Page:Trade Marks Ordinance (Cap. 559).pdf/77

37. Removal from register and imposition of limitations on ground of non-use

(1) Subject to the provisions of sections 55(1), 55A(1) and 57(1), a registered trade mark may be taken off the register in respect of any of the goods or services in respect of which it is registered on application by any person aggrieved to the Court, or, at the option of the applicant and subject to the provisions of section 80, to the Registrar, on the ground either—

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, if it was registered under section 18(1), by the corporation or registered user concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to the date one month before the date of the application; or

(b) that up to the date one month before the date of the application a continuous period of 5 years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being.

(1A) Subject to subsection (1C), the tribunal may refuse an application made under subsection (1)(a) or (b) in relation to any goods if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by the proprietor thereof for the time being in relation to—

(a) goods of the same description; or

(b) services associated with those goods or goods of that description, being goods or, as the case may be, services in respect of which the trade mark is registered.

(1B) Subject to subsection (1C), the tribunal may refuse an application made under subsection (1)(a) or (b) in relation to any services if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by the proprietor thereof for the time being in relation to—

(a) services of the same description; or

(b) goods associated with those services or services of that description, being services or, as the case may be, goods in respect of which the trade mark is registered.

(1C) Subsections (1A) and (1B) do not apply where the applicant has been permitted under section 22 to register an identical or nearly resembling trade mark in respect of the goods or services in question or where the tribunal is of the opinion that he might properly be permitted so to register such a trade mark.

(2) Where in relation to any goods in respect of which a trade mark is registered—

(a) the matters referred to in subsection (1)(b) are shown so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in Hong Kong (otherwise than for export from Hong Kong), or in relation to goods to be exported to a particular market outside Hong Kong; and

(b) a person has been permitted under section 22 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be sold, or otherwise traded in, in Hong Kong (otherwise than for export from Hong Kong), or in relation to goods to be exported to that market, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark,

on application by that person to the Court or, at the option of the applicant and subject to the provisions of section 80, to the Registrar, the tribunal may impose on the registration of the firstmentioned trade mark such limitations as the tribunal thinks proper for securing that that registration shall cease to extend to such use as last aforesaid.

(2A) Where in relation to any services in respect of which a trade mark is registered—

(a) the matters referred to in subsection (1)(b) are shown so far as regards non-use of the trade mark in relation to services for use or available for acceptance in Hong Kong, or for use in a country, territory or place outside Hong Kong; and

(b) a person has been permitted under section 22 to register an identical or nearly resembling trade mark in respect of those services under a registration extending to use in relation to services for use or available for acceptance in Hong Kong or for use in that country, territory or place, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark,