Trade Marks Rules
(Enacting provision omitted—E.R. 3 of 2015)
[4 April 2003] L.N. 31 of 2003
(Format changes—E.R. 3 of 2015)
(Omitted as spent—E.R. of 3 of 2015)
In these Rules, unless the context otherwise requires—
actual date of registration (實際註冊日期) has the meaning assigned by rule 29(1)(b); applicable fee (適用費用), in relation to a matter or proceeding, means the fee specified in the Schedule in relation to that matter or proceeding; business day of the Registry (註冊處辦公日) means a business day of the Registry as specified in directions of the Registrar published under rule 114; business hours of the Registry (註冊處辦公時間) means the business hours of the Registry as specified in directions of the Registrar published under rule 114; commencement date (生效日期) means the date on which the Ordinance comes into operation; the date of registration (註冊日期) has the meaning assigned by rule 29(1)(a); digital signature (數碼簽署) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap. 553); electronic record (電子紀錄) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap. 553); electronic signature (電子簽署) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap. 553); existing registered mark (現有註冊標記) has the meaning assigned by section 1(1) of Schedule 5 to the Ordinance; information system (資訊系統) has the meaning assigned by section 2(1) of the Electronic Transactions Ordinance (Cap. 553); International Classification (《國際分類》) means the International Classification of Goods and Services adopted under the Nice Agreement and in force at the relevant time; Nice Agreement (《尼斯協定》) means the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks, concluded at the Nice Diplomatic Conference on 15 June 1957, as revised at Stockholm on 14 July 1967 and at Geneva on 13 May 1977 and amended at Geneva on 28 September 1979, as revised or amended from time to time; objector (異議人) means a person who files a notice of objection under rule 26(2) or 55(1), as the case may be; old law (舊有法律) has the meaning assigned by section 1(1) of Schedule 5 to the Ordinance; opponent (反對人) means a person who files a notice of opposition under rule 16, 61(1), 67(2) or 102(3), as the case may be; (L.N. 97 of 2003) the Ordinance (本條例) means the Trade Marks Ordinance (Cap. 559); the repealed Ordinance (被廢除條例) means the Trade Marks Ordinance (Cap. 43), as in operation immediately before its repeal by the Ordinance; send (送交) includes give, and cognate expressions are to be construed accordingly; specification (說明) means the statement of the goods or services in respect of which a trade mark is registered or proposed to be registered; specified form (指明表格), in relation to any matter or proceeding, means the form specified by the Registrar under section 74 of the Ordinance to be used in connection with that matter or proceeding.Unless the context otherwise requires, any reference in these Rules to the filing of a document or other thing (howsoever expressed) shall be construed as a reference to the filing of the document or thing with the Registrar in accordance with Part 16.
Unless the context otherwise requires, any reference in these Rules to a trade mark shall be construed as including a reference to a certification mark, collective mark and defensive trade mark.
A reference in the heading to a rule to the number of a form is a reference to the number of that form as published in the official journal under section 74 of the Ordinance.
A reference in the heading to a rule to the number of a fee is a reference to the number of that fee as specified in the Schedule.
Where under section 74 of the Ordinance the Registrar specifies a form to be used in connection with any matter or proceeding, the specified form shall be used in all cases in which it is applicable.
A requirement to use a specified form is satisfied by the use of either—
a replica of the specified form; or
a form acceptable to the Registrar,
that contains the information required by the specified form and complies with any directions of the Registrar as to the use of the specified form or replicas of it.
The fees to be paid in relation to any matter or proceeding under the Ordinance or these Rules are those specified in the Schedule.
Subject to subrule (3), fees shall be paid at such time and in such manner as the Registrar directs.
Where a fee is required to be paid in relation to a matter or proceeding for which a specified form is required to be used, the fee shall be paid when the specified form is filed.
Where the Registrar is required or authorized by any provision of these Rules to do any act or thing in relation to a matter or proceeding for which a fee is required to be paid, the Registrar may, notwithstanding that provision, refuse to do that act or thing until such time as the fee is paid.
Where a fee is paid in error or in excess of the amount specified in the Schedule, the Registrar shall repay the amount paid in error or the excess amount accordingly.
Subject to subrule (3), for the purposes of trade marks registered on or after the commencement date, the goods or services in respect of which a trade mark is registered shall be classified in accordance with the classifications of the International Classification in force on the date of registration.
Subject to subrule (3), for the purposes of existing registered marks, the goods or services in respect of which a trade mark is registered shall be classified in the same manner as they were classified immediately before the commencement date.
The specification of a registered trade mark may be reclassified in accordance with rules 58, 59, 60 and 61.
An application for registration of a trade mark shall be filed on the specified form.
An application for registration of a 3-dimensional shape as a trade mark or as an element of a trade mark shall not be treated as such unless the application contains a statement claiming the shape as the trade mark or as an element of the trade mark, as the case may be.
An application for registration of a colour or colours as a trade mark, or as an element or elements of a trade mark, shall not be treated as such unless—
the application contains a statement claiming the colour or colours as the trade mark, or as an element or elements of the trade mark, as the case may be; and
the trade mark, or the element or elements of the trade mark, as the case may be, appear in the representation of the trade mark included with the application in the colour or colours for which the claim is made.
Every application for registration of a trade mark shall specify the class or classes of goods or services in the International Classification to which the application relates.
The specification shall include for each class of goods or services set out in the specification a clear and concise description, appropriate to that class, of the goods or services in respect of which the trade mark is proposed to be registered.
If the application relates to more than one class of goods or services in the International Classification, the specification shall set out the classes in consecutive numerical order.
If the trade mark is proposed to be registered in respect of all the goods or services in a particular class, or in respect of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use the applicant has made of the trade mark or by the use he intends to make of the trade mark if it is registered.
If the specification lists goods or services by reference to a class or classes in the International Classification under which the goods or services do not fall, the applicant may file a request under section 46 of the Ordinance to amend the application to correct the class or classes accordingly (see rule 24).
Subject to rule 24, on receipt of a request under subrule (5) and payment of the applicable fee, the Registrar shall amend the application accordingly.
Subrule (4) does not apply to an application for the registration of a trade mark as a defensive trade mark.
The representation included with an application for registration of a trade mark shall depict the trade mark clearly and in sufficient detail to permit a proper examination to be made of the trade mark and shall be of a kind and quality that is suitable for reproduction and registration.
The Registrar may at any time require the applicant to file additional copies of the representation.
Where an applicant wishes to claim a right to priority under section 41 of the Ordinance, the application filed under these Rules shall include the following particulars—
the name of each country, territory or area in respect of which a right to priority is claimed;
the date of filing of the application filed in, or in respect of, each such country, territory or area; and
the application number assigned to that application, if it is known to the applicant.
If the application filed under these Rules does not include the application number assigned to the previous application as required by subrule (1)(c), the Registrar may at any time by notice in writing require the applicant to file that application number.
The Registrar may at any time by notice in writing require the applicant to file a certificate issued by the registering or other competent authority of the country, territory or area in respect of which any right to priority is claimed that certifies, or establishes to the satisfaction of the Registrar—
the date of filing of the application filed in, or in respect of, that country, territory or area;
the application number assigned to that application;
the representation of the trade mark; and
the goods or services covered by that application.
Where the Registrar issues a notice under subrule (2) or (3), the claim to a right to priority shall be lost for the application if the application number or certificate, as the case may be, is not filed within 3 months after the date of the notice.
An applicant who wishes to—
disclaim any right to the exclusive use of any specified element of the trade mark; or
subject the rights to be conferred by the registration to a specified territorial or other limitation or condition,
shall include particulars of the disclaimer, limitation or condition in his application.
If it appears to the Registrar that an application for registration of a trade mark does not satisfy the requirements of—
rule 6(1), 7(1) or (2) or 8(1); or
section 38 of the Ordinance (which sets out requirements relating to applications),
the Registrar shall send a notice to the applicant informing him of the deficiencies and requesting him to remedy those deficiencies.
An applicant to whom a notice is sent under this rule must remedy the deficiencies within 2 months after the date of the notice, and if he fails to do so—
where the deficiencies relate to rule 6(1) or 8(1) or section 38(1), (2)(a)(iii) or (vi) or (b)(v), (3) or (4) of the Ordinance, the application shall be treated as abandoned; (L.N. 62 of 2006; 3 of 2020 s. 19)
where the deficiencies relate to the class or classes of goods or services in the International Classification required to be specified under rule 7(1), the part of the application relating to the goods or services the specification of the class or classes for which is deficient shall be treated as abandoned; (L.N. 62 of 2006)
where the deficiencies relate to the description of goods or services required to be provided under rule 7(2), the part of the application relating to the goods or services the description of which is deficient shall be treated as abandoned; and (L.N. 62 of 2006)
where the deficiencies relate to section 38(2)(a)(i), (ii), (iv) or (v) or (b)(i), (ii), (iii) or (iv) or (5) of the Ordinance, the application shall be deemed never to have been made. (3 of 2020 s. 19)
Subject to subrule (2), the Registrar shall examine whether an application for registration of a trade mark filed under these Rules, and in respect of which any deficiencies notified to the applicant under rule 11 have been remedied, satisfies the requirements for registration. (L.N. 62 of 2006)
Where rule 11(2)(aa) or (ab) applies, the Registrar shall examine whether the remaining part of the application that is not affected by the deficiencies referred to in that rule satisfies the requirements for registration. (L.N. 62 of 2006)
If, on the basis of the examination of an application under rule 12, it appears to the Registrar that the requirements for registration are not met, he shall by notice in writing inform the applicant of the Registrar’s opinion and of the matters referred to in section 42(3)(b) and (c) of the Ordinance.
The applicant may, at any time during the period beginning on the date of the notice and ending 6 months after that date, do either or both of the following— (L.N. 97 of 2003)
file written representations to establish that the requirements for registration are met; or
file a request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24).
The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (2), extend the time for filing the written representations or request referred to in that subrule for one further period of 3 months. (L.N. 97 of 2003)
If—
the applicant files written representations or a request for amendment under subrule (2) within the period specified in that subrule or, where the Registrar has granted an extension of time under subrule (3), within the period as so extended; and
it appears to the Registrar, after considering the representations or request for amendment, that the application, or the application as amended or proposed to be amended, does not meet the requirements for registration,
the Registrar shall inform the applicant of his opinion by notice in writing. (L.N. 97 of 2003)
Where a notice is sent to the applicant under subrule (4), the applicant may, at any time during the period beginning on the date of the notice and ending 3 months after that date, do any or all of the following—
file written representations or further written representations to establish that the requirements for registration are met;
file a request or a further request under section 46 of the Ordinance to amend his application so as to meet those requirements (see rule 24); or
file a request for a hearing. (L.N. 97 of 2003)
The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (5) or, where the Registrar has previously granted an extension of time under this subrule, within the period as so extended, extend the time for filing written representations or a request under subrule (5) for such period or periods, not exceeding 3 months at any one time, and on such terms, if any, as he may direct, if he is satisfied that—
where the notice sent to the applicant under subrule (4) raises an objection to the registration of the trade mark on any of the grounds mentioned in section 12(1), (2) or (3) of the Ordinance (relative grounds for refusal of registration)—
the applicant needs additional time to obtain the consent of the owner of a relevant earlier trade mark;
the applicant needs additional time to obtain an assignment of a relevant earlier trade mark; or
proceedings for the invalidation or revocation of a relevant earlier trade mark are pending and time should be extended to allow for the proceedings to be disposed of;
the applicant needs additional time to prepare evidence of use to be filed in support of the application; or
other exceptional circumstances exist to justify the granting of an extension of time. (L.N. 97 of 2003)
Except as provided in subrules (2) and (3), for the purposes of section 42(3)(b) of the Ordinance (which sets a deadline for meeting the requirements for registration), the prescribed period for an application in relation to which a notice is sent to the applicant under rule 13(1) is the period beginning on the date of the notice and ending 6 months after that date or, where the Registrar has granted an extension of time under rule 13(3), ending 9 months after that date.
Subject to subrule (3), where—
the Registrar sends a notice to the applicant under rule 13(1);
the applicant files written representations or a request for amendment under rule 13(2) within the period specified in that rule or as extended under rule 13(3); and
the Registrar sends a notice to the applicant under rule 13(4),
the prescribed period for the application is the period beginning on the date of the notice sent to the applicant under rule 13(1) and ending 3 months after the date of the notice sent to the applicant under rule 13(4) or, where the Registrar has granted an extension of time under rule 13(6), ending on the last day of the period as so extended. (L.N. 97 of 2003)
Where—
the Registrar sends a notice to the applicant under rule 13(4); and
the applicant files a request for a hearing within the period specified in rule 13(5) or, where the Registrar has granted an extension of time under rule 13(6), within the period as so extended,
the prescribed period for the application is the period beginning on the date of the notice sent to the applicant under rule 13(1) and ending on the last day of the hearing or at such time as the Registrar may decide the matter without a hearing under rule 75. (L.N. 97 of 2003)
Where the Registrar accepts an application for registration of a trade mark under section 42 of the Ordinance, he shall publish particulars of the application in the official journal.
Notice of opposition to the registration of a trade mark shall be filed on the specified form within the 3-month period beginning on the date on which particulars of the application for registration of the trade mark are published under rule 15.
The notice of opposition shall include a statement of the grounds of opposition and, where the opposition is based on an earlier trade mark, shall also include—
a representation of that earlier trade mark;
if it is registered, a statement indicating the classes and the goods or services in respect of which it is registered;
if it is not registered, a statement indicating the goods or services in respect of which it is used; and
if it is an earlier trade mark by virtue of section 5(1)(a) or (2) of the Ordinance, a statement indicating the application or registration numbers of the trade mark.
The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the applicant.
The Registrar may, on a request being filed by any person on the specified form within the period specified in subrule (1), extend the time for filing a notice of opposition or anything referred to in subrule (2) by 2 months, which time may not be further extended. (L.N. 97 of 2003)
Within 3 months after the date of receipt of the copy of the notice of opposition, the applicant shall file a counter-statement on the specified form setting out—
the grounds on which he relies in support of his application;
the facts alleged in the notice of opposition that he admits;
the facts alleged in the notice of opposition that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and
the facts alleged in the notice of opposition that he is unable to admit or deny.
The applicant shall, at the same time as he files the counter-statement, send a copy of it to the opponent.
The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (1), extend the time for filing a counter-statement by 2 months, which time may not be further extended. (L.N. 97 of 2003)
If the applicant does not file a counter-statement within the period specified in subrule (1) or as extended under subrule (3), he shall be deemed to have withdrawn his application. (L.N. 97 of 2003)
If the applicant files a counter-statement within the period specified in rule 17(1) or as extended under rule 17(3), the opponent shall file evidence in support of his opposition within 6 months after the date of receipt of the copy of the counter-statement. (L.N. 97 of 2003)
The opponent shall, at the same time as he files the evidence, send a copy of it to the applicant.
If the opponent does not file evidence within the period specified in subrule (1), he shall be deemed to have abandoned his opposition.
If the opponent files evidence within the period specified in rule 18(1), then within 6 months after the date of receipt of the copy of the opponent’s evidence, the applicant shall file—
evidence in support of his application; or
a statement to the effect that he does not intend to file evidence.
The applicant shall, at the same time as he files the evidence or statement under subrule (1), send a copy of it to the opponent.
If the applicant files evidence within the period specified in rule 19(1), the opponent may, within 6 months after the date of receipt of the copy of the applicant’s evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the applicant’s evidence.
If the opponent files additional evidence, he shall at the same time send a copy of it to the applicant.
Except with the leave of the Registrar, no further evidence may be filed by either party.
After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.
An applicant for registration of a trade mark may withdraw his application by notifying the Registrar in writing.
The withdrawal takes effect on receipt of the notice by the Registrar.
If particulars of the application have been published under rule 15, the Registrar shall publish particulars of the withdrawal in the official journal.
In addition to the purposes mentioned in section 46 of the Ordinance, an application for registration of a trade mark may be amended for the purpose of—
correcting under rule 7(5) and (6) the class or classes of goods or services listed in the specification;
adding a disclaimer, limitation or condition under section 15 of the Ordinance; or
withdrawing a claim to a right to priority made under section 41 of the Ordinance.
A request under section 46 of the Ordinance to amend an application for registration of a trade mark shall be filed on the specified form.
The Registrar may at any time require the applicant to file reasons for and evidence in support of the request.
Subject to rules 25 and 26, where a request is filed under this rule, the Registrar may—
amend the application as proposed by the applicant (if he is satisfied that the proposed amendment complies with section 46 of the Ordinance);
amend the application in such manner as he thinks fit (if he is satisfied that only a part of the proposed amendment complies with section 46 of the Ordinance); or
refuse to make the amendment (if he is satisfied that the proposed amendment does not comply with section 46 of the Ordinance).
Where a request is made under section 46 of the Ordinance to amend an application for registration of a trade mark after particulars of that application have been published under rule 15, the Registrar shall, if he is satisfied that the proposed amendment affects the representation of the trade mark or the goods or services covered by the application, publish particulars of the proposed amendment in the official journal.
This rule applies where particulars of a proposed amendment to an application for registration of a trade mark have been published under rule 25.
Any person claiming to be affected by the proposed amendment may, within 3 months after the date of publication of the particulars, file a notice of objection on the specified form.
The notice of objection shall include a statement of the grounds of objection, which statement shall, in particular, explain how the objector would be affected by the amendment if it were made and why in the objector’s opinion it would be contrary to section 46 of the Ordinance to make the amendment.
The objector shall, at the same time as he files the notice of objection, send a copy of it to the applicant.
At any time after an application for registration of a trade mark is assigned a filing date under section 39 of the Ordinance and before the registration of the trade mark, the applicant may file a request on the specified form to divide the application (the original application) into 2 or more separate applications (the divisional applications), indicating for each divisional application the specification of goods or services to be covered by that application.
Each divisional application must claim the same protection under the Ordinance as the original application (for example, for protection as a defensive trade mark).
On the division of the original application, each divisional application shall be treated as a separate application for registration with the same filing date as the original application.
On the division of the original application, any notice of opposition filed under rule 16 or notice of objection filed under rule 26 in relation to the original application shall—
where the notice of opposition or notice of objection relates only to some of the goods or services covered by the original application, be treated as having been filed in relation to each divisional application the specification of which covers any of those goods or services; and
in any other case, be treated as having been filed in relation to each of the divisional applications,
and the proceedings on the opposition or objection shall continue accordingly.
On the division of an original application in relation to which a notice or request relating to the grant of a licence or a security interest or any right in or under the original application has been filed under rule 62 or 64, the notice or request shall—
where the notice or request relates only to some of the goods or services covered by the original application, be treated as having been filed in relation to each divisional application the specification of which covers any of those goods or services; and
in any other case, be treated as having been filed in relation to each of the divisional applications.
An applicant who has filed separate applications for registration of a trade mark may, at any time before particulars of any of those applications have been published under rule 15, file a request on the specified form to merge those applications into a single application.
The Registrar shall merge the applications that are the subject of the request into a single application if he is satisfied that all of the applications—
are in respect of the same trade mark;
claim the same protection under the Ordinance (for example, for protection as a collective mark);
bear the same filing date; and
are, at the time of the request, in the name of the same person.
The Registrar shall register a trade mark under section 47(1) of the Ordinance by entering a representation of the trade mark in the register together with the following particulars—
the date of registration as determined in accordance with section 48 of the Ordinance, that is to say, the filing date of the application for registration;
the actual date of registration, that is to say, the date of the entry in the register of the particulars required to be entered under this rule;
the date of priority, if any, claimed under section 41 of the Ordinance;
the name and address of the owner;
for an owner that is a corporation—the place under the law of which the corporation was formed and registered, incorporated or established; (3 of 2020 s. 20)
the address for service of the owner;
the classes and description of goods or services in the International Classification in respect of which the trade mark is registered;
any disclaimer, limitation or condition to which the registration is subject;
where the trade mark or any element of the trade mark consists of a 3-dimensional shape for which a claim has been made in accordance with rule 6(2), that fact;
where the trade mark or any element or elements of the trade mark consists of a colour or colours for which a claim has been made in accordance with rule 6(3), that fact and the colour or colours so claimed;
where the trade mark consists wholly or in part of a sound or smell, that fact;
where the trade mark is a certification mark, a collective mark or a defensive trade mark, that fact;
where the trade mark registration consists of a series of trade marks, that fact; and
where the trade mark is registered under or by virtue of section 11(2), 12(8) or 13(1)(a) or (b) of the Ordinance, that fact.
The Registrar may at any time enter in the register such other particulars in relation to the trade mark as he thinks fit.
On the registration of a trade mark, the Registrar shall publish a notice of the registration in the official journal, which notice shall specify the date of registration.
Subject to subrule (2), at any time not earlier than 6 months nor later than 1 month before the date of expiry of the registration of a trade mark, the Registrar shall (except where renewal has already been effected) send to the owner of the trade mark a notice informing him of the date of expiry and that the registration may be renewed in the manner described in rule 32.
If it appears to the Registrar that a trade mark may be registered under section 47(1) of the Ordinance at any time within 6 months before, or at any time after, the date on which renewal would be due (by reason of the filing date of the application for registration), the Registrar shall (except where renewal has already been effected), at any time but not later than 1 month after the actual date of registration, send to the owner of the trade mark a notice informing him of the date of expiry and that the registration may be renewed in the manner described in rule 33.
Renewal of the registration of a trade mark shall be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal at any time within the 6-month period ending on the date of expiry of the registration.
If a request for renewal is not filed, or the applicable fee for renewal is not paid, within the period specified in subrule (1), the Registrar shall publish a notice of that fact in the official journal.
Renewal of the registration of a trade mark may also be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal and the applicable fee for late renewal within 6 months after the date of expiry of the registration.
Where the Registrar renews the registration of a trade mark under this rule, he shall publish a notice of the renewal and of the date of the renewal in the official journal.
This rule does not apply to the renewal of the registration of a trade mark to which rule 33 applies.
This rule applies to the renewal of the registration of a trade mark registered on or after the commencement date the registration of which will expire at any time before, or within 6 months after, the actual date of registration (by reason of the filing date of the application for registration). (L.N. 62 of 2006)
Renewal of the registration of the trade mark shall be effected by filing a request for renewal on the specified form and paying the applicable fee for renewal not later than 6 months after the actual date of registration.
Where the Registrar renews the registration of a trade mark under this rule, he shall publish a notice of the renewal and of the date of the renewal in the official journal.
If, in the case of the registration of a trade mark to which rule 32 applies, the renewal of the registration has not been effected within 6 months after the date of expiry of the registration, the Registrar shall remove the trade mark from the register.
If, in the case of the registration of a trade mark to which rule 33 applies, the renewal of the registration has not been effected within 6 months after the actual date of registration, the Registrar shall remove the trade mark from the register.
Where the Registrar removes a trade mark from the register under this rule, he shall publish a notice of the removal and of the date of the removal in the official journal.
Where the Registrar removes the registration of a trade mark from the register in accordance with rule 34, he may, on a request being filed on the specified form and payment of the applicable fee within 6 months after the date of the removal, restore the trade mark to the register and renew its registration if, having regard to the circumstances of the failure to renew, he is satisfied that it is just to do so.
Where the Registrar restores a trade mark to the register under this rule, he shall publish a notice of the restoration and of the date of the restoration in the official journal.
An application for the revocation of the registration of a trade mark on the grounds mentioned in section 52(2)(a) of the Ordinance shall be filed on the specified form.
The application shall be accompanied by a statement of the grounds on which the application is made and evidence in support of the application.
The applicant shall, at the same time as he files the application, send a copy of the application, statement of grounds and evidence to the owner of the registered trade mark in question.
On receiving an application filed under subrule (1), the Registrar must—
enter in the register a notice of the application; and
publish a notice of the fact of the filing of the application in the official journal. (L.N. 92 of 2025)
Within 6 months after the date of receipt of the copy of the application, statement of grounds and evidence, the owner shall file a counter-statement on the specified form setting out—
the grounds on which he relies in support of his registration;
the facts alleged in the application that he admits;
the facts alleged in the application that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and
the facts alleged in the application that he is unable to admit or deny.
The counter-statement shall be accompanied by—
evidence of the use made of the trade mark; or
a statement giving reasons for non-use.
The owner shall, at the same time as he files the counter-statement, send a copy of the counter-statement and a copy of the evidence of use or statement giving reasons for non-use to the applicant.
If the owner does not file a counter-statement and either evidence of use or a statement giving reasons for non-use within the period specified in subrule (1), the Registrar may treat the application for revocation as being unopposed by the owner. (L.N. 97 of 2003)
The applicant may file additional evidence in support of his application—
within 6 months after the date of receipt of the copy of the counter-statement and the copy of the evidence of use or statement giving reasons for non-use; or
if the owner does not file a counter-statement and evidence of use or a statement giving reasons for non-use within the period specified in rule 37(1), within 9 months after the date of filing of the application.
If the applicant does not intend to file additional evidence, he shall file a statement to that effect within the period specified in subrule (1)(a) or (b), whichever is applicable.
The applicant shall, at the same time as he files the additional evidence or statement under subrule (1) or (2), send a copy of it to the owner.
Except with the leave of the Registrar, no further evidence may be filed by either party.
After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.
An application for—
the revocation of the registration of a trade mark on the grounds mentioned in section 52(2)(b), (c) or (d) of the Ordinance;
the revocation of the registration of a trade mark as a defensive trade mark on the grounds mentioned in section 60(6) of the Ordinance;
the revocation of the registration of a collective mark on the grounds mentioned in section 13 of Schedule 3 to the Ordinance; or
the revocation of the registration of a certification mark on the grounds mentioned in section 15 of Schedule 4 to the Ordinance,
shall be filed on the specified form.
The application shall be accompanied by a statement of the grounds on which the application is made.
The applicant shall, at the same time as he files the application, send a copy of the application and statement of grounds to the owner of the registered trade mark, defensive trade mark, collective mark or certification mark in question.
On receiving an application filed under subrule (1), the Registrar must—
enter in the register a notice of the application; and
publish a notice of the fact of the filing of the application in the official journal. (L.N. 92 of 2025)
Within 3 months after the date of receipt of the copy of the application and statement of grounds, the owner shall file a counter-statement on the specified form setting out—
the grounds on which he relies in support of his registration;
the facts alleged in the application that he admits;
the facts alleged in the application that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and
the facts alleged in the application that he is unable to admit or deny.
The owner shall, at the same time as he files the counter-statement, send a copy of it to the applicant.
If the owner does not file a counter-statement within the period specified in subrule (1), the Registrar may treat the application for revocation as being unopposed by the owner. (L.N. 97 of 2003)
The applicant shall file evidence in support of his application—
within 6 months after the date of receipt of the copy of the counter-statement; or
if the owner does not file a counter-statement within the period specified in rule 41(1), within 9 months after the date of filing of the application.
If the applicant files evidence under subrule (1), he shall at the same time send a copy of it to the owner.
If the applicant does not file evidence within the period specified in subrule (1)(a) or (b), he shall be deemed to have withdrawn his application.
If the owner files a counter-statement within the period specified in rule 41(1) and the applicant files evidence within the period specified in rule 42(1), then within 6 months after the date of receipt of the copy of the applicant’s evidence the owner shall file—
evidence in support of the counter-statement; or
a statement to the effect that he does not intend to file evidence.
The owner shall, at the same time as he files the evidence or statement under subrule (1), send a copy of it to the applicant.
If the owner files evidence within the period specified in rule 43(1), the applicant may, within 6 months after the date of receipt of the copy of the owner’s evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the owner’s evidence.
If the applicant files additional evidence, he shall at the same time send a copy of it to the owner.
Except with the leave of the Registrar, no further evidence may be filed by either party.
After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.
An application for—
a declaration of invalidity of the registration of a trade mark on the grounds mentioned in section 53 of the Ordinance;
a declaration of invalidity of the registration of a collective mark on the grounds mentioned in section 14 of Schedule 3 to the Ordinance; or
a declaration of invalidity of the registration of a certification mark on the grounds mentioned in section 16 of Schedule 4 to the Ordinance,
shall be filed on the specified form.
The application shall be accompanied by a statement of the grounds on which the application is made.
The applicant shall, at the same time as he files the application, send a copy of the application and statement of grounds to the owner of the registered trade mark, collective mark or certification mark in question.
On receiving an application filed under subrule (1), the Registrar must—
enter in the register a notice of the application; and
publish a notice of the fact of the filing of the application in the official journal. (L.N. 92 of 2025)
Rules 41, 42, 43, 44 and 45 shall apply with necessary modifications to proceedings with respect to an application filed under rule 46.
An application for—
the variation of the registration of a trade mark under section 54 of the Ordinance; or
the rectification of an error or omission in the register under section 57 of the Ordinance,
shall be filed on the specified form.
The application shall be accompanied by—
a statement of the grounds on which the application is made; and
evidence in support of the application.
This rule applies where an application filed under rule 48 is made by the owner of the registered trade mark in question.
Where the Registrar proposes to allow the application, he shall publish a notice in the official journal, which notice shall include—
in the case of an application for the variation of the registration of a trade mark, a description of the conditions under which the trade mark is registered and of the variation to be made; and
in the case of an application for the rectification of an error or omission in the register, such matters as the Registrar considers necessary to identify the error or omission in question and the rectification to be made.
Part 3 shall apply with necessary modifications to proceedings under this rule.
This rule applies where an application filed under rule 48 is made by a person other than the owner of the registered trade mark in question.
The applicant shall, at the same time as he files the application, send a copy of the application, statement of grounds and evidence filed under rule 48 to the owner.
On receiving an application filed under rule 48, the Registrar must—
enter in the register a notice of the application; and
publish a notice of the fact of the filing of the application in the official journal. (L.N. 92 of 2025)
Within 6 months after the date of receipt of the copy of the application, statement of grounds and evidence, the owner shall file a counter-statement on the specified form setting out—
the grounds on which he relies in support of his registration;
the facts alleged in the application or in the applicant’s evidence that he admits;
the facts alleged in the application or in the applicant’s evidence that he denies and his reasons (and if he intends to put forward an alternative version of events at the hearing, his version of those events); and
the facts alleged in the application or in the applicant’s evidence that he is unable to admit or deny.
The counter-statement shall be accompanied by—
evidence in support of the counter-statement; or
if the owner does not intend to file evidence, a statement to that effect.
The owner shall, at the same time as he files the counter-statement, send a copy of the counter-statement and a copy of the evidence or statement filed under subrule (4) to the applicant.
If the owner does not file a counter-statement within the period specified in subrule (3), the Registrar may treat the application for variation or rectification as being unopposed by the owner. (L.N. 97 of 2003)
If the owner files evidence within the period specified in subrule (3), the applicant may, within 6 months after the date of receipt of the copy of the owner’s evidence, file additional evidence, which evidence shall be confined to matters strictly in reply to the owner’s evidence.
If the applicant files additional evidence, he shall at the same time send a copy of it to the owner.
Except with the leave of the Registrar, no further evidence may be filed by either party.
After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the hearing and shall notify the parties in writing accordingly.
If the Registrar allows the variation or rectification, he shall publish a notice in the official journal containing the following information—
in the case of an application for the variation of the registration of a trade mark, a description of the variation made; and
in the case of an application for the rectification of an error or omission in the register, such matters as the Registrar considers necessary to identify the rectification made.
Any person claiming to have an interest in any proceedings under this Part may file an application on the specified form for leave to intervene, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms (including any undertaking as to costs) as he thinks fit.
Any person applying for leave to intervene under this rule shall send a copy of the application to each party to the proceedings.
Any person granted leave to intervene shall, subject to any terms imposed by the Registrar, be treated as a party to the proceedings.
(Division 6 added L.N. 92 of 2025)
This rule applies if—
a person (applicant) has made an application to the Registrar under the Ordinance on a question concerning a registered trade mark or an application for registration of a trade mark (original application); and
the Registrar decides to refer the original application to the court under section 77(1)(b) of the Ordinance (reference to court).
The Registrar must, as soon as practicable after deciding to make the reference to court, give written notice of the decision to—
every party to the original application known to the Registrar at the time of making the decision; and
the Registrar of the High Court.
If the applicant wishes to commence proceedings before the court in relation to the original application, the applicant must commence the proceedings within 1 month after the date of the written notice given under subrule (2).
If the applicant fails to commence proceedings in relation to the original application under subrule (3), the applicant is to be treated as having abandoned the original application.
As soon as practicable after being served with a copy of the originating summons by which proceedings in relation to the original application are commenced under subrule (3), the Registrar must file with the court any document or other thing that was filed for the purpose of the original application with the Registrar.
The Registrar must also—
enter in the register a notice of the reference to court; and
publish a notice of the fact of the reference to court in the official journal.
The owner of a registered trade mark may by filing a notice in writing—
disclaim any right to the exclusive use of any specified element of the trade mark; or
agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation or condition.
On receipt of a notice under subrule (1), the Registrar shall publish a notice of the disclaimer, limitation or condition in the official journal.
The Registrar shall enter in the register the relevant particulars of any disclaimer, limitation or condition notified to him under this rule.
The owner of 2 or more registrations of a trade mark may file a request on the specified form to merge them into a single registration.
The Registrar shall merge the registrations that are the subject of the request into a single registration if he is satisfied that all of the registrations—
are in respect of the same trade mark; and
provide the same protection under the Ordinance (for example, for protection as a certification mark).
A merged registration shall be subject to the same disclaimers, limitations and conditions to which each of the original registrations was subject.
Where 2 or more registrations are merged, the Registrar shall enter in the register in relation to the merged registration the same particulars as were registered in relation to each of the original registrations.
Where the separate registrations bear different dates of registration, the date of registration of the merged registration shall be the latest of those dates.
A request under section 55 of the Ordinance to alter a registered trade mark shall be filed on the specified form.
The Registrar may at any time require the owner of the registered trade mark to file reasons for and evidence in support of the request.
Where the Registrar proposes to allow the alteration, he shall publish a notice of the alteration in the official journal, which notice shall include a representation of the trade mark as proposed to be altered in the register.
Subject to rule 55, where a request is filed under this rule, the Registrar may—
allow the alteration (if he is satisfied that it complies with section 55 of the Ordinance);
allow the alteration in part (if he is satisfied that only a part of the alteration complies with section 55 of the Ordinance); or
disallow the alteration (if he is satisfied that it does not comply with section 55 of the Ordinance).
Where the Registrar allows the alteration in whole or in part, he shall make the appropriate entry in the register.
Any person claiming to be affected by the proposed alteration may, within 3 months after the date of publication of the notice under rule 54(3), file a notice of objection on the specified form.
The notice of objection shall include a statement of the grounds of objection, which statement shall, in particular, explain how the objector would be affected by the alteration if it were made and why in the objector’s opinion it would be contrary to section 55 of the Ordinance to allow the alteration.
The objector shall, at the same time as he files the notice of objection, send a copy of it to the owner of the registered trade mark in question.
The owner of a registered trade mark may surrender the registration of the trade mark by filing a notice of surrender on the specified form.
The notice shall—
state whether the registration is surrendered in respect of all of the goods or services for which the trade mark is registered or in respect of only certain of those goods or services;
where the registration is surrendered in respect of only certain goods or services, specify the goods or services concerned by reference to their class or classes in the International Classification;
give the name and address of each other person having a registered interest or any other right in the trade mark; and
certify, in respect of every such person, that the person—
has been sent not less than 3 months’ notice of the owner’s intention to surrender the registration; or
is not affected or, if affected, consents to the surrender.
A surrender of the registration of a trade mark has the same effect in respect of the goods or services for which the registration is surrendered as the registration of the trade mark ceasing to have effect in respect of those goods or services.
A surrender takes effect on the date of receipt by the Registrar of a notice that complies with rule 56.
The Registrar shall, on a surrender taking effect, make the appropriate entry in the register and publish a notice of the surrender in the official journal.
Subject to rules 59, 60 and 61 and section 58(5) of the Ordinance (which limits the Registrar’s power to amend entries in the register), the Registrar may in order to—
reclassify the specification of a registered trade mark that is not founded on the classifications of the International Classification to one that is founded on such classifications; or
implement any amendment to, or substitution for, the classifications of the International Classification,
make such amendments to the entries in the register as he considers necessary for the purposes of reclassifying the specification of any registered trade mark.
The Registrar shall, before he amends any entry in the register under rule 58, send to the owner of the registered trade mark in question a notice informing him of the proposals for amendment.
The notice shall include a statement informing the owner that—
he may file written objections to the proposals, within 3 months after the date of the notice, stating the grounds of his objections; and
if no written objections are filed within the period specified in paragraph (a), the Registrar will publish the proposals in the official journal and the owner will not be entitled to make any objections to the proposals upon such publication.
If the owner of a registered trade mark to whom a notice is sent under rule 59 does not file written objections within the period specified in rule 59(2)(a), or at any time before the expiry of that period files written notice of his intention not to make any objections, the Registrar shall as soon as practicable after the expiry of that period or receipt of that notice, as the case may be, publish the proposals for amendment in the official journal.
If the owner files written objections within the period specified in rule 59(2)(a), the Registrar shall consider the objections. (L.N. 62 of 2006)
If, having considered the objections, the Registrar is satisfied that the objections (or part of the objections) have merit, he shall—
abandon the proposals; or
amend the proposals and publish the proposals as amended in the official journal. (L.N. 62 of 2006)
If, having considered the objections, the Registrar is satisfied that the objections are without merit, he shall publish the proposals in the official journal. (L.N. 62 of 2006)
Where the Registrar publishes proposals for amendment under rule 60(1) or (2), any person claiming to be affected may, within 3 months after the date of publication of the proposals, file a notice of opposition on the specified form.
The notice of opposition shall include a statement of the grounds of opposition, which statement shall, in particular, explain how the opponent would be affected by the amendments if they were made and why in the opponent’s opinion it would be contrary to section 58(5) of the Ordinance to make the amendments.
The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered trade mark in question.
The Registrar may require or admit evidence directed to the questions in issue.
If no notice of opposition is filed within the period specified in subrule (1), or where any opposition has been determined against the opponent, the Registrar shall make the amendments as proposed and shall enter in the register the date on which they were made.
An application under section 29 of the Ordinance to register particulars of a registrable transaction relating to a registered trade mark, or a notice under sections 29 and 31(3) of the Ordinance to register particulars of a registrable transaction relating to an application for registration of a trade mark, shall be filed on the specified form.
Where the registrable transaction is an assignment, the application or notice shall either be signed by or on behalf of the assignor or be accompanied by such documentary evidence as suffices to establish the assignment. (L.N. 62 of 2006)
Where the registrable transaction relates to the grant of a licence or security interest, the application or notice shall either be signed by or on behalf of the grantor or be accompanied by such documentary evidence as suffices to establish the transaction.
Where the registrable transaction relates to the making by personal representatives of an assent, the application or notice shall either be signed by or on behalf of the personal representative or be accompanied by such documentary evidence as suffices to establish the transaction. (L.N. 62 of 2006)
Where the registrable transaction relates to an order of a court or an authority recognized by the Registrar as a competent authority, the application or notice shall be accompanied by such documentary evidence as suffices to establish the transaction.
The particulars that shall be entered in the register in connection with a registrable transaction relating to a registered trade mark or an application for registration of a trade mark are—
in the case of an assignment of the trade mark or application—
the name and address of the assignee; (3 of 2020 s. 21)
for an assignee that is a corporation—the place under the law of which the corporation was formed and registered, incorporated or established; and (3 of 2020 s. 21)
the date of the assignment;
in the case of an assignment of any right in the trade mark or application—
the name and address of the assignee;
for an assignee that is a corporation—the place under the law of which the corporation was formed and registered, incorporated or established; (3 of 2020 s. 21)
the date of the assignment; and
a description of the right assigned;
in the case of a grant of a licence under the trade mark or application—
the name and address of the licensee;
where the licence is an exclusive licence, that fact;
where the licence is limited, a description of the limitation; and
where the licence is for a fixed period or the duration of the licence is ascertainable as a fixed period, the period of the licence;
in the case of the grant of any security interest over the trade mark or application, or over any right in or under the trade mark or application—
the name and address of the grantee;
the nature of the interest (whether fixed or floating); and
the extent of the security and the right in or under the trade mark or application that is secured;
in the case of the making by personal representatives of an assent in relation to the trade mark or application, or in relation to any right in or under the trade mark or application—
the name and address of the person in whom the trade mark or application, or any right in or under it, vests by virtue of the assent; (3 of 2020 s. 21)
for a person mentioned in subparagraph (i) that is a corporation—the place under the law of which the corporation was formed and registered, incorporated or established; and (3 of 2020 s. 21)
the date of the assent; and
in the case of an order of a court or other competent authority transferring the trade mark or application, or transferring any right in or under the trade mark or application—
the name and address of the transferee;
for a transferee that is a corporation—the place under the law of which the corporation was formed and registered, incorporated or established; (3 of 2020 s. 21)
the name of the court or other competent authority;
the date of the order; and
where the transfer is in respect of a right in the trade mark or application, a description of the right transferred.
In each case, there shall be entered in the register the date on which the entry is made.
The Registrar may, on the filing of a request made on the specified form, amend or remove any registered particulars relating to—
a licence under a registered trade mark or application for registration of a trade mark;
a security interest over a registered trade mark or application for registration of a trade mark; or
a security interest over any right in or under a registered trade mark or application for registration of a trade mark.
Where the request relates to the alteration of the terms of a licence or security interest, it shall either be signed by or on behalf of both the grantor and grantee of the licence or security interest or be accompanied by such documentary evidence as suffices to establish the alteration.
Where the request relates to the removal of registered particulars relating to a licence or security interest, it shall either be signed by or on behalf of the grantee of the licence or security interest or be accompanied by such documentary evidence as suffices to establish that the registered particulars have ceased to have effect.
In the case of an alteration of the terms of a licence or security interest, there shall be entered in the register the date on which the entry relating to the alteration is made.
The Registrar may, on the filing of a request made on the specified form by—
the owner of a registered trade mark;
a licensee of a registered trade mark; or
any person having an interest in or charge on a registered trade mark the particulars of which have been registered under rule 63 or 64,
enter any change in his name or address, or in any other particulars identifying such person, as recorded in the register.
The Registrar may at any time require a person making a request under this rule to file reasons for and evidence in support of the request.
(Repealed 3 of 2020 s. 22)
Any person to whom a notice is sent under section 57(6B) of the Ordinance may, within 3 months after the date of the notice, file written objections to the proposed correction, stating the grounds of his objections. (3 of 2020 s. 22)
If any person to whom a notice is sent under section 57(6B) of the Ordinance files written objections within the period specified in subrule (2), the Registrar must consider the objections and—
if satisfied that the objections have merit—not make the proposed correction; or
if satisfied that the objections have no merit—make the proposed correction. (3 of 2020 s. 22)
If no written objections are filed within the period specified in subrule (2), the Registrar may proceed to make the proposed correction in the register.
Where the Registrar proposes to remove any matter from the register under section 57(7) of the Ordinance (which authorizes the removal of matter that appears to the Registrar to have ceased to have effect), he shall, before he removes that matter from the register—
where he considers it appropriate to do so, publish a notice of the proposal for removal in the official journal; and
where any person appears to him as being likely to be affected by the proposed removal, send a notice of the proposal for removal to that person.
Where the Registrar publishes a notice under subrule (1)(a), any person claiming to be affected by the proposed removal may, within 3 months after the date of publication of the notice, file a notice of opposition on the specified form.
The notice of opposition shall include a statement of the grounds of opposition.
The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered trade mark in question.
Where the Registrar sends any person a notice under subrule (1)(b), that person may, within 3 months after the date of the notice—
file written objections to the proposed removal; or
file a request for a hearing.
If the Registrar is satisfied, after considering any opposition and objections, that the matter has not ceased to have effect, he shall not remove it from the register.
If no notice of opposition is filed within the period specified in subrule (2) and no written objections are filed within the period specified in subrule (5), or where any opposition or objections have been determined against the opponent or objector, the Registrar may, if he is satisfied that the matter or any part of it has ceased to have effect, proceed to remove the matter or that part of it from the register.
The register shall be open for public inspection at the Registry on the business days and during the normal business hours of the Registry.
This rule applies to any of the following documents kept at the Registry—
a notice of opposition to the registration of a trade mark filed under rule 16;
a counter-statement filed under rule 17;
a notice of objection to the amendment of an application for registration of a trade mark filed under rule 26;
an application for the revocation of the registration of a trade mark filed under rule 36;
a counter-statement filed under rule 37;
an application for the revocation of the registration of a trade mark, defensive trade mark, collective mark or certification mark filed under rule 40;
a counter-statement filed under rule 41;
an application for a declaration of invalidity of the registration of a trade mark, collective mark or certification mark filed under rule 46;
an application for the variation of the registration of a trade mark filed under rule 48(1)(a);
an application for the rectification of an error or omission in the register filed under rule 48(1)(b);
a counter-statement filed under rule 50(3);
an application for leave to intervene filed under rule 51;
a request to alter a registered trade mark filed under rule 54;
a notice of objection to the alteration of the registration of a trade mark filed under rule 55;
a notice of surrender filed under rule 56;
a notice of opposition to the amendment of the specification of a registered trade mark filed under rule 61;
an application or notice to register particulars of a registrable transaction relating to a registered trade mark or an application for registration of a trade mark filed under rule 62(1);
any documentary evidence filed under rule 62(2), (3), (4) or (5);
a request to amend or remove registered particulars relating to a licence or security interest filed under rule 64(1);
any documentary evidence filed under rule 64(2) or (3);
a notice of opposition to the removal of matter from the register filed under rule 67(2);
any regulations governing the use of a collective mark filed under rule 100;
any regulations governing the use of a certification mark filed under rule 101;
any amendment to the regulations governing the use of a collective mark or certification mark filed under rule 102(1);
a notice of opposition to the amendment of the regulations governing the use of a registered collective mark or certification mark filed under rule 102(3); and
a notice of opposition or counter-statement filed, whether before or after the commencement date, in relation to an application for registration of a mark under the repealed Ordinance that is pending on the commencement date.
The Registrar shall, on the request of any person, permit that person to inspect any document to which this rule applies and in respect of which no particulars have been recorded in the register.
The Registrar may at his discretion, on the request of any person, permit that person to inspect any document to which this rule applies and in respect of which particulars have been recorded in the register.
Notwithstanding subrules (2) and (3), the Registrar shall not be obliged to permit the inspection of any document under this rule until he has completed all procedures that he is required or authorized to carry out under the Ordinance or these Rules in connection with that document.
Except in relation to the documents referred to in subrule (1)(z), nothing in this rule shall be construed as imposing on the Registrar any duty of making available for inspection—
any document filed at or sent to the Registry before the commencement date; or
any document filed at or sent to the Registry on or after the commencement date that relates to an application for registration of a mark under the old law.
The Registrar may, on the filing of an application made on the specified form and payment of the applicable fee, supply the person making the application with, as the case may be—
a certified or uncertified copy of an entry in the register;
a certified or uncertified extract from the register; or
a certified or uncertified copy of any application for registration of a trade mark filed under these Rules and kept by the Registry.
The Registrar may, on the filing of an application made on the specified form and payment of the applicable fee, supply the person making the application with a certificate for the purposes of section 79(2) of the Ordinance (which provides that a certificate is prima facie evidence of the matters certified).
The Registrar may, on the filing of a request by any person, supply that person with a list of the numbers and the class or classes in the International Classification of—
all applications made by any person identified in the request that are pending on the date of the request; or
all registered trade marks that are owned by a registered owner identified in the request.
(Repealed 3 of 2020 s. 23)
(Repealed 3 of 2020 s. 23)
A request filed under section 72(2) of the Ordinance must be in the specified form.
The request must—
include a representation of the trade mark that is proposed to be registered; and
specify the goods or services (classified in accordance with the International Classification) for which the trade mark is proposed to be registered.
The period prescribed for the purposes of section 72(5)(d) of the Ordinance is the 6-month period beginning on the day after the date on which the Registrar gives a notice of objection under section 72(5)(c) of the Ordinance.
This rule applies where the Registrar is required by section 70 of the Ordinance to give a party to proceedings before him an opportunity to be heard.
The Registrar shall send a notice to the party informing him of the provisions of section 70 of the Ordinance and that if he wishes to have a hearing, he must file a request for a hearing within 1 month after the date of the notice.
The Registrar shall, on the filing of a request for a hearing within the period specified in subrule (2) or on the filing of a request for a hearing in accordance with rule 13(5)— (L.N. 97 of 2003)
fix a date, time and place for the hearing; and
send a notice of the date, time and place fixed for the hearing to each party to the proceedings.
The Registrar may in any other case, on his own initiative—
fix a date, time and place for a hearing; and
send a notice of the date, time and place fixed for the hearing to each party to the proceedings.
Any party to whom a notice is sent under subrule (3) or (4) and who intends to appear at the hearing shall, within 14 days after the date of the notice, file notice of his intention on the specified form, and any party who fails to do so may be treated as not intending to appear at the hearing, and the Registrar may act accordingly.
A notice sent to any party under rule 21, 39, 45 or 50(10) shall be treated as having been sent to that party in compliance with subrule (4), and subrule (5) shall apply accordingly. (L.N. 97 of 2003)
The Registrar may decide a matter without a hearing if—
the Registrar reasonably believes that no party wishes to be heard; or
at least one of the following circumstances applies in relation to each party notified of the hearing in accordance with these Rules—
the party has not indicated to the Registrar that he intends to appear at the hearing;
the party has informed the Registrar that he does not intend to appear at the hearing; or
the party does not attend the hearing.
A party, or his representative, as the case may be, may attend a hearing in person or by such means as the Registrar allows.
A party may make representations in writing before or during a hearing.
The Registrar may adjourn a hearing by notifying each party to the hearing accordingly.
Subject to these Rules, the Registrar may give any direction that is reasonably necessary for the conduct of the hearing.
The hearing before the Registrar of any dispute between 2 or more parties relating to any matter in connection with a registered trade mark or an application for registration of a trade mark shall be held in public unless the Registrar, for any of the reasons stated in Article 10 of the Hong Kong Bill of Rights set out in Part II of the Hong Kong Bill of Rights Ordinance (Cap. 383), otherwise directs.
Any party in a hearing before the Registrar, or any witness or expert called to give evidence by such party, may use a language other than the language of the proceedings on condition that, at least 10 days before the date fixed for the hearing, the party gives to the Registrar and to the other parties written notice of his intention to use, or to call a witness or expert who intends to use, a language other than the language of the proceedings.
The Registrar may require a party who gives notice under subrule (1) to make provision for interpretation into the language of the proceedings and may give directions as to who should bear the costs of interpretation.
Where under the Ordinance or these Rules evidence may be admitted by the Registrar in any proceedings before him, the evidence shall be filed by way of a statutory declaration or affidavit.
The Registrar may in any particular case take oral evidence in addition to any evidence filed by way of a statutory declaration or affidavit.
The Registrar may allow any witness to be cross-examined on his statutory declaration, affidavit or oral evidence.
For the purposes of any proceedings before the Registrar, a statutory declaration or affidavit may be made and subscribed as follows—
in Hong Kong, before any commissioner, notary or other person authorized by the law of Hong Kong to administer an oath for the purpose of any legal proceeding; and
in any place outside Hong Kong, before any court, judge, justice of the peace, notary, notary public, consul or other person authorized by law to administer an oath or to exercise notarial functions in that place for the purpose of any legal proceeding.
A person signing a statutory declaration or affidavit shall state on it the capacity in which he makes the declaration or affidavit.
Any document purporting to have affixed, impressed or subscribed to or on it the seal or signature of any person authorized by subrule (1) to take a statutory declaration or affidavit may be admitted by the Registrar without proof of the genuineness of the seal or signature, or of the official character of the person or his authority to take the declaration or affidavit.
A party to any proceedings before the Registrar who files a statutory declaration or affidavit under these Rules may file a photograph or photographs of any exhibit to that statutory declaration or affidavit and may send a copy of the photograph or photographs to any other party to the proceedings to whom a copy of the declaration or affidavit must be sent, in lieu of filing the original of the exhibit or sending a copy of it to that other party.
Photographs filed under subrule (1) must be of sufficient size and clarity to properly depict any details of the exhibit referred to in the statutory declaration or affidavit.
A party who files a photograph under subrule (1) shall at the same time give a written undertaking to the Registrar that he will produce the original of the exhibit whenever required by the Registrar and will make it available for inspection by any other party to the proceedings.
The original of any exhibit for which a photograph is filed under subrule (1) shall be produced at the hearing unless the Registrar otherwise directs.
Where under any provision of these Rules evidence may be filed in any proceedings before the Registrar only with the leave of the Registrar, the Registrar may refuse such leave or grant leave on such terms as he thinks fit.
Where a party to any proceedings before the Registrar is a body corporate or other legal entity and the body corporate or legal entity has been wound-up, merged with another body corporate or legal entity or acquired by any person, any person claiming to have an interest in the proceedings may apply to the Registrar in writing for leave to be substituted for that party, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms as he thinks fit.
Where a party to any proceedings before the Registrar assigns or otherwise disposes of any interest in a trade mark, application or other thing that is the subject matter of the proceedings, any person claiming to have an interest in the proceedings may apply to the Registrar in writing for leave to be substituted for that party, stating the nature of his interest, and the Registrar may refuse such leave or grant leave on such terms as he thinks fit.
Any person granted leave under subrule (1) or (2) shall, subject to any terms imposed by the Registrar, be treated as a party to the proceedings before the Registrar.
If any person who neither resides nor carries on business in Hong Kong files—
a notice of opposition to the registration of a trade mark under rule 16;
a counter-statement under rule 17;
a notice of objection to the amendment of an application for registration of a trade mark under rule 26;
an application for the revocation of the registration of a trade mark under rule 36;
an application for the revocation of the registration of a trade mark, defensive trade mark, collective mark or certification mark under rule 40;
an application for a declaration of invalidity of the registration of a trade mark, collective mark or certification mark under rule 46;
an application for the variation of the registration of a trade mark or for the rectification of an error or omission in the register under rule 48;
an application for leave to intervene under rule 51;
a notice of objection to the alteration of the registration of a trade mark under rule 55;
an application for leave to be substituted for a party under rule 83; or
a notice of opposition or counter-statement under section 15 of the repealed Ordinance in relation to an application for registration of a mark that is advertised under section 14 or 66 of the repealed Ordinance on or after the commencement date,
the Registrar may require that person to give security for the costs of the proceedings, in such form and in such amount as the Registrar considers appropriate.
If the Registrar requires security to be given by any person and that person fails to give security as required, the Registrar may treat the notice of opposition, notice of objection, counter-statement or application in question as abandoned or withdrawn.
The Registrar may at any stage in the proceedings require further security to be given at any time before giving his decision in the case.
This rule is without prejudice to the Registrar’s power under rule 51(1) to require an undertaking as to costs in relation to an application for leave to intervene.
The Registrar shall have the power to tax any costs awarded by him in any proceedings before him.
In the event of an opposition to the registration of a trade mark being uncontested by the applicant for registration, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.
At any stage of any proceedings before him, the Registrar may direct that the parties to the proceedings attend a case management conference where they shall have an opportunity to be heard with regard to the future conduct of the proceedings, and in particular with regard to the proposed exercise of any of the Registrar’s powers under these Rules.
The Registrar shall give the parties at least 14 days’ notice of the date, time and place of the case management conference.
Before hearing any party that desires to be heard in any proceedings before him, the Registrar may direct that the parties to the proceedings attend a pre-hearing review at which he may give such directions as to the conduct of the hearing as he may think fit.
The Registrar shall give the parties at least 7 days’ notice of the date, time and place of the pre-hearing review.
The Registrar may, at the request of a party to any proceedings before him or on his own initiative, give a direction in relation to the procedure in those proceedings.
A direction given under subrule (1) must not be inconsistent with these Rules.
The Registrar shall not give a direction under subrule (1) unless—
he is reasonably satisfied that the parties to the proceedings have been notified of the proposed direction;
he has given the parties to the proceedings a reasonable opportunity to make representations concerning the proposed direction; and
he is reasonably satisfied that the proposed direction is appropriate.
For the purposes of subrule (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
At any stage of any proceedings before him, the Registrar may direct that such documents, information or evidence as he may reasonably require shall be filed within such period as he may specify.
The Registrar may, where he considers it appropriate to do so, stay any proceedings before him involving 2 or more parties on such terms as he thinks fit, and he may do so either on his own initiative or on request of a party to those proceedings.
Where the Registrar has made a decision in any proceedings before him, he shall send a notice to each party to the proceedings informing him of the decision.
Where a statement of the reasons for the decision is not included in the notice, any party may, within 1 month after the date of the notice, file a request on the specified form for a statement of the reasons for the decision, and on receipt of such a request and payment of the applicable fee, the Registrar shall send a statement of the reasons for the decision to each party to the proceedings.
A party who files a request under this rule shall at the same time send a copy of the request to each other party to the proceedings.
For the purpose of any appeal against the Registrar’s decision, the decision shall be deemed to have been made on—
the date on which the notice of decision is sent under subrule (1); or
where a statement of reasons is sent under subrule (2), the date on which the statement of reasons is sent.
Subject to any provisions of the Ordinance or these Rules relating to the amendment of applications for registration of trade marks and other documents, any document filed with the Registrar may, if the Registrar thinks fit, be amended on such terms as he may direct.
Subject to subrule (2), any irregularity in procedure in or before the Registry may be rectified on such terms as the Registrar may direct.
No period of time may be extended under this rule.
Subject to rule 95, the Registrar may, on a request being filed on the specified form by the party concerned, extend any period of time—
prescribed by these Rules; or
specified by the Registrar for doing any act or taking any proceedings,
for such period and on such terms, if any, as he may direct.
Where a request for an extension of time is filed under subrule (1) in relation to a period of time prescribed by rule 18, 19, 20, 38, 42, 43, 44, 50(7), 51A(3), 74 (other than rule 74(2)) or 91(2), or in relation to a period of time specified by the Registrar under rule 120(7), the party seeking the extension shall send a copy of the request to every other party to the proceedings. (L.N. 92 of 2025)
Where—
the period within which any party to any proceedings before the Registrar may file evidence under these Rules is to begin on the expiry of any period during which any other party may file evidence; and
the other party notifies the Registrar that he does not intend to file evidence,
the Registrar may direct that the period within which the party mentioned in paragraph (a) may file evidence shall begin on such date as may be specified in the direction, and where he issues such a direction he shall notify each party to the proceedings of the relevant date.
Where any person fails to comply with a time limit imposed by the Ordinance or these Rules and the Registrar is satisfied that the failure is attributable in whole or in part to an error or omission of the Registrar or the Registry, he may extend the period of time in question on such terms, if any, as he may direct.
Where it appears to the Registrar that—
in the absence of a direction under this subrule, a person is likely to fail to comply with a time limit imposed by the Ordinance or these Rules; and
if the failure were to occur, it would be attributable in whole or in part to an error or omission of the Registrar or the Registry,
he may extend the period of time in question on such terms, if any, as he may direct.
Where the Registrar grants an extension of time in opposition proceedings, he may thereafter, if he thinks fit, without hearing the party in whose favour the extension is granted, grant any reasonable extension of the time or period in which any other party is required to take any subsequent step.
A period of time may be extended under this rule either before or after the period in question has expired.
The periods of time specified in the following rules may not be extended under rule 94(1), namely—
rule 11(2) (time for remedying deficiencies in an application for registration of a trade mark);
rule 13(2) (time for filing representations or a request for amendment) (but see rule 13(3)); (L.N. 97 of 2003)
rule 13(5) (time for filing representations, a request for amendment or a request for a hearing) (but see rule 13(6)); (L.N. 97 of 2003)
rule 14 (prescribed period under section 42(3)(b) of the Ordinance);
rule 16(1) (time for filing a notice of opposition) (but see rule 16(4)); (L.N. 97 of 2003)
rule 17(1) (time for filing a counter-statement) (but see rule 17(3)); (L.N. 97 of 2003)
rule 26(2) (time for filing a notice of objection);
rule 32(1) and (3) (time for renewing registration);
rule 33(2) (time for renewing registration);
rule 35(1) (time for restoring registration);
rule 37(1) (time for filing a counter-statement);
rule 41(1) (time for filing a counter-statement);
rule 50(3) (time for filing a counter-statement);
rule 55(1) (time for filing a notice of objection);
rule 61(1) (time for filing a notice of opposition);
rule 67(2) (time for filing a notice of opposition);
rule 73A(3) (time limit for the purposes of section 72(5)(d) of the Ordinance); (3 of 2020 s. 25)
rule 74(2) (time for filing a request for a hearing);
rule 102(3) (time for filing a notice of opposition);
rule 107(3) (time for filing an address for service);
rule 121(1)(a) (time for filing a notice of opposition) (but see rule 121(2)); and (L.N. 97 of 2003)
rule 121(1)(b) (time for filing a counter-statement) (but see rule 121(3)). (L.N. 97 of 2003)
The period of time for filing anything required to be included with or to accompany any document referred to in subrule (1) or to be filed at the same time as that document may not be extended under rule 94(1).
No period of time specified in rule 13(3) or (6), 16(4), 17(3) or 121(2) or (3) may be extended under rule 94(1). (L.N. 97 of 2003)
Where on any day there is an event or circumstances causing an interruption in the normal operation of the Registry, the Registrar may notify the day as being one on which there is an interruption in the operations of the Registry.
Where any period of time specified in the Ordinance or these Rules, or as extended under these Rules, for the filing of any document or other thing with the Registrar expires on a day so notified, the period shall be extended to the first day next following (not being an excluded day) that is not so notified.
Any notification given by the Registrar under this rule shall be posted in the Registry.
The owner of a series consisting of not more than 4 trade marks may file an application on the specified form to register them as a series in a single registration.
The application shall be accompanied by a representation of each trade mark claimed to be in the series.
The Registrar shall accept an application filed under subrule (1) if he is satisfied that—
the trade marks in respect of which the application is made constitute a series within the meaning of section 51(3) of the Ordinance;
the series consists of not more than 4 trade marks; and
the application satisfies the requirements for registration.
At any time before registration, an applicant under subrule (1) may file a request on the specified form for a division of his application into separate applications in respect of one or more of the trade marks in the series.
On receipt of a request under subrule (4) and payment of the applicable fee, the Registrar shall, if he is satisfied that the division conforms with rule 27(1) and (2), divide the application accordingly.
Rule 27(3), (4) and (5) applies to the division of an application under this rule.
An applicant for registration of a series of trade marks or the owner of a registered series of trade marks may at any time file a request on the specified form for the deletion of a trade mark in that series.
Where a request is filed under subrule (1), the Registrar shall delete the trade mark from the application or registration, as the case may be.
An application for the registration of a trade mark as a defensive trade mark under section 60 of the Ordinance shall be filed on the specified form.
Within 9 months after the date of the application, the applicant shall file—
a statement of case setting forth full particulars of the facts on which the applicant relies in support of his application, verified by a statutory declaration or affidavit made by the applicant or some other person approved for the purpose by the Registrar; and
such evidence, if any, as the applicant may desire to adduce in support of the application.
If the applicant does not file a statement of case within the period referred to in subrule (2)(a), the application shall be treated as abandoned.
The applicant may, within such time as the Registrar may allow, whether after request made by the Registrar or otherwise, file such other evidence as he may desire to adduce in support of the application, and the Registrar shall consider the whole of the evidence before deciding on the application.
For the avoidance of doubt, it is declared that the provisions of Part 2 apply in relation to an application for the registration of a trade mark as a defensive trade mark except to the extent they are inconsistent with this rule.
For the purposes of section 6(3) of Schedule 3 to the Ordinance, an applicant for registration of a collective mark shall file a copy of the regulations governing the use of the mark within 9 months after the date of the application for registration.
The Registrar may send to the applicant any observations that he may wish to make with regard to the application or the suitability of the regulations, and the applicant may file a request under section 46 of the Ordinance to amend the application (see rule 24) or may modify the regulations, as appropriate.
For the purposes of section 7 of Schedule 3 to the Ordinance and these Rules—
the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the circumstances, shall be treated as being the period specified by the Registrar for the purposes of section 7(2) of that Schedule; and
rules 13 and 14, in their application to an application for registration of a collective mark, are to be read subject to the necessary modifications.
For the purposes of section 7(3) of Schedule 4 to the Ordinance, an applicant for registration of a certification mark shall file a copy of the regulations governing the use of the mark within 9 months after the date of the application for registration.
The regulations shall be accompanied by evidence of the applicant’s competence to certify the goods or services for which the mark is to be registered, which evidence shall be verified by a statutory declaration or affidavit made by the applicant or some other person approved for the purpose by the Registrar.
The Registrar may send to the applicant any observations that he may wish to make with regard to the application, the suitability of the regulations or the sufficiency of the evidence, and the applicant may file a request under section 46 of the Ordinance to amend the application (see rule 24) or may modify the regulations or file new evidence, as appropriate.
For the purposes of section 8 of Schedule 4 to the Ordinance and these Rules—
the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the circumstances, shall be treated as being the period specified by the Registrar for the purposes of section 8(2) of that Schedule; and
rules 13 and 14, in their application to an application for registration of a certification mark, are to be read subject to the necessary modifications.
An application by the owner of a registered collective mark or certification mark for the amendment of the regulations governing the use of the mark shall be filed in writing.
Where the Registrar considers it appropriate to do so, he shall publish a notice of the amendment in the official journal, which notice shall indicate where copies of the amended regulations may be inspected.
Where the Registrar publishes a notice under subrule (2), any person claiming to be affected by the amendment may, within 3 months after the date of publication of the notice, file a notice of opposition on the specified form.
The notice of opposition shall include a statement of the grounds of opposition, which statement shall, in particular, explain how the opponent would be affected by the amendment and why in the opponent’s opinion the amendment would be contrary to section 6(1) or (2) of Schedule 3 to the Ordinance (which deals with collective marks) or section 7(1) or (2) of Schedule 4 to the Ordinance (which deals with certification marks), as the case may be.
The opponent shall, at the same time as he files the notice of opposition, send a copy of it to the owner of the registered collective mark or certification mark in question.
Where a notice of opposition is filed within the period specified in subrule (3), the Registrar may—
if he is satisfied that the opposition has merit, refuse to accept the amendment; or
if he is satisfied that the opposition is without merit and that the amendment should be accepted, accept the amendment as proposed by the owner.
If no notice of opposition is filed within the period specified in subrule (3) and the Registrar is satisfied that the amendment should be accepted, he shall accept the amendment as proposed by the owner.
Where a person has been authorized to act as an agent in accordance with section 88 of the Ordinance, the Registrar may in any particular case require the personal signature or presence of the agent or the person authorizing him to act as agent.
The Registrar may by notice in writing require any person who claims to act as an agent to produce evidence of his authority.
A person who is authorized by another person to act as his agent shall, on or before the first occasion on which he acts as agent, notify the Registrar of the address in Hong Kong where he resides or carries on his business activities, which notice shall be given in the specified form or in writing. (L.N. 39 of 2004)
If a person who has given notice under subrule (3) changes the address in Hong Kong where he resides or carries on his business activities, he shall notify the Registrar of the change as soon as practicable thereafter, which notice shall be given in the specified form or in writing. (L.N. 39 of 2004)
No act required or authorized by the Ordinance or these Rules to be done by or to any person may be done by or to an agent of that person before the date on which the agent notifies the Registrar in accordance with subrule (3). (L.N. 39 of 2004)
The Registrar may refuse to recognize as an agent in respect of any business under the Ordinance or these Rules—
a person who has been convicted of a criminal offence;
a person whose name has been struck off the roll of barristers or roll of solicitors kept under and in accordance with the Legal Practitioners Ordinance (Cap. 159) or any person who has been suspended from acting as a barrister or solicitor;
a partnership or body corporate of which one of the partners or directors is a person whom the Registrar could refuse to recognize as an agent under paragraph (a) or (b);
a person against whom a disqualification order has been made under section 168E, 168F, 168G, 168H, 168J or 168L of the Companies (Winding Up and Miscellaneous Provisions) Ordinance (Cap. 32); (Amended 28 of 2012 ss. 912 & 920)
a person against whom an order has been made under section 23(1)(a) or 24(1) of the repealed Securities (Insider Dealing) Ordinance (Cap. 395); or (L.N. 39 of 2004)
a person against whom an order has been made under section 214(2)(d), 257(1)(a), 258(1) or 303(2)(a) of the Securities and Futures Ordinance (Cap. 571).
| Note: | Section 88(3) of the Ordinance provides that the Registrar shall refuse to recognize as an agent a person having neither residence nor a place of business in Hong Kong. (L.N. 39 of 2004) |
An address for service shall be filed by every person who files—
an application for registration of a trade mark under rule 6;
a notice of opposition to the registration of a trade mark under rule 16;
a counter-statement under rule 17;
a notice of objection to the amendment of an application for registration of a trade mark under rule 26;
an application for the revocation of the registration of a trade mark under rule 36;
a counter-statement under rule 37;
an application for the revocation of the registration of a trade mark under rule 40;
a counter-statement under rule 41;
an application for a declaration of invalidity of the registration of a trade mark under rule 46;
an application for the variation of the registration of a trade mark or for the rectification of an error or omission in the register under rule 48 and to which rule 50 applies;
a counter-statement under rule 50(3);
an application for leave to intervene under rule 51;
a notice of objection to the alteration of a registered trade mark under rule 55;
a notice of opposition to the amendment of the specification of a registered trade mark under rule 61;
an application or notice to register particulars of a registrable transaction relating to a registered trade mark or an application for registration of a trade mark under rule 62;
a request to amend or remove registered particulars relating to a licence or security interest under rule 64;
a notice of opposition to the removal of any matter from the register under rule 67(2);
an application for leave to be substituted for a party under rule 83;
an application for registration of a series of trade marks under rule 97;
an application for registration of a trade mark as a defensive trade mark under rule 99;
a notice of opposition to the amendment of the regulations governing the use of a registered collective mark or certification mark under rule 102(3); or
any other document the specified form of which, if any, requires the person who completes the form to provide an address for service.
The address for service must be a residential or business address in Hong Kong.
A person may file an address for service—
where the document in question is required to be filed on the specified form and the form requires the person who completes it to provide an address for service, by filing the specified form with the address for service stated on it; or
in any other case, by notifying the Registrar in writing.
Where a document referred to in subrule (1) is filed in the name of 2 or more persons, the address for service filed in relation to that document shall be treated as the address for service of each of those persons.
An applicant for registration of a trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that application.
The owner of a registered trade mark may use only one address for service for the purposes of all proceedings before the Registrar concerning that registered trade mark.
Subject to any filing to the contrary under this rule or rule 106, on the registration of a trade mark, the address for service of the applicant for registration shall be treated as the address for service of the owner of the registered trade mark for the purposes of all proceedings before the Registrar concerning that registered trade mark.
Where a person files an address for service for the purposes of any proceedings before the Registrar, that address shall be treated as being in substitution for any address for service previously filed by that person for the purposes of those proceedings.
Where, after a person has become a party to proceedings before the Registrar, the person appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file an address for service.
No act required or authorized by the Ordinance or these Rules to be done by or to a person referred to in subrule (9) in connection with the proceedings in question may be done by or to the newly appointed agent before the date on which he files an address for service.
A person may change his address for service by—
filing the specified form; or
notifying the Registrar in writing.
If the address for service of the owner of a registered trade mark or of a party to any proceedings before the Registrar ceases to be valid, the owner or party, as the case may be, shall as soon as practicable thereafter change his address for service in the manner provided by subrule (1).
A person may withdraw his address for service by notifying the Registrar in writing.
Where an address for service is not filed as required by rule 105, or where the Registrar is satisfied that the address for service of the owner of a registered trade mark or a party to any proceedings before the Registrar is no longer valid, the Registrar may send to the person concerned, at any of the addresses referred to in subrule (2), a notice to file an address for service.
For the purposes of subrule (1), the addresses are—
any previously filed address for service of the person;
any address of the person in Hong Kong that is shown in the register;
any residential or business address of the person in Hong Kong; and
any other address of the person that is known to the Registrar.
If any person to whom a notice is sent under subrule (1) fails to file an address for service within 2 months after the date of the notice—
any application, notice or request filed by that person shall be treated as abandoned or withdrawn; and
the person shall be deemed to have withdrawn from any proceedings before the Registrar of which he is a party.
Any document or other thing required or authorized by the Ordinance or these Rules to be filed with the Registrar must be delivered by hand to the Registrar at the Registry during the normal business hours of the Registry or sent to the Registrar by post. (L.N. 62 of 2006)
Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or other thing, with the postage on it prepaid, to the Registrar at the office of the Registry; and the document or thing shall be deemed to have been received at the time when the letter is actually received by the Registrar at the Registry.
The filing of a document or other thing with the Registrar shall be deemed to be effected at such time as it is received by the Registrar at the Registry and is recorded as received.
The Registrar may at his discretion permit, as an alternative to the filing of a document or other thing with the Registrar in a paper or other physical form, the filing of an electronic record of that document or thing.
The Registrar may at his discretion permit, as an alternative to delivering or sending a document or other thing to the Registrar in the manner provided by rule 108, the sending of an electronic record of that document or thing by electronic means to an information system designated by the Registrar.
The filing of an electronic record, and the sending of an electronic record by electronic means to the information system designated under subrule (2), shall be subject to such terms as the Registrar may specify either generally by notice published in the official journal or in any particular case by notice to the person desiring to file an electronic record or to send an electronic record to the Registrar by electronic means.
Where, in accordance with this rule, a document or other thing in the form of an electronic record is sent by electronic means to the information system designated under subrule (2), the filing of that document or thing shall be deemed to be effected at such time as that electronic record is accepted by the designated information system.
Without limiting the generality of rule 109(3), the Registrar may specify terms under that rule—
providing for the approval by the Registrar of the process that must be used to make or send an electronic record;
providing for the approval by the Registrar of the format or media in which an electronic record must be recorded or stored;
respecting the manner of authenticating an electronic record in circumstances where the document or other thing in question is required to be signed or sealed or authenticated in any manner;
requiring any document or other thing sent to the Registrar in the form of an electronic record to include or be accompanied by the electronic signature or digital signature of the person who sends it; and
respecting the manner of filing a document or other thing in cases where there is an interruption in the operation of the information system designated under rule 109(2).
Without limiting the generality of rule 109(3), the Registrar may refuse to accept or to register any document or other thing that is in the form of an electronic record if—
the information contained in the electronic record is not capable of being displayed in a legible form;
the electronic record is not capable of being stored in the information system designated under rule 109(2);
the electronic record appears to the Registrar to be altered, damaged or incomplete;
any electronic signature or digital signature or other kind of authentication accompanying or included with the electronic record appears to the Registrar to be altered or incomplete; or
any term specified by the Registrar under that rule has been breached.
On the request of any person, the Registrar may designate an electronic mail box within an information system designated by the Registrar which may be used by that person to communicate with the Registrar.
The use by any person of an electronic mail box within the designated information system shall be subject to such terms as the Registrar may specify either generally by notice published in the official journal or in any particular case by notice to the person for whom the electronic mail box is designated.
Where the Registrar designates an electronic mail box for a person under this rule, any document or other thing required or authorized by the Ordinance or these Rules to be sent by the Registrar to that person shall be deemed to be properly sent if it is sent in the form of an electronic record to that person’s designated electronic mail box.
Sending to a designated electronic mail box shall be deemed to be effected at such time as the electronic record is accepted by the designated information system.
An electronic record sent to a designated electronic mail box shall be deemed to be received by the addressee at such time as the electronic record is accepted and recorded by that electronic mail box.
Except as provided by rules 108, 109, 110 and 111, where any document or other thing is required or authorized by the Ordinance or these Rules to be sent to any person—
the document or other thing may be left at, or sent by post to, the address for service of the person; or
if the person does not have an address for service, the document or other thing may be sent by post to his last known address.
Sending by post shall be deemed to be effected by properly addressing, preparing and posting a letter containing the document or other thing, with the postage on it prepaid, to the address for service of the person or, if he does not have an address for service, at his last known address, and unless the contrary is shown, the document or thing shall be deemed to have been received by that person at the time when the letter would be delivered in the ordinary course of post.
The Registrar shall determine the form in which the records of the Registry are constituted and kept and may determine the period for which such records, or any document or other thing kept by the Registry, shall be kept and the circumstances in which they may be destroyed or otherwise disposed of.
Where the Registrar keeps a record of a document or other thing in a form that differs from that in which the document or thing was originally filed with, or originally generated by, the Registrar, the record of that document or thing shall be presumed, unless the contrary is shown, to accurately represent the information contained in the document or thing as originally filed or generated.
Any directions given by the Registrar under section 89 of the Ordinance (which authorizes the Registrar to specify the hours of business or business days of the Registry) shall be posted in the Registry and published in the official journal.
The Registrar may arrange for the publication and sale of documents and information by the Registry on such terms as he thinks fit.
Whenever an order is made by the court under the Ordinance for the rectification or correction of the register, the Registrar may, if he thinks that it should be made public, publish the order in the official journal.
If the court has made an order or declaration, or has granted a certificate, under the Ordinance in favour of a person, the person or, if there is more than one such person, the person directed by the court, must file a sealed copy of the order, declaration or certificate with the Registrar. (L.N. 92 of 2025)
Where appropriate, the Registrar shall rectify the register accordingly.
A document signed for or on behalf of a firm shall be signed by its partners, by any partner stating that he signs on behalf of the firm or by any other person who satisfies the Registrar that he is authorized to sign the document.
A document signed for or on behalf of a body corporate shall be signed by a director or the secretary or other principal officer of the body corporate or by any other person who satisfies the Registrar that he is authorized to sign the document.
A document signed for or on behalf of an unincorporated body or association of persons other than a firm shall be signed by a director, manager, secretary or other similar officer of that body or association, or by any other person who satisfies the Registrar that he is authorized to sign the document.
The Registrar may, subject to the consent of the parties concerned, give directions relating to the change of the language of proceedings on such terms as he may direct.
Except as expressly provided in these Rules, where any document or part of a document that is not in one of the official languages is filed with the Registrar, the document shall be accompanied by a translation of the document or that part of the document into the language of the proceedings and such translation must be verified to the satisfaction of the Registrar as corresponding to the original text.
The Registrar may, in respect of any document or part of a document to be used for the purposes of evidence in proceedings before the Registrar and that is in a language other than the language of the proceedings, give directions as to—
the filing of the document or that part of the document in that other language; and
the filing of a translation of the document or that part of the document into the language of the proceedings.
Where a person is required by the Ordinance or these Rules to state his name on any document filed with the Registrar and his name is not in the Roman alphabet or in Chinese characters, the document shall contain a transliteration of the name in the Roman alphabet.
In the case of an application for the registration of a trade mark that consists of or contains a word, letter or character that is neither in the Roman alphabet nor in Chinese characters, the application shall, unless the Registrar otherwise directs, include a translation or transliteration of that word, letter or character to the satisfaction of the Registrar, and where the application includes such a translation or transliteration, it shall also state the language to which that word, letter or character belongs.
In the case of an application for the registration of a trade mark that consists of or contains a word, letter or character in a language other than English or Chinese, the Registrar may require the applicant to file an exact translation of that word, letter or character into English or Chinese, and, if the Registrar so requires, the translation shall be endorsed and signed by the applicant or his agent and the endorsement shall state the language to which that word, letter or character belongs.
The Registrar may, in respect of any information required to be supplied by any person in connection with any proceedings before the Registrar, require the person to supply the information in one or both of the official languages on such terms as the Registrar thinks fit.
The Registrar may specify periods within which translations of documents or parts of documents are to be provided by a party to any proceedings before the Registrar.
Where an application for registration of a mark made under the old law is advertised in accordance with section 14 or 66 of the repealed Ordinance on or after the commencement date — (L.N. 97 of 2003)
the period within which a notice of opposition may be filed is the 3-month period beginning on the date of the advertisement; and
if a notice of opposition is filed, the applicant shall file the counter-statement within 3 months after the date of receipt by the applicant of the copy of the notice of opposition.
The Registrar may, on a request being filed by any person on the specified form within the period specified in subrule (1)(a), extend the time for filing a notice of opposition by 2 months, which time may not be further extended. (L.N. 97 of 2003)
The Registrar may, on a request being filed by the applicant on the specified form within the period specified in subrule (1)(b), extend the time for filing the counter-statement by 2 months, which time may not be further extended. (L.N. 97 of 2003)
A notice to the Registrar under section 11(1) of Schedule 5 to the Ordinance (which deals with transitional matters), claiming to have the registrability of the mark determined in accordance with the Ordinance, shall be filed on the specified form.
The amendments to rules 36, 40, 46 and 50 effected by the Trade Marks (Amendment) Rules 2025 (Amendment Rules) do not apply to applications filed under rule 36, 40, 46 or 48 before the date on which the Amendment Rules come into operation*.
| Fee No. | Matter or proceeding | Amount | |
| 1. | Application for registration of a trade mark (including a collective mark and a certification mark) under rule 6 (L.N. 25 of 2015) | $2,000 for the first class of goods or services set out in the specification plus $1,000 for each additional class (if any) | |
| 2. | Request to amend application under rule 7(5) (L.N. 25 of 2015) | $1,000 for each class of goods or services added to the specification | |
| 3. | Request for extension of time under rule 13(3) or (6) (L.N. 97 of 2003) | $200 | |
| 4. | Notice of opposition under rule 16 | $800 | |
| 5. | Notice of objection under rule 26 | $800 | |
| 6. | Request to divide application under rule 27 (excluding request to divide application for registration of a series of trade marks) | $650 | |
| 7. | Renewal of trade mark registration under rule 32(1) or (3) (L.N. 25 of 2015) | $2,670 for the first class of goods or services set out in the specification plus $1,340 for each additional class (if any) | |
| 8. | Late renewal of trade mark registration under rule 32(3) | $500 | |
| 9. | Renewal of trade mark registration under rule 33(2) (L.N. 25 of 2015) | $2,670 for the first class of goods or services set out in the specification plus $1,340 for each additional class (if any) | |
| 10. | Restoration and renewal of trade mark registration removed from the register under rule 35 (L.N. 25 of 2015) | $4,000 for the first class of goods or services set out in the specification plus $1,340 for each additional class (if any) | |
| 11. | Application for the revocation of the registration of a trade mark under rule 36 | $800 | |
| 12. | Application for the revocation of the registration of a trade mark, defensive trade mark, collective mark or certification mark under rule 40 | $800 | |
| 13. | Application for a declaration of invalidity of the registration of a trade mark, collective mark or certification mark under rule 46 | $800 | |
| 14. | Application for the variation of the registration of a trade mark under rule 48(1)(a) | $800 | |
| 15. | Application for the rectification of an error or omission in the register under rule 48(1)(b) | $800 | |
| 16. | Application for leave to intervene under rule 51 | $800 | |
| 17. | Notice of objection under rule 55 | $800 | |
| 18. | Notice of opposition to the amendment of the specification of a registered trade mark under rule 61 | $800 | |
| 19. | Application/notice under rule 62 to register particulars of a registrable transaction relating to one or more registered trade marks or applications for registration of a trade mark | $800 | |
| 20. | Notice of opposition to the removal of any matter from the register under rule 67(2) | $800 | |
| 21. | For supplying under rule 70(1) a certified copy of an entry in the register, a certified extract from the register or a certified copy of an application for registration of a trade mark | $150 | |
| 22. | For supplying under rule 70(1) an uncertified copy of an entry in the register, an uncertified extract from the register or an uncertified copy of an application for registration of a trade mark | $6 for each page or portion of a page | |
| 23. | For supplying under rule 70(2) a certificate for the purposes of section 79(2) of the Ordinance | $200 | |
| 24. | Request for Registrar’s advice on the matter referred to in section 72(1)(a) of the Ordinance (L.N. 25 of 2015; 3 of 2020 s. 26) | (a) | $400 for the first class of goods or services set out in the specification; and |
| (b) | $200 for each additional class (if any) if there is no simultaneous request for Registrar’s advice on the matter referred to in section 72(1)(b) of the Ordinance in respect of the same additional class | ||
| 25. | Request for Registrar’s advice on the matter referred to in section 72(1)(b) of the Ordinance (L.N. 25 of 2015; 3 of 2020 s. 26) | (a) | $400 for the first class of goods or services set out in the specification; and |
| (b) | $200 for each additional class (if any) if there is no simultaneous request for Registrar’s advice on the matter referred to in section 72(1)(a) of the Ordinance in respect of the same additional class | ||
| 25A. | Simultaneous requests for Registrar’s advice on the matters referred to in section 72(1)(a) and (b) of the Ordinance in respect of the same additional class of goods or services set out in the specification (L.N. 25 of 2015; 3 of 2020 s. 26) | $200 for each additional class | |
| 26. | Notice of intention to appear at hearing under rule 74(5) (other than hearing for extension of time) | $1,700 | |
| 27. | Taxation of bill of costs under rule 85 | $450 for the first $15,000 of the amount claimed plus $3 for every $100 or fraction of $100 of the amount claimed above $15,000 | |
| 28. | Request for a statement of the reasons for a decision of the Registrar under rule 91(2) | $1,500 | |
| 29. | Request for extension of time under rule 16(4), 17(3), 94 or 121(2) or (3) (L.N. 97 of 2003) | $200 | |
| 30. | Application for registration of a series of trade marks under rule 97(1) (L.N. 25 of 2015) | $2,000 for the first class of goods or services set out in the specification plus $1,000 for each additional class (if any) | |
| 31. | Request to divide application for registration of a series of trade marks under rule 97(4) | $650 plus the fees payable in accordance with Fee No. 1 in respect of each additional application created | |
| 32. | Application for registration of a trade mark as a defensive trade mark under rule 99 (L.N. 25 of 2015) | $2,300 for the first class of goods or services set out in the specification plus $1,150 for each additional class (if any) | |
| 33. | Notice of opposition under rule 102(3) | $800 | |
| 34. | Notice under rule 122 to have the registrability of a mark determined in accordance with the Ordinance | $900 | |