1964_TRADE_MARKS_ORDINANCE — Page 28

1986 Ed.]

Trade Marks

[CAP. 43

27

(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 exclusive 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 on 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-

(i) 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,

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 2 years mentioned in paragraph (b) of that proviso.

53. The Court may, on application in writing made within 7 years from the registration of a trade mark in Hong Kong by any person aggrieved by such registration, remove such trade mark from the register if it is proved to the satisfaction of the Court that such trade mark is identical with, or so nearly resembles as to be calculated to deceive or cause confusion, a trade mark which was, prior to the registration in Hong Kong of 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

Removal of trade mark from register on proof of prior registration in country of origin.