Adapta- tion of mtries in
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registration in Hong Kong of the trade mark so regis- tered in the country or place of origin, and will take alt necessary steps to complete the registration.
54. (1) The Governor in Council may from time to time make such rules, prescribe such forms and generally do such register to things as he thinks expedient, for empowering the Registrar to amend the register, whether by making or expunging or varying entries therein, so far as may be requisite for the purpose of adapting the designation therein of the goods or classes of goods in respect of which trade marks are registered to any amended or substituted classification that may be prescribed.
amended or substituted classifica- tion of gooda
Defensive registra- tion of trade marks.
(2) The Registrar shall not, in exercise of any power con- ferred on him for the purpose aforesaid, make any amendment of the register that would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made, or of antedating the registration of a trade mark in respect of any goods:
Provided that this subsection shall not have effect in relation to goods as to which the Registrar is satisfied that compliance with this subsection in relation thereto would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.
(3) A proposal for the amendment of the register for the purpose aforesaid shall be notified to the registered proprietor of the trade mark affected, shall be subject to appeal by the registered proprietor to the Court, shall be advertised with any modifications, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the provisions of subsection (2). The decision of the Registrar on any such opposition shall be subject to appeal to the Court.
Defensive Trade Marks.
55. (1) (2) Where a trade mark consisting of an invented word or invented words, or a device or devices, or a combination of them, has become so exceptionally well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely
to detract from its distinctive character in respect of the first-mentioned goods, then, notwithstanding that such use would not be likely to be taken as indicating a con- nexion in the course of trade between those other goods and a person entitled to use the trade mark in relation to the first-mentioned goods and that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods, and notwithstanding anything in Section 37, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the first-mentioned goods, be registered in his name in respect of those other gunds as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those other goods under section 37.
(b) In determining whether a trade mark is exceptionally well known and whether its use in relation to other gouds would be likely to detract from its distinctive character in respect of the goods for which it is registered, the tribunal shall have regard to all related circumstances including the length of time the trade mark has been in use, the extent to which it has become well known in relation to the goods in respect of which it is registered, the nature of those goods, and whether the notoriety of the mark is limited because of its use on goods that are not of wide distribution.
(a) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwith- standing that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.
(3) Except as otherwise expressly provided in this section and in sections 56 and 57, the provisions of this Ordinance shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.