set out a list of its superior services and invited purchasers
to compare its price advantages with Company B.
Internet domain names
10. Mr SIN Chung-kai enquired whether suitable provisions had been included
in the Bill to take into account the rapid development of Internet.
The Acting Director of Intellectual Property (Atg DIP) noted the member's
concern about the registration of Internet domain names. He advised
that this was outside the scope of the Bill the primary purpose of which
was to modernize the Hong Kong's trade marks laws. There was development
internationally concerning registration of Internet domain names since
early this year. The World Intellectual Property Organization (WIPO)
was considering setting up an international organization to regulate registration
of Internet domain names by administrative means. The thinking was
that registration of an Internet domain name would be rejected administratively
if its purpose was to inhibit the registration of a well-known commercial
establishment. Since this was only a preliminary idea under discussion
by WIPO, the Administration considered it inappropriate to include it in
the Bill at the present stage.
Trade Marks Rules
11. At the invitation of the Chairman, Atg DIP briefly explained the
major provisions in each part of the Bill. Members noted that drafting
of the Trade Marks Rules would shortly be completed and the Administration
would later provide the draft Rules to the Bills Committee for consideration.
Further information required
12. To facilitate scrutiny of the Bill, members requested the Administration
to provide the following information:
- the names of organizations/individuals who had been consulted on
the draft Bill; their major concerns; and whether and how these concerns
had been addressed in the provisions of the Bill;
- a comparison of the major provisions of the existing Trade Marks
Ordinance and the Bill together with the reasons for major changes;
- a comparison of the major differences of the second draft Bill and
the Bill; and
- a comparison of the major features of the Bill and the trade marks
laws in other jurisdictions, such as in the United States, the United Kingdom,
Australia and New Zealand.
13. In response to Mrs Sophie LEUNG, Atg DIP said that the rights conferred
to a registered trade mark were localized. A trade marks registered
in Hong Kong would need to be registered in the Mainland in order to enjoy
the rights conferred under the Mainland trade marks registration system.
The Administration noted members' concern on the Mainland trade marks system
and trade marks laws and would provide an information paper at a later
stage if necessary.
14. Members noted that the Administration had consulted more than 40
organizations on the draft Bill on two occasions in 1997 and 1998, including
major trade marks owners, users in the relevant sectors, the legal profession
and academic bodies. Members agreed that the consultees be invited
to make written submissions on the Bill. Members would decide at
a later stage whether some organizations should be invited to present their
views before the Bills Committee.
15. Members agreed that the next two meetings of the Bills Committee
would be held as follows:
- 13 September 1999 at 4:30 pm; and
- 27 September 1999 at 4:30 pm.
III. Any other business
16. There being no other business, the meeting ended at 5:30 pm.
Legislative Council Secretariat
31 August 1999