Cap 559 s 52 Revocation of registration (TRADE MARKS ORDINANCE)

Contents of Section

Chapter:	559	Title:	TRADE MARKS ORDINANCE	Gazette Number:	L.N. 31 of 2003
Section:	52	Heading:	Revocation of registration	Version Date:	04/04/2003

Revocation, invalidity and variation

(1) An application for the revocation of the registration of a trade mark may be made by any person, and may be made either to the Registrar or to the court.
(2) The registration of a trade mark may be revoked on any of the following grounds, namely-

(a) that the trade mark has not been genuinely used in Hong Kong by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use (such as import restrictions on, or other governmental requirements for, goods or services protected by the trade mark);

(b) that the trade mark consists of a sign that, in consequence of the acts or the inactivity of the owner-

(i) has become the common name in the trade for goods or services for which the trade mark is registered; or

(ii) has become generally accepted within the trade as the sign that describes goods or services for which the trade mark is registered;

(c) that in consequence of the use made of it by the owner or with his consent, in relation to the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services; or

(d) that there has been a contravention of or a failure to observe any condition entered in the register in relation to its registration.

(3) For the purposes of subsection (2)-

(a) use of a trade mark includes use in a form which differs in elements which do not alter the distinctive character of the trade mark in the form in which it was registered;

(b) use of a trade mark in Hong Kong includes applying the trade mark to goods or to the packaging of goods in Hong Kong solely for export purposes; and

(c) use of a trade mark in Hong Kong includes, where the trade mark is registered in respect of services, use in relation to services provided or to be provided outside Hong Kong.

(4) Subject to subsection (5), the registration of a trade mark shall not be revoked on the ground mentioned in subsection (2)(a) if the use described in that subsection is commenced or resumed after the expiry of the 3-year period and before the application for revocation is made.
(5) Any commencement or resumption of the use described in subsection (2)(a) after the expiry of the 3-year period but within the period of 3 months before the making of the application for revocation shall be disregarded unless preparations for the commencement or resumption began before the owner of the registered trade mark became aware that the application might be made.
(6) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(7) Where the registration of a trade mark is revoked to any extent, the rights of the owner shall be deemed to have ceased to that extent as from-

(a) the date of the application for revocation; or

(b) if the Registrar or the court is satisfied that the grounds for revocation existed at an earlier date, that earlier date.

(8) For the purposes of subsection (2)(a), the 3-year period may begin at any time on or after the actual date on which particulars of the trade mark were entered in the register under section 47(1) (registration).