LC Paper No. LS 162/98-99

Object of the Bill

The Bill is to modernize Hong Kong's trade marks law, taking into account prevailing international developments. It intends to provide for enhanced protection to trade mark owners and simplify the application and maintenance procedures for registered trade marks.

LegCo Brief Reference

2. TIBCR 06/18/12 issued by the Trade and Industry Bureau in April 1999.

Date of First Reading

3. 5 May 1999.

Comments

4. The existing Trade Marks Ordinance (Cap. 43) was enacted in 1955. This Bill is a comprehensive review of the trade marks law and once enacted, the existing Ordinance will be repealed.

5. Many new policies will be introduced. The requirement that a trade mark has to be "visually perceptible" in order to be registrable will be removed. In the Bill, a "trade mark" means "any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically". A collective mark will for the first time be permitted to be registered (clause 59) and a well-known trade mark will be given greater protection (clauses 4 & 61). Associated trade marks will cease to exist.

6. The registration of trade marks procedure will be simplified. The distinction between Parts A and B of the register is to be abolished. There will be a single set of criteria for registration and there are absolute and relative grounds for refusal of registration (clauses 10-11). Assignment and licensing procedures will be simplified (clauses 25-32).

7. The protection to registered trade mark owners is enhanced. The definition of infringement will be broadened. There are also express provisions in the Bill to enable registered owners to apply for orders for delivery up and disposal of infringing goods, materials and articles.

8. Clause 19 specifically deals with exhaustion of rights conferred by registered trade mark. The Administration explains that according to this clause, a trade mark owner would have no right to prevent parallel importation of goods bearing his mark, unless he can show that the goods have been impaired.

Public Consultation

9. In 1993, the Intellectual Property Department issued a Consultation Paper entitled "Reform of the Trade Marks Ordinance". In light of the comments received, this Bill has been drafted. According to paragraph 24 of the LegCo brief, the public, the relevant legal and professional organizations and trade associations were consulted on the draft Bill on two occasions in 1997 and 1998.

Consultation with the LegCo Panel

10. The Panel on Trade and Industry was consulted in December 1998. Members expressed various concerns such as on registration and cancellation of trade marks, on convention priority, on protection of well-known marks and on the use of domain names. (Please refer to LC Paper No. CB(1) 605/98-99(02) and the minutes of the meeting held on 14 December 1998 (LC Paper No. CB(1)790/98-99)).

Conclusion

11. Substantial changes will be introduced on the trade marks law. Both the public and Members have expressed their concerns. This Bill warrants detailed scrutiny by Members and it is recommended that a Bills Committee be formed.


Prepared by


HO Ying-chu, Anita
Assistant Legal Adviser
Legislative Council Secretariat
3 May 1999

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