 
  WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/HKG/T/5 
26 July 2004 
 (04-3204) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
HONG KONG, CHINA 
  The present document reproduces the text
1 of the Trade Marks Rules (Cap. 559, sub. leg.), as 
notified by Hong Kong, China under Article 63.2 of the Agreement (see document IP/N/1/HKG/8). 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
HONG KONG, CHINE 
  Le présent document contient le texte
1 des Règles relatives aux marques de fabrique ou de 
commerce (chapitre 559, texte d'application), notifi ées par Hong Kong, Chine au titre de l'article 63:2 
de l'Accord (voir le document IP/N/1/HKG/8). 
 
 Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
HONG KONG, CHINA 
  En el presente documento se reproduce el texto
1 del Reglamento de Marcas de Fábrica o de 
Comercio (capítulo 559, leg. sub.), que Hong Kong , China ha notificado en virtud del párrafo 2 del 
artículo 63 del Acuerdo (véase el documento IP/N/1/HKG/8).  
                                                     
 
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/HKG/T/5 
Page 2  
 
 (Date of this copy: 25/04/2003) 
 
Chapter: 559A TR ADE MARKS RULES 
 
Empowering section 
(Cap 559, section 91) 
[4 April 2003] L.N. 31 of 2003 
(L.N. 30 of 2003) 
 
PART 1 
PRELIMINARY 
Section: 1 (Omitted as spent) 
(Omitted as spent) 
 
Section: 2 Interpretation 
(1) In these Rules, unless the context otherwise requires- 
"actual date of registration" ( □□□ ) has the meaning assigned by rule 29(1)(b); 
"applicable fee" ( □□□ ), 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" ( □□□ ) means a business day of the Registry as specified in directions 
of the Registrar published under rule 114; 
"business hours of the Registry" ( □□□ ) means the business hours of the Registry as specified in 
directions of the Registrar published under rule 114; 
"commencement date" ( □□□ ) means the date on which the Ordinance comes into operation; 
"the date of registration" ( □□□ ) has the meaning assigned by rule 29(1)(a); 
"digital signature" ( □□□ ) has the meaning assigned by section 2(1) of the Electronic Transactions 
Ordinance (Cap 553); 
"electronic record" ( □□□ ) has the meaning assigned by section 2(1) of the Electronic Transactions 
Ordinance (Cap 553); 
"electronic signature" ( □□□ ) has the meaning assigned by section 2(1) of the Electronic Transactions 
Ordinance (Cap 553); 
"existing registered mark" ( □□□ ) has the meaning assigned by section 1(1) of Schedule 5 to the 
Ordinance; 
"information system" ( □□□ ) has the meaning assigned by section 2(1) of the Electronic Transactions 
Ordinance (Cap 553); 
"International Classification" ( □□□ ) means the International Classification of Goods and Services 
adopted under the Nice Agreement and in force at the relevant time; 
"Nice Agreement" ( □□□ ) means the Nice Agreement c oncerning 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" (
□□□ ) means a person who files a notice of objection under rule 26(2) or 55(1), as the case 
may be; 
"old law" ( □□□ ) has the meaning assigned by section 1(1)  of Schedule 5 to the Ordinance; 
"opponent" ( □□□ ) 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" ( □□□ ) means the Trade Marks Ordinance (Cap 559); 
"the repealed Ordinance" ( □□□ )means the Trade Marks Ordinance (Cap 43), as in operation 
immediately before its repeal by the Ordinance;  IP/N/1/HKG/T/5 
 Page 3 
 
 
 "send" (□□□ )includes give, and cognate expressions  are to be construed accordingly; 
"specification" ( □□□ )means the statement of the goods or services in respect of which a trade mark is 
registered or proposed to be registered; 
"specified form" ( □□□ ), in relation to any matter or proceed ing, means the form specified by the 
Registrar under section 74 of the Ordinance to be used  in connection with that matter or proceeding. 
(2) 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. 
(3) Unless the context otherwise requires, any re ference in these Rules to a trade mark shall 
be construed as including a reference to a certific ation mark, collective mark and defensive trade 
mark. 
(4) 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. 
(5) 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. 
 
Section: 3 Specified forms 
(s. 74 of the Ordinance) 
(1) Where under section 74 of the Ordinance the Registrar specifies a form to be used in 
connection with any matter or proceeding, the specifi ed form shall be used in all cases in which it is 
applicable. 
(2) A requirement to use a specified form  is satisfied by the use of either- 
(a) a replica of the specified form; or 
(b) a form acceptable to the Registrar, 
that contains the information required by the specifi ed form and complies with any directions of the 
Registrar as to the use of the sp ecified form or replicas of it. 
 
Section: 4 Fees 
(1) The fees to be paid in relation to any matt er or proceeding under the Ordinance or these 
Rules are those specified in the Schedule. 
(2) Subject to subrule (3), fees shall be paid at  such time and in such manner as the Registrar 
directs. 
(3) 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 sh all be paid when the specified form is filed. 
(4) Where the Registrar is required or authori zed by any provision of these Rules to do any 
act or thing in relation to a matter or proceeding fo r 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. 
(5) 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. 
 
Section: 5 Classification of goods and services 
(s.40 of the Ordinance) 
(1) 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. 
(2) Subject to subrule (3), for the purposes of existing registered marks, the goods or services 
in respect of which a trade mark is registered sh all be classified in the same manner as they were 
classified immediately before the commencement date. 
(3) The specification of a registered trade mark  may be reclassified in accordance with rules 
58, 59, 60 and 61.  IP/N/1/HKG/T/5 
Page 4  
 
 PART 2 
APPLICATION FOR REGISTRATION 
 
Filing of application 
 
Section: 6 Form of application, etc. 
(s. 38 of the Ordinance) 
(Forms T2, T2A & T2S)(Fee No. 1) 
(1) An application for registration of a trade mark shall be filed on the specified form. 
(2) An application for registration of a 3-dimens ional shape as a trade mark or as an element 
of a trade mark shall not be treated as such unl ess the application contains a statement claiming the 
shape as the trade mark or as an elemen t of the trade mark, as the case may be. 
(3) 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- 
(a) 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 
(b) 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 incl uded with the application in the colour or 
colours for which the claim is made. 
 
Section: 7 Specification of goods or services 
(ss. 38(2)(c) & 40 of the Ordinance) 
(Form T5A)(Fee No. 2) 
(1) Every application for registration of a tr ade mark shall specify the class or classes of 
goods or services in the International Classifi cation to which the application relates. 
(2) 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. 
(3) 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. 
(4) If the trade mark is proposed to be register ed 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 speci fication 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. 
(5) 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 th e application to correct the class or classes 
accordingly (see rule 24). 
(6) 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. 
(7) Subrule (4) does not apply to an applicati on for the registration of a trade mark as a 
defensive trade mark. 
 
Section: 8 Representation of trade mark 
(s. 38(2)(d) of the Ordinance) 
(1) The representation included with an applica tion for registration of a trade mark shall 
depict the trade mark clearly and in sufficient deta il to permit a proper examination to be made of the 
trade mark and shall be of a kind and quality th at is suitable for reproduction and registration. 
(2) The Registrar may at any time require the applicant to file additional copies of the 
representation. 
 
  IP/N/1/HKG/T/5 
 Page 5 
 
 
 Section: 9 Claim to priority 
(s. 41 of the Ordinance) 
(1) 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- 
(a) the name of each country, territory or area in respect of which a right to priority is 
claimed; 
(b) the date of filing of the application filed in, or in respect of, each such country, territory 
or area; and 
(c) the application number assigned to that app lication, if it is known to the applicant. 
(2) If the application filed under these Rules do es 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. 
(3) The Registrar may at any time by notice in wr iting 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 
(a) the date of filing of the application filed in, or in respect of, that country, territory or 
area; 
(b) the application number assigned to that application; 
(c) the representation of the trade mark; and (d) the goods or services covered by that application. 
(4) 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. 
 
Section: 10 Disclaimers, limitations and conditions 
(s. 15 of the Ordinance) 
An applicant who wishes to- 
(a) disclaim any right to the exclusive use of any specified element of the trade mark; or 
(b) subject the rights to be conferred by the re gistration to a specified territorial or other 
limitation or condition, 
shall include particulars of the disclaimer,  limitation or condition in his application. 
 
Section: 11 Deficiencies in application 
(1) If it appears to the Registrar that an appli cation for registration of a trade mark does not 
satisfy the requirements of- 
(a) rule 6(1), 7(1) or (2) or 8(1); or (b) section 38 of the Ordinance (which sets out requirements relating to applications), 
the Registrar shall send a notice to the applicant in forming him of the deficiencies and requesting him 
to remedy those deficiencies. 
(2) An applicant to whom a notice is sent under th is rule must remedy the deficiencies within 
2 months after the date of the notice, and if he fails to do so- 
(a) where the deficiencies relate to rule 6(1), 7( 1) or (2) or 8(1) or section 38(1), (2)(e), (3), 
(4) or (5) of the Ordinance, the application shall be treated as abandoned; and 
(b) where the deficiencies relate to section 38( 2)(a), (b), (c) or (d) of the Ordinance, 
the application shall be deemed  never to have been made. 
 
Examination and publication 
 
Section: 12 Examination of application 
(s. 42(1) of the Ordinance) 
The Registrar shall examine whether an appli cation for registration of a trade mark filed 
under these Rules, and in respect of which any de ficiencies notified to the applicant under rule 11 IP/N/1/HKG/T/5 
Page 6  
 
 have been remedied, satisfies the requirements for registration. 
 
Section: 13 Failure to meet requirements for registration 
(s. 42(3) of the Ordinance)(Form T13) 
(Fee No. 3) 
(1) 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 ma tters referred to in section 42(3)(b) and (c) of the 
Ordinance. 
(2) 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) 
(a) file written representations to establish that  the requirements for registration are met; or 
(b) file a request under section 46 of the Ordina nce to amend his application so as to meet 
those requirements (see rule 24). 
(3) The Registrar may, on a request being filed by the applicant on the specified form within 
the period specified in subrule (2), extend the ti me for filing the written representations or request 
referred to in that subrule for one furt her period of 3 months. (L.N. 97 of 2003) 
(4) If- 
(a) the applicant files written representations or a request for amendment under subrule (2) 
within the period specified in that subrul e or, where the Registrar has granted an 
extension of time under subrule (3), within the period as so extended; and 
(b) 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) 
(5) 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- 
(a) file written representations or further wr itten representations to establish that the 
requirements for registration are met; 
(b) file a request or a further request unde r section 46 of the Ordinance to amend his 
application so as to meet those requirements (see rule 24); or 
(c) file a request for a hearing. (L.N. 97 of 2003) 
(6) 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 Regi strar 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 pe riods, not exceeding 3 months at any one time, and 
on such terms, if any, as he may direct, if he is satisfied that- 
(a) 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)- 
(i) the applicant needs additional time to obtai n the consent of the owner of a relevant 
earlier trade mark; (ii) the applicant needs additional time to obtain an assignment of a relevant earlier 
trade mark; or (iii) proceedings for the invalidation or revo cation of a relevant earlier trade mark are 
pending and time should be extended to allo w for the proceedings to be disposed of; 
(b) the applicant needs additional time to prepar e evidence of use to be filed in support of 
the application; or 
(c) other exceptional circumstances exist to ju stify the granting of an extension of time. 
(L.N. 97 of 2003) 
  IP/N/1/HKG/T/5 
 Page 7 
 
 
 Section: 14 Prescribed period under section 42(3)(b) of the Ordinance 
(1) 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 re quirements 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 m onths after that date or, where the Registrar has 
granted an extension of time under rule 13 (3), ending 9 months after that date. 
(2) Subject to subrule (3), where- 
(a) the Registrar sends a notice to  the applicant under rule 13(1); 
(b) 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 
(c) the Registrar sends a notice to  the applicant under rule 13(4), 
the prescribed period for the application is the peri od beginning on the date of the notice sent to the 
applicant under rule 13(1) and ending 3 months afte r the date of the notice sent to the applicant under 
rule 13(4) or, where the Registrar has granted an exte nsion of time under rule 13(6), ending on the last 
day of the period as so extended. (L.N. 97 of 2003) 
(3) Where- 
(a) the Registrar sends a notice to the applicant under rule 13(4); and 
(b) 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 peri od 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) 
 
Section: 15 Publication of particulars of application 
(s. 43 of the Ordinance) 
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.  
PART 3 
OPPOSITION TO REGISTRATION 
 
Section: 16 Notice of opposition 
(s. 44 of the Ordinance)(Form T6) 
(Fee Nos. 4 & 29) 
(1) 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. 
(2) The notice of opposition shall include a st atement of the ground s of opposition and, 
where the opposition is based on an earlier trade mark, shall also include- 
(a) a representation of that earlier trade mark; (b) if it is registered, a statement indicating the classes and the goods or services in respect 
of which it is registered; 
(c) if it is not registered, a statement indicating the goods or services in respect of which it is 
used; and 
(d) 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. 
(3) The opponent shall, at the same time as he  files the notice of opposition, send a copy of 
it to the applicant. 
(4) 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) IP/N/1/HKG/T/5 
Page 8  
 
  
Section: 17 Counter-statement 
(Form T7)(Fee No. 29) 
(1) 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- 
(a) the grounds on which he relies in support of his application; (b) the facts alleged in the noti ce of opposition that he admits; 
(c) the facts alleged in the notice of oppositio n 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 
(d) the facts alleged in the notice of oppos ition that he is unable to admit or deny. 
(2) The applicant shall, at the sa me time as he files the counte r-statement, send a copy of it to 
the opponent. 
(3) The Registrar may, on a request being filed by the applicant on the specified form within 
the period specified in subrule (1), extend the tim e for filing a counter-statement by 2 months, which 
time may not be further extended. (L.N. 97 of 2003) 
(4) 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) 
 
Section: 18 Evidence in support of opposition 
(1) If the applicant files a counter-statement with in the period specified in rule 17(1) or as 
extended under rule 17(3), the oppo nent 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) 
(2) The opponent shall, at the same time as he files the evidence, send a copy of it to the 
applicant. 
(3) If the opponent does not file evidence within the period specified in subrule (1), he shall 
be deemed to have abandoned his opposition. 
 
Section: 19 Evidence in support of application 
(1) If the opponent files evidence within the peri od 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- 
(a) evidence in support of his application; or 
(b) a statement to the effect that he  does not intend to file evidence. 
(2) The applicant shall, at th e same time as he files the ev idence or statement under subrule 
(1), send a copy of it to the opponent. 
 
Section: 20 Evidence in reply 
(1) If the applicant files eviden ce 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 c onfined to matters strictly in re ply to the applicant's evidence. 
(2) If the opponent files additional evidence, he shall at the same time send a copy of it to the 
applicant. 
(3) Except with the leave of the Registrar, no fu rther evidence may be filed by either party. 
 
Section: 21 Fixing of date for hearing 
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. 
     IP/N/1/HKG/T/5 
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 PART 4 
WITHDRAWAL, AMENDMENT, DIVISION AND MERGER OF 
APPLICATIONS FOR REGISTRATION 
 
Withdrawal 
 
Section: 22 Notice of withdrawal of application 
(s. 45 of the Ordinance) 
(1) An applicant for registration of a trade ma rk may withdraw his application by notifying 
the Registrar in writing. 
(2) The withdrawal takes effect on recei pt of the notice by the Registrar. 
(3) If particulars of the application have b een published under rule 15, the Registrar shall 
publish particulars of the withdrawal in the official journal.  
Amendment 
 
Section: 23 Additional purposes for which application may be amended 
(s. 46(3)(b) of the Ordinance) 
In addition to the purposes mentioned in secti on 46 of the Ordinance, an application for 
registration of a trade mark may be amended for the purpose of- 
(a) correcting under rule 7(5) and (6) the class or classes of goods or services listed in the 
specification; 
(b) adding a disclaimer, limitation or cond ition under section 15 of the Ordinance; or 
(c) withdrawing a claim to a right to priority made under section 41 of the Ordinance. 
 
Section: 24 Request to amend application 
(s. 46 of the Ordinance)(Forms T5, T5A, T5B 
& T5S) 
(1) 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. 
(2) The Registrar may at any time require the a pplicant to file reasons for and evidence in 
support of the request. 
(3) Subject to rules 25 and 26, where a request is filed under this rule, the Registrar may- 
(a) amend the application as proposed by the app licant (if he is satisfied that the proposed 
amendment complies with section 46 of the Ordinance); 
(b) 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 
(c) refuse to make the amendment (if he is satisfied that the proposed amendment does not 
comply with section 46 of the Ordinance). 
 
Section: 25 Publication of proposed amendment 
(s. 46(5)(a) 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 th at application have been published under rule 15, the 
Registrar shall, if he is satisfied that the propo sed amendment affects the representation of the trade 
mark or the goods or services covered by the app lication, publish particulars of the proposed 
amendment in the official journal. 
 
   IP/N/1/HKG/T/5 
Page 10  
 
 Section: 26 Notice of objection 
(s. 46(5)(b) of the Ordinance)(Form T6) 
(Fee No. 5) 
(1) This rule applies where particulars of a proposed amendment to an application for 
registration of a trade mark have been published under rule 25. 
(2) Any person claiming to be affected by th e proposed amendment may, within 3 months 
after the date of publication of the particulars, file a notice of objection on the specified form. 
(3) The notice of objection shall include a statement of the grounds of objection, which 
statement shall, in particular, explain how the object or 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. 
(4) The objector shall, at the same time as he files the notice of objection, send a copy of it to 
the applicant.  
Division 
 
Section: 27 Request to  divide application 
(s. 51(1)(a) of the Ordinance)(Form T3) 
(Fee No. 6) 
(1) At any time after an application for regist ration of a trade mark is assigned a filing date 
under section 39 of the Ordinance and before the regist ration of the trade mark, the applicant may file 
a request on the specified form to divide the appli cation (the "original application") into 2 or more 
separate applications (the "divisional applicati ons"), indicating for each divisional application the 
specification of goods or services to be covered by that application. 
(2) Each divisional application must claim th e same protection under the Ordinance as the 
original application (for example, for protection as a defensive trade mark). 
(3) On the division of the original application, each divisional application shall be treated as a 
separate application for registration with the sa me filing date as the original application. 
(4) On the division of the original application,  any notice of opposition filed under rule 16 or 
notice of objection filed under rule 26 in re lation to the original application shall- 
(a) 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 
(b) in any other case, be treated as having been filed in relation to each of the divisional 
applications, and the proceedings on th e opposition or objection shall continue 
accordingly. 
(5) 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- 
(a) where the notice or request relates only to some of the goods or services covered by the 
original application, be treated as havi ng been filed in relation to each divisional 
application the specification of which co vers any of those goods or services; and 
(b) in any other case, be treated as having been filed in relation to each of the divisional 
applications. 
 
Merger 
 
Section: 28 Request to merge applications 
(s. 51(1)(b) of the Ordinance)(Form T4) 
(1) An applicant who has filed separate applicati ons for registration of a trade mark may, at 
any time before particulars of any of those applica tions have been publishe d under rule 15, file a  IP/N/1/HKG/T/5 
 Page 11 
 
 
 request on the specified form to merge those applications into a single application. 
(2) The Registrar shall merge the applications th at are the subject of the request into a single 
application if he is satisfied that all of the applications- 
(a) are in respect of the same trade mark; (b) claim the same protection under the Or dinance (for example, for protection as a 
collective mark); 
(c) bear the same filing date; and (d) are, at the time of the request, in the name of the same person. 
 
PART 5 
REGISTRATION 
 
Section: 29 Registration 
(s. 47(1) of the Ordinance) 
(1) The Registrar shall register a trade mark unde r section 47(1) of the Ordinance by entering 
a representation of the trade mark in the regist er together with the following particulars- 
(a) 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; 
(b) 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; 
(c) the date of priority, if any, claimed under section 41 of the Ordinance; (d) the name and address of the owner; (e) the address for service of the owner; (f) the classes and description of goods or servi ces in the International Classification in 
respect of which the trade mark is registered; 
(g) any disclaimer, limitation or condition to which the registration is subject; (h) 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; 
(i) where the trade mark or any element or elemen ts of the trade mark consists of a colour or 
colours for which a claim has been made in ac cordance with rule 6(3), that fact and the 
colour or colours so claimed; 
(j) where the trade mark consists wholly or in part of a sound or smell, that fact; (k) where the trade mark is a certification mark , a collective mark or a defensive trade mark, 
that fact; 
(l) where the trade mark registration consists of a series of trade marks, that fact; and 
(m) 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. 
(2) The Registrar may at any time enter in the regi ster such other particulars in relation to the 
trade mark as he thinks fit. 
 
Section: 30 Publication of registration 
(s. 47(3) of the Ordinance) 
On the registration of a trade mark, the Regist rar shall publish a notice of the registration in 
the official journal, which notice shall specify the date of registration. 
 
Section: 31 Reminder of renewal of registration 
(s. 50(2) of the Ordinance) 
(1) 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 tr ade mark a notice informing him of the date of 
expiry and that the registration may be re newed in the manner described in rule 32. 
(2) If it appears to the Registrar that a trade mark may be registered under section 47(1) of IP/N/1/HKG/T/5 
Page 12  
 
 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 th e trade mark a notice informing him of the date of 
expiry and that the registration may be re newed in the manner described in rule 33. 
 
Section: 32 Renewal of registration 
(s. 50(1), (3) & (7) of the Ordinance) 
(Form T8)(Fee Nos. 7 & 8) 
(1) Renewal of the registration of a trade mark sh all 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. 
(2) If a request for renewal is not filed, or the a pplicable fee for renewal is not paid, within the 
period specified in subrule (1), the Registrar shall publ ish a notice of that fact in the official journal. 
(3) 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 applicab le fee for renewal and the applicable fee for late 
renewal within 6 months after the da te of expiry of the registration. 
(4) Where the Registrar renews the registrati on 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. 
(5) This rule does not apply to the renewal of th e registration of a trade mark to which rule 33 
applies. 
 
Section: 33 Renewal of registration: special case 
(s. 50(1), (3) & (7) of the Ordinance) 
(Form T8)(Fee No. 9) 
(1) This rule applies to the renewal of the regi stration 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 application for registration). 
(2) Renewal of the registration of the trade mark shall be effected by filing a request for 
renewal on the specified form and paying the applicab le fee for renewal not later than 6 months after 
the actual date of registration. 
(3) Where the Registrar renews the registrati on 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. 
 
Section: 34 Removal of registration 
(s. 50(5) of the Ordinance) 
(1) 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. 
(2) 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 m onths after the actual da te of registration, the 
Registrar shall remove the trade mark from the register. 
(3) 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. 
 
Section: 35 Restoration of registration 
(s. 50(6) & (7) of the Ordinance) 
(Form T8)(Fee No. 10) 
(1) Where the Registrar removes the registra tion of a trade mark from the register in 
accordance with rule 34, he may, on a request bei ng filed on the specified form and payment of the 
applicable fee within 6 months after the date of th e removal, restore the trade mark to the register  IP/N/1/HKG/T/5 
 Page 13 
 
 
 and renew its registration if, having regard to the circ umstances of the failure to renew, he is satisfied 
that it is just to do so. 
(2) 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.  
PART 6 
PROCEEDINGS TO REVOKE, INVALIDATE, VARY OR 
RECTIFY REGISTRATION 
 
Procedure for revocation on grounds of non-use 
 
Section: 36 Application for revocation 
(s. 52(2)(a) of the Ordinance)(Form T6) 
(Fee No. 11) 
(1) 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. 
(2) The application shall be accompanied by  a statement of the grounds on which the 
application is made and evidence in support of the application. 
(3) 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. 
 
Section: 37 Counter-statement 
(Form T7) 
(1) Within 6 months after the date of receipt of the copy of the application, statement of 
grounds and evidence, the owner shall file a count er-statement on the specified form setting out- 
(a) the grounds on which he relies in support of his registration; (b) the facts alleged in the application that he admits; 
(c) 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 th e hearing, his version of those events); and 
(d) the facts alleged in the application that he is unable to admit or deny. 
(2) The counter-statement shall be accompanied by- 
(a) evidence of the use made of the trade mark; or (b) a statement giving reasons for non-use. 
(3) The owner shall, at the sa me 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. 
(4) 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 specifi ed in subrule (1), the Registrar may treat the 
application for revocation as being unoppo sed by the owner. (L.N. 97 of 2003) 
 
Section: 38 Additional evidence 
(1) The applicant may file additional evidence in support of his application- 
(a) 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 
(b) 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. 
(2) If the applicant does not intend to file additional evidence, he shall file a statement to that 
effect within the period specified in subrul e (1)(a) or (b), whichever is applicable. 
(3) 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. 
(4) Except with the leave of the Registrar, no fu rther evidence may be filed by either party. IP/N/1/HKG/T/5 
Page 14  
 
 Section: 39 Fixing of date for hearing 
After the completion of the filing of evidence, the Registrar shall fix a date, time and place for the 
hearing and shall notify the pa rties in writing accordingly. 
 
Procedure for revocation on grounds other than non-use 
 
Section: 40 Application for revocation (ss. 52(2)(b), (c) & (d) & 60(6), s. 13 of Sch. 3 
& s. 15 of Sch. 4 to the Ordinance)(Form T6) (Fee No. 12) 
(1) An application for- 
(a) the revocation of the registration of a trade ma rk on the grounds mentioned in section 52(2)(b), (c) 
or (d) of the Ordinance; (b) the revocation of the registration of a trad e mark as a defensive trade mark on the grounds 
mentioned in section 60(6) of the Ordinance; 
(c) the revocation of the registration of a collectiv e mark on the grounds mentioned in section 13 of 
Schedule 3 to the Ordinance; or (d) the revocation of the registration of a certifica tion mark on the grounds mentioned in section 15 of 
Schedule 4 to the Ordinance, shall be filed on the specified form. 
(2) The application shall be accompanied by  a statement of the grounds on which the 
application is made. 
(3) 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. 
 
Section: 41 Counter-statement 
(Form T7) 
(1) Within 3 months after the date of receipt of  the copy of the application and statement of 
grounds, the owner shall file a counter-sta tement on the specified form setting out- 
(a) the grounds on which he relies in support of his registration; 
(b) the facts alleged in the application that he admits; (c) 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 th e hearing, his version of those events); and 
(d) the facts alleged in the application that he is unable to admit or deny. 
(2) The owner shall, at the same time as he fil es the counter-statement, send a copy of it to the 
applicant. 
(3) If the owner does not file a counter-statement within the period specified in subrule (1), 
the Registrar may treat the application for revoca tion as being unopposed by the owner. (L.N. 97 of 
2003) 
 
Section: 42 Evidence in support of application 
(1) The applicant shall file evidence in support of his application- 
(a) within 6 months after the date of receipt of the copy of the counter-statement; or 
(b) 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. 
(2) If the applicant files evidence under subrule (1 ), he shall at the same time send a copy 
of it to the owner. 
(3) If the applicant does not file evidence within the period specifi ed in subrule (1)(a) or (b), 
he shall be deemed to have  withdrawn his application. 
 
  IP/N/1/HKG/T/5 
 Page 15 
 
 
 Section: 43 Evidence in s upport of counter-statement 
(1) If the owner files a counter-statement within  the period specified in rule 41(1) and the 
applicant files evidence within the pe riod specified in rule 42(1), then  within 6 months after the date 
of receipt of the copy of the app licant's evidence the owner shall file- 
(a) evidence in support of the counter-statement; or (b) a statement to the effect that he  does not intend to file evidence. 
(2) 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. 
 
Section: 44 Evidence in reply 
(1) 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 co py of the owner's evidence,  file additional evidence, 
which evidence shall be confined to matters strictly in reply to the owner's evidence. 
(2) If the applicant files additional evidence, he sh all at the same time send a copy of it to the 
owner. 
(3) Except with the leave of the Registrar, no fu rther evidence may be filed by either party. 
 
Section: 45 Fixing of date for hearing 
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.  
Procedure for declaration of invalidity 
 
Section: 46 Application for declaration of invalidity 
(s. 53, s. 14 of Sch. 3 & s. 16 of Sch. 4 to the 
Ordinance)(Form T6)(Fee No. 13) 
(1) An application for- 
(a) a declaration of invalidity of the registrati on of a trade mark on the grounds mentioned in 
section 53 of the Ordinance; 
(b) 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 
(c) a declaration of invalidity of the regist ration of a certification mark on the grounds 
mentioned in section 16 of Schedule 4 to the Ordinance, shall be filed on the specified 
form. 
(2) The application shall be accompanied by a statement of the grounds on which the 
application is made. 
(3) 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. 
 
Section: 47 Subsequent procedure 
Rules 41, 42, 43, 44 and 45 sh all apply with necessary modifi cations to proceedings with 
respect to an application filed under rule 46. (L.N. 97 of 2003) 
 
Procedure for variation and rectification 
 
Section: 48 Application for variation or rectification 
(ss. 54 & 57 of the Ordinance)(Form T6) 
(Fee Nos. 14 & 15) 
(1) An application for- 
(a) the variation of the registration of a trade mark under section 54 of the Ordinance; or IP/N/1/HKG/T/5 
Page 16  
 
 (b) the rectification of an error or omission in the register under section 57 of the Ordinance, 
shall be filed on the specified form. 
(2) The application shall be accompanied by- 
(a) a statement of the grounds on wh ich the application is made; and 
(b) evidence in support of the application. 
 
Section: 49 Procedure where application is made by the owner of the trade mark 
(1) This rule applies where an application file d under rule 48 is made by the owner of the 
registered trade mark in question. 
(2) Where the Registrar proposes to allow the a pplication, he shall publish a notice in the 
official journal, which notice shall include- 
(a) in the case of an application for the variation of the registration of a trade mark, a 
description of the conditions under which the trad e mark is registered and of the variation 
to be made; and 
(b) in the case of an application for the rectification of an error or omission in the register, 
such matters as the Registrar considers necess ary to identify the error or omission in 
question and the rectification to be made. 
(3) Part 3 shall apply with necessary modifi cations to proceedings under this rule. 
 
Section: 50 Procedure where application is made by a person other than the owner 
(Form T7) 
(1) This rule applies where an application f iled under rule 48 is made by a person other 
than the owner of the register ed trade mark in question. 
(2) The applicant shall, at the same time as he files the application, send a copy of the 
application, statement of grounds and evid ence filed under rule 48 to the owner. 
(3) Within 6 months after the date of receipt of the copy of the application, statement of 
grounds and evidence, the owner shall file a count er-statement on the specified form setting out- 
(a) the grounds on which he relies in support of his registration; (b) the facts alleged in the application or in the applicant's evid ence that he admits; 
(c) 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 a lternative version of events at the hearing, 
his version of those events); and 
(d) the facts alleged in the application or in the applicant's evidence that he is unable to 
admit or deny. 
(4) The counter-statement shall be accompanied by- 
(a) evidence in support of the counter-statement; or 
(b) if the owner does not intend to file evidence, a statement to that effect. 
(5) The owner shall, at the sa me time as he files the counter-statement, send a copy of the 
counter-statement and a copy of the evidence or st atement filed under subrule (4) to the applicant. 
(6) 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) 
 (7) 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 co py of the owner's evidence,  file additional evidence, 
which evidence shall be confined to matters strictly in reply to the owner's evidence. 
(8) If the applicant files additional evidence, he sh all at the same time send a copy of it to the 
owner. 
(9) Except with the leave of the Registrar, no fu rther evidence may be filed by either party. 
(10) After the completion of the filing of evid ence, the Registrar shall fix a date, time and 
place for the hearing and shall notify the parties in writing accordingly. 
(11) If the Registrar allows the variation or rectification, he shall publish a notice in the 
official journal containing the following information-  IP/N/1/HKG/T/5 
 Page 17 
 
 
 (a) in the case of an application for the variation of the registration of a trade mark, a 
description of the variation made; and 
(b) in the case of an application for the rectification of an error or omission in the register, 
such matters as the Registrar considers n ecessary to identify the rectification made. 
 
Interventions 
 
Section: 51 Application for leave to intervene 
(Form T6)(Fee No. 16) 
(1) 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 th e nature of his interest, and the 
Registrar may refuse such leave or grant leave on su ch terms (including any undertaking as to costs) 
as he thinks fit. 
(2) Any person applying for leave to interven e under this rule shall send a copy of the 
application to each party to the proceedings. 
(3) Any person granted leave to intervene sh all, subject to any terms imposed by the 
Registrar, be treated as a party to the proceedings.  
PART 7 
OTHER PROCEEDINGS AFFECTING REGISTRATION 
 
Disclaimers, limitations and conditions 
 
Section: 52 Addition of discla imer, limitation or condition 
(s. 15 of the Ordinance) 
(1) The owner of a registered trade mark may by filing a notice in writing-  
(a) disclaim any right to the exclusive use of any specified element of the trade mark; or 
(b) agree that the rights conferred by the registra tion shall be subject to a specified territorial 
or other limitation or condition. 
(2) On receipt of a notice under subrule (1),  the Registrar shall publish a notice of the 
disclaimer, limitation or condition in the official journal. 
(3) The Registrar shall enter in  the register the relevant particulars of any disclaimer, 
limitation or condition notifie d to him under this rule. 
 
Merger 
 
Section: 53 Merger of separate registrations 
(s. 51(1)(c) of the Ordinance)(Form T4) 
(1) 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. 
(2) 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- 
(a) are in respect of the same trade mark; and (b) provide the same protection under the Ordinance (for example, for protection as a 
certification mark). 
(3) A merged registration shall be subject to the same disclaimers, limitations and conditions 
to which each of the original registrations was subject. 
(4) Where 2 or more registrations are merged, the Registrar shall enter in the register in 
relation to the merged registration the same particul ars as were registered in relation to each of the 
original registrations. 
(5) Where the separate registrations bear different dates of registration, th e date of registration 
of the merged registration shall be the latest of those dates. IP/N/1/HKG/T/5 
Page 18  
 
 Alteration 
 
Section: 54 Alteration of registered trade mark 
(s. 55 of the Ordinance)(Forms T5B & T5S) 
(1) A request under section 55 of the Ordinance to alter a registered trade mark shall be filed 
on the specified form. 
(2) The Registrar may at any time require the ow ner of the registered trade mark to file 
reasons for and evidence in support of the request. 
(3) Where the Registrar proposes to allow the a lteration, he shall publish a notice of the 
alteration in the official journal, which notice sh all include a representation of the trade mark as 
proposed to be altered in the register. 
(4) Subject to rule 55, where a request is filed under this rule, the Registrar may- 
(a) allow the alteration (if he is satisfied th at it complies with section 55 of the Ordinance); 
(b) allow the alteration in part (if he is satis fied that only a part of the alteration complies 
with section 55 of the Ordinance); or 
(c) disallow the alteration (if he is satisfied that it does not comply with section 55 of the 
Ordinance). 
(5) Where the Registrar allows the alteration in w hole or in part, he shall make the appropriate 
entry in the register. 
 
Section: 55 Notice of objection 
(s. 55(3)(c) of the Ordinance)(Form T6) 
(Fee No. 17) 
(1) 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. 
(2) The notice of objection shall include a statement of the grounds of objection, which 
statement shall, in particular, explain how the object or 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. 
(3) 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.  
Surrender 
 
Section: 56 Surrender of registered trade mark 
(s. 56 of the Ordinance)(Form T9) 
(1) The owner of a registered trade mark may su rrender the registration of the trade mark by 
filing a notice of surrender on the specified form. 
(2) The notice shall- 
(a) state whether the re gistration is surrendered in respect of all of the goods or services for 
which the trade mark is registered or in r espect of only certain of those goods or services; 
(b) 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; 
(c) give the name and address of each other pers on having a registered interest or any other 
right in the trade mark; and 
(d) certify, in respect of every such person, that the person- 
(i) has been sent not less than 3 months' no tice of the owner's intention to surrender 
the registration; or (ii) is not affected or, if affected, consents to the surrender. 
 
  IP/N/1/HKG/T/5 
 Page 19 
 
 
 Section: 57 Effect and publication of surrender 
(s. 56 of the Ordinance) 
(1) 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. 
(2) A surrender takes effect on the date of receipt by the Registrar of a notice that complies 
with rule 56. 
(3) 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. 
 
Change of classification of goods or services 
 
Section: 58 Registrar may am end entries in the register 
(s. 58(1) & (2) of the Ordinance) 
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- 
(a) reclassify the specification of a regist ered trade mark that is not founded on the 
classifications of the International Classification to one that is founded on such classifications; or 
(b) implement any amendment to, or substitution fo r, the classifications of the International 
Classification, 
make such amendments to the entries in the regi ster as he considers necessary for the purposes of 
reclassifying the specification of any registered trade mark. 
 
Section: 59 Notice to owner of trade mark 
(s. 58(3)(a) & (c) of the Ordnance) 
(1) The Registrar shall, before he amends any entry in the register under rule 58, send to the 
owner of the registered trade mark in questi on a notice informing him of the proposals for 
amendment. 
(2) The notice shall include a stat ement informing the owner that- 
(a) he may file written objections to the proposal s, within 3 months after the date of the 
notice, stating the grounds of his objections; and 
(b) if no written objections are filed within the period specified in paragraph (a), the 
Registrar will publish the proposals in the o fficial journal and the owner will not be 
entitled to make any objections to the proposals upon such publication. 
 
Section: 60 Publication of proposals 
(s. 58(3)(b) of the Ordinance) 
(1) 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. 
(2) If the owner files written objections within the period specified in rule 59(2)(a), the 
Registrar shall consider the objections and shall eith er abandon the proposals (if he is satisfied that the 
objections have merit) or, where he has amended th e proposals, publish the proposals, as amended, in 
the official journal. 
 
   IP/N/1/HKG/T/5 
Page 20  
 
 Section: 61 Notice of opposition 
(s. 58(3)(d) of the Ordinance)(Form T6) 
(Fee No. 18) 
(1) 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. 
(2) The notice of opposition shall include a st atement of the grounds of opposition, which 
statement shall, in particular, explain how the oppone nt 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. 
(3) 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. 
(4) The Registrar may require or admit evid ence directed to the questions in issue. 
(5) If no notice of opposition is filed within the pe riod 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. 
 
PART 8 
REGISTRABLE TRANSACTIONS 
 
Section: 62 Application or notice to  register registrable transaction 
(ss. 29 & 31(3) of the Ordinance)(Forms T10 & T11)(Fee No. 19) 
(1) An application under section 29 of the Ordina nce 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. 
(2) Where the registrable transaction is an assignment, the application or notice shall either be 
signed by or on behalf of the parties to the as signment or be accompanied by such documentary 
evidence as suffices to establish the assignment. 
(3) 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. 
(4) 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 both the personal 
representative and the beneficiary or be accompan ied by such documentary evidence as suffices to 
establish the transaction. 
(5) Where the registrable transaction relates to an order of a court or an authority recognized 
by the Registrar as a competent authority, the app lication or notice shall be accompanied by such 
documentary evidence as suffices to establish the transaction. 
 
Section: 63 Entry in the register of pa rticulars of registrable transaction 
(ss. 29 & 31(3) of the Ordinance) 
(1) 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- 
(a) in the case of an assignment of the trade mark or application- 
(i) the name and address of the assignee; and 
(ii) the date of the assignment; 
(b) in the case of an assignment of any right in the trade mark or application- 
(i) the name and address of the assignee; (ii) the date of the assignment; and (iii) a description of the right assigned; 
(c) in the case of a grant of a licence under the trade mark or application-  IP/N/1/HKG/T/5 
 Page 21 
 
 
 (i) the name and address of the licensee; 
(ii) where the licence is an exclusive licence, that fact; (iii) where the licence is limited, a description of the limitation; and 
(iv) 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; 
(d) in the case of the grant of any security inter est over the trade mark or application, or over 
any right in or under the trade mark or application- 
(i) the name and address of the grantee; (ii) the nature of the interest (whether fixed or floating); and (iii) the extent of the security and the right in or under the trade mark or application 
that is secured; 
(e) in the case of the making by personal repr esentatives 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- 
(i) 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; and 
(ii) the date of the assent; and 
(f) 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- 
(i) the name and address of the transferee; (ii) the name of the court or other competent authority; (iii) the date of the order; and 
(iv) where the transfer is in respect of a right in the trade mark or application, a 
description of the right transferred. 
(2) In each case, there shall be entered in the register the date on which the entry is made. 
 
Section: 64 Request to amend or  remove registered particulars 
(ss. 29(5) &(6) & 31(3)  of the Ordinance) 
(Forms T10 & T11) 
(1) The Registrar may, on the filing of a re quest made on the specified form, amend or 
remove any registered particulars relating to- 
(a) a licence under a registered trade mark or application for registration of a trade mark; (b) a security interest over a regi stered trade mark or application for registration of a trade 
mark; or 
(c) a security interest over any right in or unde r a registered trade mark or application for 
registration of a trade mark. 
(2) 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 gr antor and grantee of the licence or security interest 
or be accompanied by such documentary ev idence as suffices to establish the alteration. 
(3) 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 ev idence as suffices to establish that the registered 
particulars have ceased to have effect. 
(4) 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 th e entry relating to the alteration is made. 
 
PART 9 
CORRECTION OF THE REGISTER 
 
Section: 65 Request to change name or address, etc., recorded in the register 
(s. 57(5) of the Ordinance)(Form T5) 
(1) The Registrar may, on the filing of a request made on the specified form by- 
(a) the owner of a registered trade mark; IP/N/1/HKG/T/5 
Page 22  
 
 (b) a licensee of a registered trade mark; or 
(c) any person having an interest in or charge on a registered trade mark the particulars of 
which have been registered un der rule 63 or 64, enter any ch ange in his name or address, 
or in any other particulars identifying su ch person, as recorded in the register. 
(2) The Registrar may at any time require a pers on making a request under this rule to file 
reasons for and evidence in support of the request. 
 
Section: 66 Correction of errors or omissions in the register 
(s. 57(6) of the Ordinance) 
(1) Where the Registrar proposes to correct any error or omission in the register under section 
57(6) of the Ordinance (which authorizes the correc tion of errors or omissions attributable to the 
Registrar or the Registry), he shall send a notice of the proposed correction to any person who appears 
to him to be concerned. 
(2) Any person to whom a notice is sent under subrule (1) may, within 3 months after the date 
of the notice, file written objections to the proposed correction, stating the grounds of his objections. 
(3) Where any person to whom a notice is sen t under subrule (1) files written objections 
within the period specified in subrule (2), the Regi strar shall consider the objections and shall either 
abandon the proposal (if he is satisfied that the obj ections have merit) or correct the register as 
proposed (if he is satisfied that the objections are without merit). 
(4) 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. 
 
Section: 67 Removal of matter from the register 
(s. 57(7) of the Ordinance)(Form T6) 
(Fee No. 20) 
(1) Where the Registrar proposes to remove any matter from the register under section 57(7) 
of the Ordinance (which authorizes the removal of ma tter that appears to the Registrar to have ceased 
to have effect), he shall, before he  removes that matter from the register- 
(a) where he considers it appropriate to do so, publ ish a notice of the proposal for removal in the 
official journal; and (b) 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. 
(2) Where the Registrar publishes a notice unde r 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. 
(3) The notice of opposition shall include a statement of the grounds of opposition. 
(4) 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. 
(5) Where the Registrar sends any person a no tice under subrule (1)(b), that person may, 
within 3 months after the date of the notice- (a) file written objections to the proposed removal; or (b) file a request for a hearing. 
(6) If the Registrar is satisfied, after consid ering any opposition and objections, that the matter 
has not ceased to have effect, he shall not remove it from the register. 
(7) 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. 
 
   IP/N/1/HKG/T/5 
 Page 23 
 
 
 PART 10 
INSPECTION OF REGISTER, INSPECTION OF DOCUMENTS AND 
PROVISION OF INFORMATION 
 
Section: 68 Inspection of register 
(s. 68 of the Ordinance) 
The register shall be open for public inspecti on at the Registry on the business days and 
during the normal business hours of the Registry. 
 
Section: 69 Inspection of documents 
(1) This rule applies to any of the fo llowing documents kept at the Registry- 
(a) a notice of opposition to the registration of a trade mark filed under rule 16; (b) a counter-statement filed under rule 17; 
(c) a notice of objection to the amendment of an  application for registration of a trade mark 
filed under rule 26; 
(d) an application for the revocation of the regi stration of a trade mark filed under rule 36; 
(e) a counter-statement filed under rule 37; (f) an application for the revocation of the regi stration of a trade mark, defensive trade mark, 
collective mark or certification mark filed under rule 40; 
(g) a counter-statement filed under rule 41; (h) an application for a declaration of invalidit y of the registration of a trade mark, collective 
mark or certification mark filed under rule 46; 
(i) an application for the variation of the registration of a trade mark filed under rule 
48(1)(a); 
(j) an application for the rectification of an e rror or omission in the register filed under rule 
48(1)(b); 
(k) a counter-statement filed under rule 50(3); (l) an application for leave to intervene filed under rule 51; (m) a request to alter a registered trade mark filed under rule 54; 
(n) a notice of objection to the alteration of the registration of a trade mark filed under rule 
55; 
(o) a notice of surrender filed under rule 56; (p) a notice of opposition to the amendment of th e specification of a registered trade mark 
filed under rule 61; 
(q) an application or notice to register partic ulars of a registrable transaction relating to a 
registered trade mark or an application for registration of a trade mark filed under rule 
62(1); 
(r) any documentary evidence filed unde r rule 62(2), (3), (4) or (5); 
(s) a request to amend or remove registered particulars relating to a licence or security 
interest filed under rule 64(1); 
(t) any documentary evidence filed under rule 64(2) or (3); 
(u) a notice of opposition to the removal of matt er from the register filed under rule 67(2); 
(v) any regulations governing the use of a collective mark filed under rule 100; (w) any regulations governing the use of a certification mark filed under rule 101; 
(x) any amendment to the regulations governing the use of a collective mark or certification 
mark filed under rule 102(1); 
(y) 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 
(z) a notice of opposition or counter-stateme nt filed, whether before or after the 
commencement date, in relation to an appli cation for registration of a mark under the 
repealed Ordinance that is pending on the commencement date. IP/N/1/HKG/T/5 
Page 24  
 
 (2) The Registrar shall, on the request of an y 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. 
(3) 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. 
(4) Notwithstanding subrules (2) and (3), the Registrar shall not be obliged to permit the 
inspection of any document under this rule until he h as completed all procedures that he is required or 
authorized to carry out under the Ordinance or  these Rules in connection with that document. 
(5) Except in relation to the documents referred to in subrule (1)(z), nothing in this rule shall 
be construed as imposing on the Registrar a ny duty of making available for inspection- 
(a) any document filed at or sent to the Re gistry before the commencement date; or 
(b) any document filed at or sent to the Regist ry on or after the commencement date that 
relates to an application for registration of a mark under the old law. 
 
Section: 70 Supply of copies of entries, etc. 
(ss. 69 & 79 of the Ordinance)(Form T14) 
(Fee Nos. 21, 22 & 23) 
(1) The Registrar may, on the filing of an application made on the specified form and 
payment of the applicable fee, supply the pers on making the application with, as the case may be- 
(a) a certified or uncertified copy of an entry in the register; (b) a certified or uncertified extract from the register; or (c) a certified or uncertified copy of any application for registration of a trade mark filed 
under these Rules and kept by the Registry. 
(2) 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 pr ovides that a certificate is prima facie evidence 
of the matters certified). 
 
Section: 71 Supply of list of pending a pplications or regis tered trade marks 
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- 
(a) all applications made by an y person identified in the request that are pending on the date 
of the request; or 
(b) all registered trade marks that are owned by  a registered owner identified in the request. 
 
Section: 72 Official search of records for particular trade marks 
(Forms T1 & T1S)(Fee No. 24) 
(1) Any person may request the Registrar to cause a search to be made in respect of goods or 
services specified in the request and classified in any one or more classes of the International 
Classification to ascertain whether any trade mark is on record as at the date of the search (whether 
registered or pending registration) that resembles the trade mark in respect of which the request is 
made. 
(2) A request under this rule shall be filed on the specified form and shall be accompanied by 
a representation of the trade mark in respect of which the request is made. 
(3) On receipt of a request under this rule and payment of the applicable fee, the Registrar 
shall cause the search to be made and shall provide the results of the search to the person making the request. 
 
   IP/N/1/HKG/T/5 
 Page 25 
 
 
 Section: 73 Preliminary advice by the Registrar 
(s. 72 of the Ordinance)(Forms T1 & T1S) 
(Fee No. 25) 
(1) Any person who proposes to apply for the regi stration of a trade ma rk may apply to the 
Registrar for advice as to whether the trade mark app ears to the Registrar prima facie to be capable of 
distinguishing goods or services of one undertaking from those of other undertakings within the 
meaning of section 3(1) of the Ordinance. 
(2) An application under this rule shall be f iled on the specified form, shall be accompanied 
by a representation of the trade mark in question and shall specify the class or classes of goods or 
services of the International Classification in resp ect of which it is proposed to be registered. 
(3) For the purposes of section 72(3) of the Or dinance (which deals with the repayment of 
fees), any applicant for registration of a trade ma rk to whom the Registrar has given notice of 
objection under that section and who wishes to be repa id the fees paid for the filing of the application 
for registration must file a notice of withdrawal in  accordance with rule 22 within 6 months after the 
date of the Registrar's notice of objection; otherwise the fees are not repayable.  
PART 11 
PROCEEDINGS BEFORE THE REGISTRAR 
 
Hearings 
 
Section: 74 Hearings before the Registrar 
(s. 70 of the Ordinance) (Form T12) (Fee No. 26) 
(1) This rule applies where the Registrar is re quired by section 70 of the Ordinance to give a 
party to proceedings before him an opportunity to be heard. 
(2) 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 h earing, he must file a request for a hearing within 1 
month after the date of the notice. 
(3) 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) 
(a) fix a date, time and place for the hearing; and (b) send a notice of the date, time and place fixed for the hearing to each party to the 
proceedings. 
(4) The Registrar may in any other case, on his own initiative- 
(a) fix a date, time and place for a hearing; and (b) send a notice of the date, time and place fixed for the hearing to each party to the 
proceedings. 
(5) 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 ma y be treated as not intending to appear at the 
hearing, and the Registrar may act accordingly. 
(6) 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) 
 
Section: 75 Registrar not required to  hold hearings in certain cases 
The Registrar may decide a matter without a hearing if- 
(a) the Registrar reasonably believes th at no party wishes to be heard; or 
(b) at least one of the following circumstanc es applies in relation to each party notified of 
the hearing in accordance with these Rules- 
(i) the party has not indicated to the Registrar that he intends to appear at the hearing; IP/N/1/HKG/T/5 
Page 26  
 
 (ii) the party has informed the Registrar that he does not intend to appear at the 
hearing; or (iii) the party does not attend the hearing. 
 
Section: 76 Conduct of hearings 
(1) A party, or his representative, as the case  may be, may attend a hearing in person or by 
such means as the Registrar allows. 
(2) A party may make representations in  writing before or during a hearing. 
(3) The Registrar may adjourn a hearing by no tifying each party to the hearing accordingly. 
(4) Subject to these Rules, the Registrar may give any direction that is reasonably necessary 
for the conduct of the hearing. 
 
Section: 77 Hearings to be public 
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. 
 
Section: 78 Language of hearings 
(1) 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. 
(2) The Registrar may require a party who gi ves 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. 
 
Evidence 
 
Section: 79 Evidence in proceedings before the Registrar 
(1) Where under the Ordinance or these Rules ev idence may be admitted by the Registrar in 
any proceedings before him, the evidence shall be file d by way of a statutory declaration or affidavit. 
(2) The Registrar may in any particular case ta ke oral evidence in addition to any evidence 
filed by way of a statutory declaration or affidavit. 
(3) The Registrar may allow any witness to be cross-examined on his statutory declaration, 
affidavit or oral evidence. 
 
Section: 80 Statutory decl arations and affidavits 
(1) For the purposes of any proceedings before the Registrar, a statutory declaration or 
affidavit may be made and subscribed as follows- 
(a) 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 (b) in any place outside Hong Kong, before any c ourt, judge, justice of the peace, notary, notary 
public, consul or other person authori zed by law to administer an oath or to exercise notarial functions 
in that place for the purpose of any legal proceeding. 
(2) A person signing a statutory declaration or a ffidavit shall state on it the capacity in which 
he makes the declaration or affidavit. 
(3) 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  IP/N/1/HKG/T/5 
 Page 27 
 
 
 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. 
 
Section: 81 Photographs of exhibits 
(1) 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. 
(2) 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. 
(3) A party who files a photograph under subrul e (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 inspec tion by any other party to the proceedings. 
(4) 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. 
 
Section: 82 Leave to file evidence 
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. 
 
Substitution of parties 
 
Section: 83 Application for leav e to be substituted for party 
(1) Where a party to any proceedings before th e Registrar is a body corporate or other legal 
entity and the body corporate or legal entity has b een 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. 
(2) Where a party to any proceedings before th e 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 pr oceedings may apply to the Registrar in writing for 
leave to be substituted for that party, stating the na ture of his interest, and the Registrar may refuse 
such leave or grant leave on such terms as he thinks fit. 
(3) 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. 
 
Costs 
 
Section: 84 Security for costs 
(s. 87(3) of the Ordinance) 
(1) If any person who neither resides nor  carries on business in Hong Kong files- 
(a) a notice of opposition to the registration of a trade mark under rule 16; (b) a counter-statement under rule 17; 
(c) a notice of objection to the amendment of an  application for registration of a trade mark 
under rule 26; 
(d) an application for the revocation of the registration of a trade mark under rule 36; (e) an application for the revocation of the registration of a trade mark, defensive trade 
mark, collective mark or certification mark under rule 40; 
(f) an application for a declaration of invalidity of the registration of a trade mark, collective 
mark or certification mark under rule 46; IP/N/1/HKG/T/5 
Page 28  
 
 (g) an application for the variation of the regist ration of a trade mark or for the rectification 
of an error or omission in the register under rule 48; 
(h) an application for leave to intervene under rule 51; (i) a notice of objection to the alteration of the registration of a trade mark under rule 55; (j) an application for leave to be substituted for a party under rule 83; or 
(k) 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. 
(2) If the Registrar requires security to be give n by any person and that person fails to give 
security as required, the Registrar may treat the notice of opposition, notice of objection, 
counterstatement or application in question as abandoned or withdrawn. 
(3) The Registrar may at any stage in the proceed ings require further security to be given at 
any time before giving his decision in the case. 
(4) This rule is without prejudice to the Regi strar's power under rule 51(1) to require an 
undertaking as to costs in relation to an  application for leave to intervene. 
 
Section: 85 Taxation of costs 
(Fee No. 27) 
(1) The Registrar shall have the power to tax any costs awarded by him in any proceedings 
before him. 
(2) In the event of an opposition to the registration of a trade mark being uncontested by the 
applicant for registration, the Registrar in decidi ng 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. 
 
Case management conference and pre-hearing review 
 
Section: 86 Case management conference 
(1) At any stage of any proceedings before him, the Registrar may direct that the parties to the 
proceedings attend a case management conference wh ere 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. 
(2) The Registrar shall give the parties at least 14 days' notice of the date, time and place of 
the case management conference. 
 
Section: 87 Pre-hearing review 
(1) Before hearing any party that desires to be heard in any proceedings before him, the 
Registrar may direct that the parties to the proceed ings attend a pre-hearing review at which he may 
give such directions as to the conduct of the hearing as he may think fit. 
(2) The Registrar shall give the parties at least 7 days' notice of the date, time and place of the 
pre-hearing review. 
 
General 
 
Section: 88 Directions on procedure 
(1) The Registrar may, at the request of a part y to any proceedings before him or on his own 
initiative, give a direction in relation to the procedure in those proceedings. 
(2) A direction given under subrule (1) must  not be inconsistent with these Rules. 
(3) The Registrar shall not give a direction under subrule (1) unless-  IP/N/1/HKG/T/5 
 Page 29 
 
 
 (a) he is reasonably satisfied that the parties to the proceedings have been notified of the 
proposed direction; 
(b) he has given the parties to the proceedings a reasonable opportunity to make 
representations concerning th e proposed direction; and 
(c) he is reasonably satisfied that th e proposed direction is appropriate. 
(4) For the purposes of subrule (3)(b), the re presentations may be made in writing or at a 
hearing or by such other means as the Registrar reasonably allows. 
 
Section: 89 Directions to file docu ments, information or evidence 
At any stage of any proceedings before him, the Registrar may direct that such documents, 
information or evidence as he may reasonably requir e shall be filed within such period as he may 
specify. 
 
Section: 90 Stay of proceedings 
The Registrar may, where he considers it appropr iate 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. 
 
Section: 91 Decision of Registrar 
(Form T12) (Fee No. 28) 
(1) Where the Registrar has made a decision in any proceedings before him, he shall send a 
notice to each party to the proceedi ngs informing him of the decision. 
(2) Where a statement of the reasons for the deci sion is not included in the notice, any party 
may, within 1 month after the date of the notice, f ile 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 fo r the decision to each party to the proceedings. 
(3) 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. 
(4) For the purpose of any appeal against the Registrar's decision, the decision shall be 
deemed to have been made on- 
(a) the date on which the notice of decision is sent under subrule (1); or (b) where a statement of reasons is sent under s ubrule (2), the date on which the statement of 
reasons is sent. 
 
PART 12 
AMENDMENT OF DOCUMENTS, RECTIFICATION OF IRREGULARITIES 
AND EXTENSION OF TIME LIMITS 
 
Section: 92 Amendment of documents 
Subject to any provisions of the Ordinance or these Rules relating to the amendment of 
applications for registration of trade marks a nd other documents, any document filed with the 
Registrar may, if the Registrar thinks fit,  be amended on such terms as he may direct. 
 
Section: 93 Rectificat ion of irregularities 
(1) Subject to subrule (2), any irregularity in procedure in or before the Registry may be 
rectified on such terms as the Registrar may direct. 
(2) No period of time may be extended under this rule. 
 
   IP/N/1/HKG/T/5 
Page 30  
 
 Section: 94 Extension of time limits 
(Form T13) (Fee No. 29) 
(1) 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- 
(a) prescribed by these Rules; or (b) 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. 
(2) 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), 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. 
(3) Where- 
(a) the period within which any party to an y proceedings before the Registrar may file 
evidence under these Rules is to begin on th e expiry of any period during which any 
other party may file evidence; and 
(b) 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 menti oned 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 no tify each party to the proceedings of the 
relevant date. 
(4) 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 ex tend the period of time in question on such terms, 
if any, as he may direct. 
(5) Where it appears to the Registrar that- 
(a) in the absence of a direction under this subrul e, a person is likely to fail to comply with a 
time limit imposed by the Ordinance or these Rules; and 
(b) if the failure were to occur, it would be attr ibutable 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. 
(6) Where the Registrar grants an extensi on of time in opposition proceedings, he may 
thereafter, if he thinks fit, without hearing the pa rty 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. 
(7) A period of time may be extended under this rule either before or after the period in 
question has expired. 
 
Section: 95 Non-extendible time limits 
(1) The periods of time specified in the following rules may not be extended under rule 94(1), 
namely- 
(a) rule 11(2) (time for remedying deficiencies in an application for registration of a trade 
mark); 
(b) rule 13(2) (time for filing representations or a request for amendment) (but see rule 
13(3)); (L.N. 97 of 2003) 
(c) 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) 
(d) rule 14 (prescribed period under section 42(3)(b) of the Ordinance); 
(e) rule 16(1) (time for filing a notice of opposition) (but see rule 16(4)); (L.N. 97 of 2003) (f) rule 17(1) (time for filing a counter-statement) (but see rule 17(3)); (g) rule 26(2) (time for filing a notice of objection); (h) rule 32(1) and (3) (time for renewing registration); (i) rule 33(2) (time for renewing registration);  IP/N/1/HKG/T/5 
 Page 31 
 
 
 (j) rule 35(1) (time for restoring registration); 
(k) rule 37(1) (time for filing a counter-statement); (l) rule 41(1) (time for filing a counter-statement); (m) rule 50(3) (time for filing a counter-statement); (n) rule 55(1) (time for filing a notice of objection); 
(o) rule 61(1) (time for filing a notice of opposition); 
(p) rule 67(2) (time for filing a notice of opposition); (q) rule 73(3) (time for filing a notice of withdrawal); (r) rule 74(2) (time for filing a request for a hearing); (s) rule 102(3) (time for filing a notice of opposition); 
(t) rule 107(3) (time for filing an address for service); 
(u) rule 121(1)(a) (time for filing a notice of opposition) (but see rule 121(2)); and (L.N. 97 
of 2003) 
(v) rule 121(1)(b) (time for filing a counter-statement) (but see rule 121(3)). (L.N. 97 of 
2003) 
(2) The period of time for filing anything requi red to be included with or to accompany any 
document referred to in subrule (1) or to be file d at the same time as that document may not be 
extended under rule 94(1). 
(3) 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) 
 
Section: 96 Extension of time limits in  the case of an interruption in the 
Registry's operations 
(1) Where on any day there is an event or ci rcumstances 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. 
(2) 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 othe r thing with the Registrar expires on a day so 
notified, the period shall be extended to the first da y next following (not being an excluded day) that 
is not so notified. 
(3) Any notification given by the Registrar under this rule shall be posted in the Registry. 
(4) In this rule, "excluded day" (
□□□ ) means a day that is not a business day of the Registry. 
 
PART 13 
SERIES TRADE MARKS, DEFENSIVE TRADE MARKS, 
COLLECTIVE MARKS AND CERTIFICATION MARKS 
 
Section: 97 Application for registr ation of series of trade marks 
(s. 51(1)(a) & (d) of the Ordinance) 
(Forms T2, T2A, T2S, T3 & T3S) (Fee Nos. 30 & 31) 
(1) 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. 
(2) The application shall be accompanied by a representation of each trade mark claimed to be 
in the series. 
(3) The Registrar shall accept an application file d under subrule (1) if he is satisfied that- 
(a) the trade marks in respect of which the app lication is made constitute a series within the 
meaning of section 51(3) of the Ordinance; 
(b) the series consists of not more than 4 trade marks; and 
(c) the application satisfies the requirements for registration. 
(4) 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. IP/N/1/HKG/T/5 
Page 32  
 
 (5) 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. 
(6) Rule 27(3), (4) and (5) applies to the division of an application under this rule. 
 
Section: 98 Request to dele te trade mark in series 
(Forms T5B & T5S) 
(1) 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. 
(2) 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. 
 
Section: 99 Application for registr ation of defensive trade mark 
(s. 60 of the Ordinance) (Forms T2, T2A & T2S) (Fee No. 32) 
(1) An application for the registration of a tr ade mark as a defensive trade mark under section 
60 of the Ordinance shall be filed on the specified form. 
(2) Within 9 months after the date of the application, the applicant shall file- 
(a) 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 declarati on or affidavit made by the applicant or some other 
person approved for the purpose by the Registrar; and 
(b) such evidence, if any, as the applicant may desire to adduce in support of the application. 
(3) 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. 
(4) The applicant may, within such time as the Registrar may allow, whether after request 
made by the Registrar or otherwise, file such ot her 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. 
(5) 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. 
 
Section: 100 Application for registration of collective mark (ss. 6 & 7 of Sch. 3 to the Ordinance) 
(1) For the purposes of section 6(3) of Schedul e 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. 
(2) The Registrar may send to the applicant any observations that he may wish to make with 
regard to the application or the suitability of th e 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. 
(3) For the purposes of section 7 of Schedule 3 to the Ordinance and these Rules- 
(a) the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the 
circumstances, shall be treated as being th e period specified by the Registrar for the 
purposes of section 7(2) of that Schedule; and 
(b) 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. 
 
   IP/N/1/HKG/T/5 
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 Section: 101 Application for registration of certification mark 
(ss. 7 & 8 of Sch. 4 to the Ordinance) 
(1) For the purposes of section 7(3) of Schedul e 4 to the Ordinance, an applicant for 
registration of a certification mark shall file a c opy of the regulations governing the use of the mark 
within 9 months after the date of the application for registration. 
(2) The regulations shall be accompanied by ev idence 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 app licant or some other person approved for the purpose 
by the Registrar. 
(3) The Registrar may send to the applicant any observations that he may wish to make with 
regard to the application, the suitability of the regul ations 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. 
(4) For the purposes of section 8 of Schedule 4 to the Ordinance and these Rules- 
(a) the period prescribed by rule 14(1), (2) or (3), whichever is applicable in the 
circumstances, shall be treated as being th e period specified by the Registrar for the 
purposes of section 8(2) of that Schedule; and 
(b) 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. 
 
Section: 102 Amendment of regulations  governing use of co llective mark or 
certification mark 
(s. 10 of Sch. 3 & s. 11 of Sch. 4 to the Ordinance) 
(Form T6) (Fee No. 33) 
(1) 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. 
(2) Where the Registrar considers it appropriate to do so, he shall publish a notice of the 
amendment in the official journal, which no tice shall indicate where copies of the amended 
regulations may be inspected. 
(3) Where the Registrar publishes a notice unde r subrule (2), any person claiming to be 
affected by the amendment may, within 3 months af ter the date of publication of the notice, file a 
notice of opposition on the specified form. 
(4) The notice of opposition shall include a st atement of the grounds of opposition, which 
statement shall, in particular, explain how the oppone nt would be affected by  the amendment and why 
in the opponent's opinion the amendment would be contra ry to section 6(1) or (2) of Schedule 3 to the 
Ordinance (which deals with collective marks) or s ection 7(1) or (2) of Schedule 4 to the Ordinance 
(which deals with certification marks), as the case may be. 
(5) 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. 
(6) Where a notice of opposition is filed within  the period specified in subrule (3), the 
Registrar may- 
(a) if he is satisfied that the opposition has merit, refuse to accept the amendment; or (b) if he is satisfied that the opposition is w ithout merit and that the amendment should be 
accepted, accept the amendment as proposed by the owner. 
(7) 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.   
 
  IP/N/1/HKG/T/5 
Page 34  
 
 PART 14 
AGENTS 
 
Section: 103 Proof of authoriz ation of agent may be required 
(s. 88 of the Ordinance) 
(1) 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 cas e require the personal signature or presence of the 
agent or the person authorizing him to act as agent. 
(2) The Registrar may by notice in writing require  any person who claims to act as an agent to 
produce evidence of his authority. 
 
Section: 104 Registrar may refus e to deal with certain agents 
(s. 88 of the Ordinance) 
The Registrar may refuse to recognize as an agent in respect of any business under the 
Ordinance or these Rules- 
(a) a person who has been convicted of a criminal offence; 
(b) a person whose name has been struck off the roll of barristers or roll of solicitors kept 
under and in accordance with the Legal Practiti oners Ordinance (Cap 159) or any person 
who has been suspended from acting as a barrister or solicitor; 
(c) 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); 
(d) a person against whom a disqualification order has been made under section 168E, 168F, 
168G, 168H, 168J or 168L of the Companies Ordinance (Cap 32); 
(e) a person against whom an order has been  made under section 23(1)(a) or 24(1) of the 
Securities (Insider Dealing) Ordinance (Cap 395); or 
(f) a person against whom an order has b een made under section 214(2)(d), 257(1)(a), 
258(1) or 303(2)(a) of the Securities and Futures Ordinance (Cap 571). 
 
PART 15 
ADDRESS FOR SERVICE 
 
Section: 105 Filing of address for service 
(1) An address for service shall be filed by every person who files- 
(a) an application for registration of a trade mark under rule 6; (b) a notice of opposition to the registration of a trade mark under rule 16; (c) a counter-statement under rule 17; (d) a notice of objection to the amendment of an  application for registration of a trade mark 
under rule 26; 
(e) an application for the revocation of the registration of a trade mark under rule 36; (f) a counter-statement under rule 37; (g) an application for the revocation of the registration of a trade mark under rule 40; (h) a counter-statement under rule 41; (i) an application for a declaration of invalidity of the registration of a trade mark under rule 
46; 
(j) an application for the variation of the regist ration 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; 
(k) a counter-statement under rule 50(3); (l) an application for leave to intervene under rule 51; 
(m) a notice of objection to the alteration of a registered trade mark under rule 55; 
(n) a notice of opposition to the amendment of th e specification of a registered trade mark 
under rule 61;  IP/N/1/HKG/T/5 
 Page 35 
 
 
 (o) an application or notice to register partic ulars of a registrable transaction relating to a 
registered trade mark or an application for registration of a trade mark under rule 62; 
(p) a request to amend or remove registered particulars relating to a licence or security 
interest under rule 64; 
(q) a notice of opposition to the removal of any matter from the register under rule 67(2); 
(r) an application for leave to be s ubstituted for a party under rule 83; 
(s) an application for registration of a series of trade marks under rule 97; (t) an application for registration of a trade mark as a defensive trade mark under rule 99; (u) 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 
(v) any other document the specified form of  which, if any, requires the person who 
completes the form to provide an address for service. 
(2) The address for service must be a residential or business address in Hong Kong. (3) A person may file an address for service- 
(a) 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 
(b) in any other case, by notifying the Registrar in writing. 
(4) 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 documen t shall be treated as the address for service of each 
of those persons. 
(5) An applicant for registration of a trade mark may use only one address for service for the 
purposes of all proceedings before the Re gistrar concerning that application. 
(6) The owner of a registered trade mark may use only one address for service for the 
purposes of all proceedings before the Regist rar concerning that registered trade mark. 
(7) 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. 
(8) Where a person files an address for service fo r 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. 
(9) 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. 
(10) No act required or authorized by the Or dinance 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. 
 
Section: 106 Changing or wi thdrawing address for service 
(Form T5) 
(1) A person may change his address for service by- 
(a) filing the specified form; or (b) notifying the Registrar in writing. 
(2) 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). 
(3) A person may withdraw his address for service by notifying the Registrar in writing. 
 
Section: 107 Failure to file address for service 
(1) 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 owne r of a registered trade mark or a party to any IP/N/1/HKG/T/5 
Page 36  
 
 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. 
(2) For the purposes of subrule (1), the addresses are- 
(a) any previously filed address for service of the person; (b) any address of the person in Hong Kong that is shown in the register; 
(c) any residential or business addres s of the person in Hong Kong; and 
(d) any other address of the person that is known to the Registrar. 
(3) 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- 
(a) any application, notice or request filed by  that person shall be treated as abandoned or 
withdrawn; and 
(b) the person shall be deemed to have wit hdrawn from any proceedings before the Registrar 
of which he is a party. 
 
PART 16 
FILING AND SERVICE OF DOCUMENTS 
 
Section: 108 Filing of docu ments with the Registrar 
(1) Any document or other thing required or authorized by the Ordinance or these Rules to be 
filed with the Registrar must be delivered to the Registrar at the Registry during the normal business 
hours of the Registry or sent to the Registrar by post. 
(2) Sending by post shall be deemed to be e ffected 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 th ing shall be deemed to have been received at the 
time when the letter is actually received by the Registrar at the Registry. 
(3) 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. 
 
Section: 109 Electronic filing 
(1) 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 ph ysical form, the filing of an electronic record of 
that document or thing. 
(2) 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 el ectronic means to an information system designated 
by the Registrar. 
(3) The filing of an electronic record, and the sending of an electronic record by electronic 
means to the information system designated under subr ule (2), shall be subject to such terms as the 
Registrar may specify either generally by notice publis hed in the official journal or in any particular 
case by notice to the person desiring to file an electro nic record or to send an electronic record to the 
Registrar by electronic means. 
(4) Where, in accordance with this rule, a documen t or other thing in the form of an electronic 
record is sent by electronic means to the informati on system designated under subrule (2), the filing of 
that document or thing shall be deemed to be eff ected at such time as that electronic record is 
accepted by the designated information system. 
 
Section: 110 Terms for electronic filing 
(1) Without limiting the generality of rule 109(3), the Registrar may specify terms under that 
rule- 
(a) providing for the approval by the Registrar of the process that must be used to make or 
send an electronic record;  IP/N/1/HKG/T/5 
 Page 37 
 
 
 (b) providing for the approval by the Registrar of  the format or media in which an electronic 
record must be recorded or stored; 
(c) 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; 
(d) requiring any document or other thing sent to the Registrar in the form of an electronic 
record to include or be accompanied by the el ectronic signature or di gital signature of the 
person who sends it; and 
(e) 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). 
(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- 
(a) the information contained in the electronic r ecord is not capable of being displayed in a 
legible form; 
(b) the electronic record is not capable of bei ng stored in the information system designated 
under rule 109(2); 
(c) the electronic record appears to the Regist rar to be altered, damaged or incomplete; 
(d) any electronic signature or digital si gnature or other kind of authentication 
accompanying or included with the electronic record appears to the Registrar to be 
altered or incomplete; or 
(e) any term specified by the Registrar under that rule has been breached. 
 
Section: 111 Designation of electronic mail box 
(1) On the request of any person, the Registra r may designate an electronic mail box within an 
information system designated by the Registrar wh ich may be used by that person to communicate 
with the Registrar. 
(2) 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 no tice to the person for whom the electronic mail box is 
designated. 
(3) Where the Registrar designates an electroni c mail box for a person under this rule, any 
document or other thing required or authorized by  the Ordinance or these Ru les to be sent by the 
Registrar to that person shall be de emed to be properly sent if it is sent in the form of an electronic 
record to that person's designated electronic mail box. 
(4) 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. 
(5) An electronic record sent to a designate d electronic mail box shall be deemed to be 
received by the addressee at such time as the elec tronic record is accepted and recorded by that 
electronic mail box. 
 
Section: 112 Service of documents 
(1) 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- 
(a) the document or other thing may be left at , or sent by post to, the address for service of 
the person; or 
(b) 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. 
(2) Sending by post shall be deemed to be e ffected by properly addressing, preparing and 
posting a letter containing the document or other thi ng, 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. IP/N/1/HKG/T/5 
Page 38  
 
 PART 17 
MISCELLANEOUS 
 
Section: 113 Form in which the records of the Registry are kept, etc. 
(1) The Registrar shall determine the form in wh ich 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 circumstan ces in which they may be destroyed or otherwise 
disposed of. 
(2) Where the Registrar keeps a record of a doc ument or other thing in a form that differs 
from that in which the document or thing was origin ally filed with, or originally generated by, the 
Registrar, the record of that document or thing sh all be presumed, unless the contrary is shown, to 
accurately represent the information contained in the document or thing as originally filed or 
generated. 
 
Section: 114 Publication of business ho urs and business days of the Registry 
(s. 89 of the Ordinance) 
Any directions given by the Registrar under section 89 of the Ordinance (which authorizes the 
Registrar to specify the hours of business or busin ess days of the Registry) shall be posted in the 
Registry and published in the official journal. 
 
Section: 115 Publication and sale of documents 
The Registrar may arrange for the publication a nd sale of documents and information by the 
Registry on such terms as he thinks fit. 
 
Section: 116 Publication of certain court orders 
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. 
 
Section: 117 Filing of court orders, declarations and certificates 
(1) Where any order or declaration is made or any certificate is granted by the court under the 
Ordinance, the person in whose favour such order, d eclaration or certificate has been made or granted 
or, if there is more than one, such one of them as the Registrar may direct, shall file a certified copy of 
the order, declaration or certificate with the Registrar. 
(2) Where appropriate, the Registrar shall rectify the register accordingly. 
 
Section: 118 Signature of documents by partnerships, corporations, etc. 
(1) 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. 
(2) 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. 
(3) 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, mana ger, 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. 
 
    IP/N/1/HKG/T/5 
 Page 39 
 
 
 Section: 119 Change of language of proceedings 
(s. 76 of the Ordinance) 
The Registrar may, subject to th e consent of the parties concerned, give directions relating to 
the change of the language of proceedings on such terms as he may direct. 
 
Section: 120 Translations of documents, etc. 
(s. 76 of the Ordinance) 
(1) 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 th at 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. 
(2) 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 Regi strar and that is in a language other than the 
language of the proceedings, give directions as to- 
(a) the filing of the document or that part of the document in that other language; and 
(b) the filing of a translation of the document or th at part of the document into the language of the 
proceedings. 
(3) 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 transliterati on of the name in the Roman alphabet. 
(4) In the case of an application for the registrati on of a trade mark that c onsists 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 direct s, 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 th e language to which that word, letter or character 
belongs. 
(5) In the case of an application for the registrati on of a trade mark that c onsists 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 e ndorsed and signed by the applicant or his agent and 
the endorsement shall state the language to wh ich that word, letter or character belongs. 
(6) The Registrar may, in respect of any inform ation 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. 
(7) The Registrar may specify periods within wh ich translations of documents or parts of 
documents are to be provided by a party to any proceedings before the Registrar. 
 
Section: 121 Pending applications for registration 
(s. 10 of Sch. 5 to the Ordinance) (Fee No. 29) 
(1) 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) (a) the period within which a notice of opposition ma y be filed is the 3-month period beginning on the 
date of the advertisement; and 
(b) if a notice of opposition is filed, the applicant shall file the counter-sta tement within 3 months 
after the date of receipt by the applicant of the copy of the notice of opposition. 
(2) 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) IP/N/1/HKG/T/5 
Page 40  
 
 (3) 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) 
 
Section: 122 Form for convers ion of pending applications 
(s. 11(1) of Sch. 5 to the Ordinance) 
(Form T15) (Fee No. 34) 
A notice to the Registrar under section 11(1) of Schedule 5 to the Ordinance (which deals 
with transitional matters), claiming to have the re gistrability of the mark determined in accordance 
with the Ordinance, shall be filed on the specified form. 
 
Schedule: SCHEDULE 
[rules 2 & 4] 
FEES 
 
Fee   Matter or proceeding     Amount 
No. 
   
1. Application for registration of a trade mark 
(including a collective mark and a certification mark) under rule 6 $1300 for the first class of goods or 
services set out in the specification plus $650 for each additional class (if any) 
2. Request to amend application u nder rule 7(5) $650 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) 
 $3000 for the first class of goods or 
services set out in the specification plus 
$1500 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) $3000 for the first class of goods or 
services set out in the specification plus 
$1500 for each additional class (if any) 
 10. Restoration and renewal of trade mark registration 
removed from the register under rule 35  $4000 for the first class of goods or 
services set out in the specification plus $1500 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 
  IP/N/1/HKG/T/5 
 Page 41 
 
 
 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 search of records under rule 72 $200 25. Request for Registrar's preliminary advice under 
rule 73 $200 
 
26. Notice of intention to appear at hearing under rule 
74(5) (other than hearing for extension of time) $1700 
 
27. Taxation of bill of costs under rule  85 $450 for the first $15000 of the amount 
claimed plus $3 for every $100 or fraction of $100 of the amount claimed above $15000 
28. Request for a statement of the reasons for a 
decision of the Registrar under rule 91(2) $1500 
 
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) 
 $1300 for the first class of goods or 
services set out in the specification plus 
$650 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 $1500 for the first class of goods or 
services set out in the specification plus $750 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
 
 
 
__________ 
 