Page:Trade Marks Ordinance (Cap. 559).pdf/83

TRADE MARKS ORDINANCE 76. Trade usage, etc., to be considered

(1) In any action or proceeding relating to a trade mark relating to goods or trade name the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark relating to goods or trade name or get-up legitimately used by other persons.

(2) In any action relating to a trade mark relating to services or business name, the tribunal shall admit evidence of business usages in the provision of services in question and of any relevant trade mark relating to services or business name or get-up legitimately used by other persons.

92. Transitional provisions relating to the Intellectual Property (World Trade Organization Amendments) Ordinance 1996

(1) In this section—

“existing registered trade mark” (現行註冊商標) means a trade mark, certification trade mark or defensive trade mark that is registered under this Ordinance before the commencement of the new law;

“new law” (新法律) means sections 18 to 25 of the Intellectual Property (World Trade Organization Amendments) Ordinance 1996 (11 of 1996);

“old law” (舊法律) means this Ordinance and any other enactment or rule of law applying to existing registered trade marks immediately before the commencement of the new law.

(2) An application for the registration of a trade mark (including certification trade marks and defensive trade marks), as defined in this Ordinance before the commencement of the new law, shall be treated as pending on the commencement of the new law if the application had been made but had not been finally determined before that commencement.

(3) Sections 27(1), 27A(1), 67(1) and 67A(1), as amended by the new law, shall apply in relation to an existing registered trade mark as from the commencement of the new law but only in so far as those sections relate to an infringement of an existing registered trade mark that is committed on or after the commencement of the new law; and the old law shall continue to apply in relation to an infringement that is committed before the commencement of the new law.

(4) Despite subsection (3), it is not an infringement of—
 * (a) an existing registered trade mark; or
 * (b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered trade mark and which is registered for the same goods or services,

to continue on or after the commencement of the new law any use that did not, under the old law, constitute an infringement of the existing registered trade mark.

(5) Subject to subsection (6), an application for the registration of a trade mark that is pending on the commencement of the new law shall be dealt with under the old law but, if the trade mark is registered, it shall be treated for the purposes of subsections (1) to (4) as an existing registered trade mark.

(6) If an application for the registration of a trade mark that is pending on the commencement of the new law has not been advertised under section 14 before its commencement, the applicant may give notice to the Registrar electing to have the registrability of the mark determined in accordance with this Ordinance, as amended by the new law.

(7) A notice under subsection (6) must be in the prescribed form, be accompanied by the appropriate fee and be given to the Registrar not later than 6 months after the commencement of the new law.

(8) A notice given under subsection (6) is irrevocable and has the effect that the application shall be treated as if it had been made after the commencement of the new law.

(9) An application made under section 48 that is pending on the commencement of the new law shall be dealt with in accordance with the old law.