1954-HKRS29-8-21_Part04 — Page 11

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(b) that the article or substance was formerly manufactured

under a patent, that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or descrip- tion of the article or substance;

the provisions of subsection (2) shall have effect.

(2) Where the facts mentioned in paragraph (a) or (b) of the proviso to subsection (1) are proved with respect to any word or words, then-

(a) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance in ques- tion or of any goods of the same description, shall be deemed for the purposes of section 48 to be an entry wrongly remaining on the register;

(b) if the trade mark contains that word or those words and other matter, the Court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may, in case of a decision in favour of its remaining on the register, require as a condition thereof that the proprietor shall disclaim any right to the ex- clusive use in relation to that article or substance and any goods of the same description of that word or those words, so, however, that no disclaimer upon the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and (c) for the purposes of any other legal proceedings relating

to the trade mark-

() if the mark consists solely of that word or those words, all rights of the proprietor, whether under the common law or by registration, to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description, or

(ii) if the trade mark contains that word or those words and other matter, all such rights of the proprietor to the exclusive use of that word or those words in such relation as aforesaid,

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shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of the proviso to subsection (1) first became well-known and established, or at the expiration of two years mentioned in paragraph (6) of that proviso,

of trade

53. The Court may, on the application in writing made Removal within seven years from the registration of a trade mark in long mark from Kong by any person aggrieved by such registration, remove such register on trade mark from the register if it is proved to the satisfaction of proof of

prior the Court that such trade mark is identical with, or so nearly registra-

tion in resembles as to be calculated to deceive or cause confusion, મ country of trade mark which was, prior to the registration in Hong Kong of origin." the first-mentioned trade mark, registered (in respect of goods of the same description as those in respect of which the first- mentioned trade mark is registered in Hong Kong) in a country or place from which such goods originate:

Provided that no trade mark shall be removed from the register under this section in the following cases—

(a) if the proprietor of the other trade mark consented to the registration in Hong Kong of the first-mentioned trade mark; or

(b) if the proprietor of the trade mark registered in Hong Kong proves that he or his predecessors in business have continuously used such trade mark in Hong Kong in connexion with such goods as aforesaid from a date anterior to the date of the registration of the other trade mark in the country or place of origin; or

(c) unless the applicant proves either that within the five years immediately preceding the making of the applica- tion under this section there has been bana fide user in connexion with such goods as aforesaid in Hong Kong of the trade mark registered in the country or place of origin or that the special circumstances of the trade account for the non-user of such trade mark in Hong Kong within the same period, or that the trade mark so registered in the country or place of origin was first registered there within the like period of five years, and in either event gives an undertaking to the satisfaction of the Registrar that he will within three months from the making of the application under this section apply for