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Alice Lee Ken TC Lee
(i) Application for registration: s.3 8 , TMO (Cap 559)! (a) a request for registration of the trade mark; (b) the name and address of the applicant; (c) a statement of the goods or services
Alice Lee Ken TC Lee
(1) A trade mark shall not be registered if- (a) the trade mark is identical to an earlier trade mark; and (b) the goods or services for which the application for registration is made are identical to those for which the earlier trade mark is protected. (2) A trade mark shall not be registered if- (a) the trade mark is identical to an earlier trade mark; (b) the goods or services for which the application for registration is made are similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public. (3) A trade mark shall not be registered if- (a) the trade mark is similar to an earlier trade mark; (b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and (c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public. (4) Subject to subsection (6), a trade mark which is- (a) identical or similar to an earlier trade mark; and (b) proposed to be registered for goods or services which are not identical or similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark is entitled to protection under the Paris Convention as a well-known trade mark and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. NB: Opposition under ss.(4) and (5) have to be raised by s.44 opposition proceedings: see s.12(6),TMO
Alice Lee Ken TC Lee ! Galway Int’l Application re mark “Vica” [1962]
Alice Lee Ken TC Lee (iii) Likelihood of confusion ! s.7(1), TMO: In determining whether the use of a mark is likely to cause confusion on the part of the public, Registrar and court may consider all relevant factors in the circumstances, including whether the use is likely to be associated with the use of the earlier mark ! Sabel BV v Puma AG (1998 ECJ)
Alice Lee Ken TC Lee Inlima SL’s Application for a 3-Dimensional Trade Mark [2000] RPC 661
Alice Lee Ken TC Lee HK Trade Mark Registry Work Manual Factors to be considered when examining application for registration with consent of the earlier TM:
Alice Lee Ken TC Lee
(1) Subject to s.s(2), the following shall not be registered (a) signs which do not satisfy the requirements of s.3(1) (meaning of “trade mark”) (b) trade marks which are devoid of any distinctive character (c) trade marks which consists exclusively of signs which may serve to designate the kind, quality, quantity, intended purpose , value geographical origin, time of production of goods or rendering of services, or other characteristics of goods or services [i.e. descriptive] (d) trade marks which consist exclusively of signs which have become customary in the current language or in the honest and established practices of the trade (2) A trade mark shall not be refused registration under ss.(1)(b) – (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. [i.e. Could acquire distinctiveness after use] (3) A sign shall not be registered as a trade mark if it consists exclusively of- (a) shape that results from nature of goods themselves (b) shape that is necessary to obtain a technical result (c) shape that gives substantial value to the goods (4) (a) Contrary to accepted principles of morality (b) Likely to deceive the public (5) (a) Its use is prohibited in HK under any law (b) Application for registration is made in bad faith NB: Some overlap with s.12(5), TMO [Relative ground] for marks whose use is prevented in HK by any law protecting unregistered TM, esp. passing off
Alice Lee Ken TC Lee S.11(1)(a), TMO S.11(1)(b), TMO
- Signs which do not satisfy the requirements of s.3(1) (meaning of “trade mark” S.3(1): “trade mark” means any sign which is capable of distinguishing goods /services of one undertaking from those of other undertakings and which is capable of being represented graphically
Alice Lee Ken TC Lee
Alice Lee Ken TC Lee
Alice Lee Ken TC Lee
A sign shall not be registered as a trade mark in relation to goods if it consists exclusively of – (a) shape that results from the nature of the goods themselves [HK TMR Manual: For basic or organic shapes ONLY
Alice Lee Ken TC Lee
Ghazilian’s Trade Mark Appn (“TINY PENIS”) [2002] RPC 628, following Masterman’s Design [1991] RPC 89
Alice Lee Ken TC Lee assignment or any extended period allowed by Registrar, applies to Registrar for directions with respect to advertisement of assignment ! NO such requirement under new TMO (3) An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply - (a) in relation to some but not all of the goods or services for which the trade mark is registered; or (b) in relation to use of the trade mark in a particular manner or in a particular locality [i.e. manner and locality of use] Formality requirement: (4) An assignment of a registered trade mark is not effective unless it is made in writing and is signed by or on behalf of the assignor (ii) Licensing: S.33, TMO (1) A licence to use a registered TM may be general or limited (2) A limited licence may, in particular, apply - (a) in relation to some but not all of the goods or services for which the trade mark is registered; or (b) in relation to use of the trade mark in a particular manner or a particular locality (3) A licence is not effective unless it is in writing and is signed by or on behalf of the grantor (iii) Registration of Transactions
Alice Lee Ken TC Lee (4) Where a person becomes the owner or a licensee of a registered trade mark by virtue of a registrable transaction, then unless - (a) an application for registration of the transaction is made before the end of the period of 6 months beginning on the date of the transaction; or (b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter, he is not entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the prescribed particulars of the transaction are registered