12777-1909-Ordinances-passed-and-assented-to--Trade-Marks-No-40 — Page 10

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THE HONGKONG GOVERNMENT GAZETTE, DECEMBER 10, 1909.

Unregistered trade mark.

5 Edw. 7 c. 15 s. 42.

Infringe- ment.

Ib. s. 43.

User of

name, address, or description of goods. Ib, s. 14.

Passing

off" action. Ib. s. 45.

Certificate of validity. Ib. s. 46.

Registrar to have notice of proceed. ing for rectification. Ib. s. 47.

Provided always 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 con- sented to the registration in Hongkong of the first mentioned trade mark; or

(b.) if the proprietor of the trade mark registered in Hongkong proves that he or his predecessors in business have continuously used such trade mark in Hongkong in connection 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 application under this section there has been bonâ fide user in connection with such goods as aforesaid in Hongkong 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 Hongkong 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 Re- gistrar that he will within three months from the making of the application under this section apply for registration in Hongkong of the trade mark so registered in the country or place of origin, and will take all necessary steps to complete such registration.

(2) All applications under this section shall be heard in open court in Original Jurisdiction.

43. No person shall be entitled to institute any pro- ceedings to recover damages for the infringement of a trade mark not registered in this Colony.

44. In an action for the infringement of a trade mark the Court trying the question of infringement shall admit evidence of the usages of the trade in respect to the get- up of the goods for which the trade mark is registered, and of any trade marks or get-up legitimately used in connection with such goods by other persons.

45. No registration under this Ordinance shall inter- fere with any bonâ fide use by a person of his own name or place of business, or that of any of his predecessors in business, or the use by any person of any bonâ fide de- scription of the character or quality of his goods.

46. Nothing in this Ordinance contained shall be deemed to affect rights of action against any person for passing off goods as those of another person or the remedies in respect thereof.

Legal Proceedings.

47. In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of such trade mark, the Court may certify the same, and if it so certifies then in any subsequent legal proceeding in which such validity comes into question the proprietor of the said trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in such subsequent proceeding the Court certifies that he ought not to have the same.

48. In any legal proceeding in which the relief sought includes alteration or rectification of the register, the Registrar shall have the right to appear and be heard, and shall appear if so directed by the Court. Unless otherwise directed by the Court, the Registrar in lieu of appearing and being heard may submit to the Court a statement in writing signed by him, giving particulars of the proceedings before him in relation to the matter in issue or of the grounds of any decision given by him affecting the same or of the practice of the office in like cases, or of such other matters relevant to the issues, and within his knowledge as such Registrar, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceeding.

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