Legislative Council Panel on Trade and Industry
Modernisation of the Trade Marks Law in Hong Kong
This paper outlines proposals for the modernisation of the trade marks law in Hong Kong.
2. Hong Kong has provided an independent registration system for the protection of trade marks since 1873. The Trade Marks Ordinance (Cap. 43) sets out the criteria and procedures for the registration and maintenance of trade marks. There are currently more than 100,000 registered trade marks on the Hong Kong Trade Marks Register.
3. By virtue of an omnibus amendment bill in 1996, all intellectual property laws in Hong Kong, including the Trade Marks Ordinance, are already compliant with the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS" Agreement) of the World Trade Organisation. Otherwise, the Trade Marks Ordinance has remained largely unchanged since its enactment in 1955.
4. In March 1993, the Administration issued a consultation paper in respect of the reform and the modernisation of the trade marks regime in Hong Kong. Taking into account comments received, the Administration circulated a draft Trade Marks Bill for consultation with more than 40 organisations, including major trade mark owners and users in the relevant sectors as well as those in the legal and academic fields, in February 1997.
Draft Trade Marks Bill
5. In the light of comments received during the consultation exercise in 1997, we have prepared the revised draft Trade Marks Bill. The draft Bill seeks to modernise Hong Kong's trade marks laws taking into account prevailing international developments in the protection of intellectual property rights, and provides enhanced protection to trade mark owners. It also seeks to simplify procedures for the registration and maintenance procedures of trade marks.
6. The main provisions of the draft Trade Marks Bill are summarised below.
Registrable trade marks
7. We propose to broaden the definition of a trade mark. The requirement for a sign to be "visually perceptible" in order to be registrable is removed. The new definition of a trade mark as a sign capable of being represented graphically will permit a wider range of marks to be registered. However, certain shapes will remain unregistrable. This is to prevent the trade marks system from being used to obtain an automatic and indefinite extension of the monopoly conferred by patent, design or copyright law. This is in line with prevailing international norms.
8. In order to streamline application procedures and to simplify the registration system, we propose that the distinction between Parts A and B of the register be abolished. There will thus only be one category of registered marks.
9. The draft Bill also provides for multi-class applications : applying for a trade mark in several classes of goods or services in one single application.
Relative grounds for refusal of registration
10. There will be wider grounds for refusing a trade mark application on the basis of a prior existing registration. This concept will cover cases where there is a likelihood of confusion on the part of the public because of a similarity of marks or of goods or services. It will, for example, be possible to oppose the registration of a mark for goods or services which are not similar to those for which an earlier mark is registered, if this would amount to taking unfair advantage of the distinctive character of the earlier registered trade mark.
Infringement of registered trade marks
11. We propose to enhance the protection offered to registered trade mark proprietors. The definition of infringement is to be broadened to mirror the extended relative grounds for refusal of registration. There are also express provisions in the draft Bill to enable registered proprietors to apply for orders for erasure, delivery up and disposal in respect of infringing goods, materials and articles. This will standardise the remedies available to a proprietor in line with those available for copyright, patent and registered design infringement.
12. To ensure that infringement proceedings are not threatened without sufficient case, there will be a remedy for groundless threats. This will bring trade marks into line with other intellectual property rights such as patents and designs.
Assignments and the licensing of trade marks
13. We propose to simplify the assignment and the licensing of registered trade marks. At the same time, the draft Bill contains provisions encouraging the registration of such assignments and licences with the Registrar of Trade Marks in the interest of transparency.
Division and merger
14. The draft Bill contains provisions for the division of an application for a trade mark into two or more separate applications. This will, for example, enable a mark to proceed to registration if it only faces opposition proceedings in respect of some of the goods or services applied for in the original application. It will also be possible to merge separate applications for a trade mark and separate registrations of marks.
15. Under the existing Trade Marks Ordinance, Hong Kong already accords priority to an applicant who has previously filed an application in a Paris Convention country or in a member of the World Trade Organisation. While priority will continue to be granted to such applications, the draft Bill will also seek to cater for any future regional trade mark systems that may be established.
Duration of protection for a registered trade mark
16. A trade mark will be registered in Hong Kong for a period of 10 years from the date of registration. Registration may be renewed, on application from the proprietor, for periods of 10 years each upon the payment of a prescribed renewal fee.
Protection of well-known marks
17. We propose that proprietors of well-known marks be entitled to restrain by injunction the use in Hong Kong of identical or similar marks where the use is likely to cause confusion. This right applies whether or not the owner of the mark carries on any business or has any goodwill in Hong Kong. Further, a well-known mark may also be registered as a defensive mark, which will continue to be registrable under the new draft Bill.
Collective trade marks
18. We propose to provide for the first time registration of collective trade marks. The function of a collective trade mark is to indicate a trade connection of goods and services with a proprietor association. It may be used to register geographical indications.
Transitional and consequential arrangements
19. To ensure continuity in the protection of trade marks, existing registered marks will be transferred on the commencement of the new law to the register kept under the new law. As for pending applications for registration which have not been advertised, the applicant will have the option of requesting the registrability of the mark to be determined under the new law.
20. We intend to issue the draft Bill together with the draft Trade Marks Rule (which set out the technical and procedural matters for the registration and maintenance of trade marks) to professional organisations for comment in early December 1998. Subject to the outcome of the consultation and Members' views, we plan to introduce the Trade Marks Bill and the draft Trade Marks Rules into the Legislative Council within this legislative year.
21. Members are invited to note and comment on this paper.
Trade and Industry Bureau