THE HONGKONG GOVERNMENT GAZETTE, 30TM¤ JULY, 1898.
Memorandum on The Trade Marks Ordinance, 1898.
Since the Ordinance to provide for the Registration of Trade Marks (No. 16 of 1873) was passed, a consider- able development has occurred in the demand for regis- tration not only in England but in flongkong. The Mer- chandise Marks Ordinance 1863, referred to in the Ordinance of 1873, has been replaced by The Merchandise Marks Ordinance, 1-90. Moreover, The Patents, Designs, and Trade Mark Acts, 1883 and 1888, and the Rules thereunder have considerably modified the English practice, while the local Ordinance of 1873, as amended by Ordinance 20 of 1895, is very imperfect, and makes no provision for the classi- fication of goods, the assignment and transmission of trade marks, the removal of trade marks after 14 years regis- tration in default of extended registration upon payment of an additional fee, and some other matters duly provided for in England.
Patents are not granted in this Colony, unless they have been previously granted in England, (See Ordinance 2 of 1892), but, although a similar provision, requiring the registration of a Trade Mark in England before regis- tration in this Colony, would prevent some abuses, such requirement is not feasible in Hongkong, because many applicants desire the registration, here, of Trade Marks used only locally and many of such applicants are foreigners.
It is the practice in this Colony for the Colonial Secre- taby to refer every application to the Attorney-General, who used, until my appointment, to receive a fee of $25 for his report. This fee was abolished some years ago, and, as the number of applications has greatly increased during the last few years, a considerable amount of gra- tuitous extra work has been thrown upon the Attorney General, while the task of the clerk in the Colonial Secré- tary's Office of searching the Register to see whether similar marks have been already registered, is daily increas- ing as the Register grows in bulk.
At present, many marks are submitted for registration which are not Trade Marks, according to the English definition, at all; and in the absence, under the 1873 Ordinance, of any definition, the Attorney General has endeavoured to follow the English practice in deciding whether a Trade Mark should be allowed registration and has often been obliged to apply for the "essential particu- lars and 66
a disclaimer" of added matter. Questions, which are easily answered by the Comptroller in England aided by a competent staff, occasionally require much consideration by the Attorney General in this Colony who has, practically, no assistance whatever, while the absence of any Rules makes his task more difficult.
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I have accordingly drafted a fresh Ordinance and a set of Rules which will, I trust, prove of use to those interested in these matters. The alterations in the new Ordinance and the new Rules are based on the English practice with some local modifications.
In England, applications for the registration of the same mark in different classes of goods are treated as separate and distinct applications, and I see no valid reason why a similar rule should not obtain here.
I am afraid that, owing to the absence of such rule, applications have occasionally been made to register tradé marks in respect of goods as to which the marks never have been used, nor are likely to be used by the applicant forthwith. I suspect this has been done, occasionally, with a view to prevent others from using similar marks in respect of goods or classes of goods in which they deal, but which are really not dealt in by the applicants at all.
It is very necessary, too, that an applicant should state, to the best of his belief, whether the mark he desires to have registered locally has been registered previously in England. I should not be surprised to learn that, in the absence of such requirement, some few marks registered in A's name in England or marks closely resembling them have been registered in B's name in Hongkong, without A's knowledge or consent.
All such practices should be discouraged, and I trust the new Ordinance and Rules will put matters on a more satisfactory basis.
W. MEIGU Goonmas,
Attorney General.
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