Table of Comparison of Trade Mark Laws

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

Definition of (Clause 3(1)) (S.1) (S.17) (15 USC § 1127) ‘trade mark’ ! any sign capable of ! any sign capable of being ! a sign used, or intended to ! includes any word, name, distinguishing represented graphically; be used, to distinguish symbol, or device or any goods/services of one capable of distinguishing goods or services dealt combination thereof, either undertaking from others; goods/ services of one with or provided in the used by a person or which capable of graphic undertaking from others. course of trade by a that person has a bona fide representation. person, from goods or intention to use in ! may consist of words services so dealt with or commerce, to identify and (including personal names), provided by any other distinguish his (Clause 3(2)) designs, letters, numerals or person. goods/services and to ! may consist of words, shape of goods or their indicate the source of the goods/services. indications, designs, packaging. (S.6) ‘Sign’ letters, numerals, ! includes the following or figurative elements, shape any combination of the ! may include non-verbal as of goods, packaging, following: well as verbal symbols, combination of colours or packaging or the overall combination of above. any letter, word, name, signature, numeral, shape of a product, colour, device, , heading, or even a smell. Comment label, ticket, aspect of packaging, shape, colour, Similar in scope with the sound or scent. other trade mark laws (“word” includes “an under comparison. abbreviation of a word”) - 2 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

‘Well known (Clause 4) (S.56) (S.60) (15 USC §1125(2)(c) as mark’ amended) ! means a mark entitled to ! means a mark entitled to ! provides, as a ground of protection under Paris protection under Paris opposition, that a well [referred to as ‘famous1 marks’] Convention as a well- Convention as a well- known mark is one which ! owner of famous mark known trade mark which known trade mark which is has acquired a reputation entitled to injunctive relief is well-known in HK; well-known in the UK; in Australia; use of which against another person’s use regardless of whether or regardless of whether or not by applicant would be in commerce of a mark or not owner of mark proprietor of mark carrying likely to cause confusion trade name which causes carrying on business in on business or has any or deception. dilution of the quality of the HK or owns goodwill in a goodwill in the UK. mark. business in HK. (S.120(3)) (15 USC §1127) ! provides for infringement ! ‘dilution’ defined as ‘the Comment of a registered trade mark lessening of the capacity of Hong Kong and UK trade by use on goods/services a famous mark to identify mark laws do not contain unrelated to the registered and distinguish goods or criteria for defining a goods/services if the services’; actionable even in ‘well-known’ mark, as registered trade mark is absence of competition, or there is yet to be an well known. likelihood of confusion, international consensus of mistake, or deception.

1 See S.43(c) Lanham Act [Non-exhaustive] Factors for determining whether a mark is distinctive and famous:— (a) the degree of inherent or acquired distinctiveness of mark; (b) the duration and extent of use of the mark in connection with the goods/services with which the mark is used; (c) duration and extent of advertising and publicity of mark: (d) geographical extent of trading area in which mark is used; (e) channels of trade for goods/services with which mark is used; (f) degree of recognition of mark in trading areas and channels of trade used by mark’s owner and person against whom the injunction is sought; (g) nature and extent of use of same or similar marks by third parties; and (h) whether mark was registered. - 3 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

a definition for "well- known marks". (S.120(4)) ! in deciding whether a TM is well-known in Australia, consider extent to which TM is known in relevant sector of public (whether as result of promotion or otherwise)

Absolute (Clause 10) (S.3) (S.39) (15 USC § 1052) grounds for • if sign does not satisfy ! “No TM by which goods of • if sign does not satisfy ! if a trade mark contains refusal requirements for a trade applicant may be requirements for a trade or consists of a sign that mark under S.1(1). distinguished from goods of mark under S.3(1). under the regulations is others shall be refused • devoid of distinctive • signs which are devoid of not to be used as a trade registration” ... unless it:— character. distinctive character mark. ! consists of immoral, • signs which serve in trade to • signs which serve in trade (S.40) deceptive, or scandalous or business to designate designate kind, quality, matter; matter which may the kind, quality, quantity, quantity, intended purpose, ! if mark cannot be disparage or falsely suggest intended purpose, value, value, geographical origin, represented graphically. a connection with persons, etc of goods/services: geographical origin, etc of (S.41(2)) living or dead, institutions, • beliefs, or national goods/services. signs customary in current ! if not capable of symbols, or bring them into • signs customary in current language or honest, distinguishing the contempt, or disrepute. language or honest, established practice of trade. applicant’s goods or ! consists of a geographical established practice of ! shape resulted from nature services. trade. of goods. indication which, when (S.42) used on wines or spirits, • ! shape necessary to obtain shape resulted from nature ! scandalous or contrary to identifies a place other than technical result. of goods. law. the origin of the goods and - 4 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

• shape necessary to obtain ! shape giving substantial is first used on or in technical result. value to goods. (S.43) connection with wines or spirits by the applicant after • shape giving substantial ! contrary to public policy or ! likely to deceive or cause WTO Agreement in force value to goods. principles of morality or confusion. in USA. • contrary to public policy likely to deceive the public. or principles of morality ! if use is prohibited by law ! consists of name, portrait, or likely to deceive the in UK. or signature identifying a public. ! if application made in bad particular living individual except by his written • if use is prohibited by law faith. consent. in UK. (S.4) ! consists of flag, coat of • if application made in bad ! if mark consists of the arms or other insignia of faith. Royal arms, principal the US or any state or • a mark consisting of the bearings of the Royal arms, municipality, or of any national flag, national representation of the Royal foreign nation, or any emblem, regional flag or Crown or flags, simulation thereof. regional emblem. representation of Her ! consists of mark which is majesty or the national flag merely descriptive or or flags of England, Wales, deceptively misdescriptive. Scotland, N. Ireland or Isle ! consists of mark which is Comment of Man. The “absolute grounds for primarily geographically refusal” set out the descriptive or deceptively conditions under which a misdescriptive except as trade mark registration indications of regional will be refused. Similar origin. (may be registrable provisions are also as certification or collective provided in the other marks) jurisdictions under comparison. - 5 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

! which is primarily merely a surname. ! subject to application for mark that has become distinctive of the applicants’ goods/services in commerce.

Relative (Clause 11) If subject mark is: (S.5) (S.44) (15 USC § 1052) grounds for ! identical to earlier trade ! identical with earlier trade ! if applicant’s mark (for ! if mark so resembles a mark refusal mark; identical mark; identical goods/services. goods) substantially registered or a mark or goods/services. trade name previously used ! identical with earlier trade identical with, or ! identical to earlier trade in the US by another and mark; similar deceptively similar to, an mark; similar which is not abandoned, as goods/services; likelihood earlier registered mark or goods/service; likelihood to be likely, when used on of confusion including application re similar of confusion. goods of the applicant, to likelihood of association. goods or closely related cause confusion, or cause ! similar to earlier trade services. ! similar to earlier trade mistake, or to deceive. mark; identical/similar ! if applicant’s mark (for mark; identical or similar goods/services; likelihood ! Proviso: subject to goods/services; likelihood services) substantially concurrent lawful use in of confusion including identical with, or of confusion. likelihood of association. commerce and if deceptively similar to, an Commissioner finds that ! identical/similar to earlier ! identical/similar to earlier earlier registered mark or confusion, mistake, or trade mark; dissimilar trade mark; dissimilar application re similar deception is not likely to goods/services; if earlier goods/services; if earlier services or closely related result Commissioner shall trade mark has reputation trade mark has reputation in goods. then prescribe conditions in HK and use of later UK and use of later mark and limitations as to mode mark would take unfair would take unfair [use of substantially or place of use for co- advantage or be advantage or be detrimental identical or deceptively existence of registrations. detrimental to distinctive to distinctive character or similar mark on dissimilar - 6 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

character or repute of repute of earlier trade mark. goods is an act of ! Restatement of Torts 1938 earlier trade mark. ! if use of later mark liable to infringement in some sets forth four factors for ! if use of subject mark be prevented by any rule of circumstances, see section determining likelihood of liable to be prevented by law e.g. law of passing-off, on ‘Infringement’, infra] confusion.2 any rule of law e.g. law of copyright, design right or passing-off, copyright or registered designs. This registered designs. This must be raised in opposition ground must be raised in proceedings (S.7 (2)). opposition proceedings. ! may be registrable on ! may be registrable on consent of owner of earlier consent of owner of trade mark. earlier trade mark unless Registrar satisfied that use of mark likely to cause confusion among the public.

Comment The “relative grounds for refusal” set out the conditions under which a

2 (a) the degree of similarity in (i) appearance (ii) pronunciation (iii) verbal translation of the pictures or designs (iv) suggestion; (b) the intent in adopting the designation; (c) the relation in use and manner of marketing; and (d) the degree of care likely to be exercised by purchasers. - 7 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

trade mark registration will be refused, mainly because of conflicts with earlier registered marks. Similar restrictions are also found in other jurisdictions.

Infringement (Clause 17) (S.10) (S.120) (15 USC § 1114) ! use of identical sign; ! use of identical sign; identical goods/services in ! substantially identical or Without consent of registrant: identical goods/services deceptively similar sign; in course of trade or the course of trade. ! use of identical sign; identical goods/services. ! to use in commerce any business. reproduction, counterfeit, similar goods/services in ! substantially identical or copy, or colorable imitation ! use of identical sign; the course of trade; likely to deceptively similar sign; of a registered mark which similar goods or services cause confusion including goods/services of same is likely to cause confusion, in course of trade or likelihood of association. description or closely mistake, or to deceive. business; likely to cause related to those confusion. ! use of similar sign, registered. ! The Restatement of Torts identical or similar goods in (Proviso: 1938 sets forth four factors course of trade; likely to for determining likelihood ! use of similar sign; cause confusion including of confusion: (See note 2 identical or similar goods No infringement if likelihood of association. supra) in course of trade or defendant proves his business; likely to cause ! use of identical or similar use not likely to ! to reproduce, counterfeit, confusion. sign; dissimilar goods or deceive or cause copy, or colourably imitate services in the course of confusion.) a registered mark, and ! use of identical or similar trade; registered mark has apply such to packaging material etc intended to be sign; dissimilar goods or reputation in UK; use of (S.120(3)) sign takes unfair advantage used in commerce, which is services; in the course of ! use of sign substantially of or is detrimental to likely to cause confusion, trade or business; identical or deceptively - 8 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

registered mark has distinctive character or similar to a registered mistake or to deceive reputation in HK; use of repute of trade mark. trade mark that is a well (requires proof of sign takes unfair known mark in Australia; knowledge that such advantage of or is on goods/services which imitation intended to be detrimental to distinctive S.103(2) are not of the same used to cause confusion character or repute of ! ‘use’ of a trade mark description and not closely etc., otherwise registrant trade mark. includes use otherwise than related to registered not entitled to damages or goods; likely to indicate profits3.) (Clause 6) by means of a graphic representation. connection between the ! ‘use’ of a trade mark or unrelated goods/services sign includes any use and the registered owner whether by means of of trade mark; interests of graphic representation or registered owner are likely otherwise. to be adversely affected.

(Clause 7) ! when deciding whether use of a trade mark/sign is ‘likely to cause confusion’, Registrar/court may consider all relevant factors including likelihood of association with an earlier trade mark.

3 The Federal Dilution Act 1995 (USA) extends protection beyond the likelihood of confusion standard by providing that likelihood of injury to business reputation or of dilution of distinctive quality of registered or unregistered mark or a trade name, shall be a ground for injunctive relief though there is no competition between parties or no confusion as to source of goods/services. - 9 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

Comment We follow the language of the UK law closely; but the Australian and US laws provide broadly similar definitions of infringing acts as well.

Exceptions (Clause 17(7)) (S.10(6)) (S.122) (15 USC § 1115) to ! fair use of individual name ! use of registered TM for ! use of registered TM for ! use in good faith by a Infringement of anyone in privity with identifying identifying goods/services person of own name or defendant; use of term or goods/services of owner of proprietor or licensee if place of business, or device descriptive of and of registered TM or accords with honest name of predecessor in used fairly and in good licensee if accords with practices in industrial or business or name of faith only to describe honest practices in commercial matters, does predecessor’s place of goods/services of such industrial or commercial not take unfair advantage of business. party or their geographical matters, does not take or is detrimental to origin. unfair advantage of or is distinctive character or detrimental to distinctive repute of trade mark ! Prior use (prior to date of character or repute of registration or date of trade mark. constructive use (Clause 18(3)) (S.11(2)) i.e. (filing)) ! use of a sign in good faith ! use by a person of own ! consent of right holder ! use by a person of own to indicate characteristics name or address. name or address. of goods/services. (15 USC §1125(4)) ! use of signs re ! use of indications re ! in good faith to indicate ! fair use of a famous mark in characteristics of characteristics of intended purpose of comparative commercial goods/services; or where goods/services. goods/services. advertising or promotion to - 10 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

necessary to indicate identify competing ! use where necessary to ! for purposes of intended purpose of goods/services of owner of indicate the intended comparative advertising. product/service if accords famous marks. purpose of a ! in exercise of a right to with honest practices in product/service if accords use trade mark given ! non-commercial use of industrial or commercial with honest practices in under this Act. mark. matters. industrial or commercial ! if court thinks that person ! all forms of news reporting ! earlier, continuous use of matters. would obtain registration and news commentary. an unregistered trade of trade mark in his name ! ‘earlier right’ i.e. use in the mark or sign in the course if he were to apply for it. (Trademark Law Revision Act course of trade of an of trade or business in 1988) unregistered trade mark or ! use in a manner that does HK which precedes date sign continuously in a not infringe exclusive ! equitable defences of first use and particular locality which right of registered owner including laches, estoppel registration of registered precedes date of first use to use because of a and acquiescence. trade mark. and registration of condition or limitation on registered trade mark. the registration trade mark under S.120. Comment ! use of part of a trade The concept of “fair” or mark that has been “honest” use is common disclaimed. to all of the four trade mark laws under comparison.

Exhaustion (Clause 19) (S.12) (S.123) No specific stipulations. of rights ! where goods have been ! where goods have been put ! no infringement if trade (Parallel put on market anywhere on market in the European mark has been applied to imports) in the world under trade Economic Area under that goods/services by or with mark by owner or with trade mark by the proprietor the consent of the his consent (save where or with his consent. registered owner of trade - 11 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

conditions of the goods (except where legitimate mark. have changed or are reasons exist for proprietor impaired) to oppose further dealings in the goods e.g. condition Comment of goods have changed or There is no international are impaired.) consensus on the treatment of parallel importation of materials. Individual countries and economies may therefore accord different standards in line with their own needs.

Remedies/ (Clause 20) (S.14(2)) (S.126) (15 USC § 1116-1118) relief for ! injunction, which may be ! damages, injunctions, ! relief in civil action for infringement ! damages, injunctions, granted subject to any accounts or otherwise as violation: temporary accounts or otherwise as for condition that the court for infringement of any restraining orders, infringement of any other thinks fit; at the option of other property right. preliminary and permanent property right. the plaintiff, damages or injunctions, recall, (Clause 23(4)) an account of profits. (S.15) damages, profits, costs and ! inserted as result of attorney’s fees; seizure and Article 46 of TRIPS ! order for erasure. impoundment; and Agreement. destruction. (S.16) ! order for delivery up of - 12 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

infringing goods, material (Clause 21) (15 USC 1125(2)) or articles in one’s ! order for delivery up of possession, custody or ! in civil action under famous infringing goods, control in the course of a mark provision, only material or articles in business. injunction is available one’s possession, unless defendant intended (S.19) custody or control in the to trade on owner’s course of trade or ! order for disposal where reputation or to cause business. order for delivery up dilution of the famous applicable. mark. (Clause 23) ! order for disposal where order for delivery up applicable.

Comment The civil remedies available in the trade mark laws under comparison all seek to conform with the basic requirements stipulated under the Agreement on Trade-Related Aspects of Intellectual Property Rights under the WTO.

Rights of (Clause 33) (S.30) (S.26) Not specifically stipulated. licensees ! licensee can by notice in ! licensee can call on ! subject to any agreement writing call on owner of proprietor of trade mark to between the registered trade mark to take take infringement owner of the trade mark - 13 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

infringement proceedings. proceedings. and the authorised user: ! where owner refuses, or ! authorised user may use ! if proprietor refuses, or fails to take action within trade mark re fails to do so within two one month, licensee may goods/services covered months, licensee may bring bring action in his own by trade mark registration action in his own name as if name as if he were owner. subject to any he were proprietor. conditions/limitations on the registration. Comment ! may bring action for The rights of the infringement if owner licensees are specifically refuses/neglects to do so defined in the HK, UK within prescribed period. and Australian trade mark laws. ! may cause to be displayed on goods covered by trade mark registration or on packaging, a notice prohibiting any act specified under S.121(2). (see infringing acts’ above) ! may give notice to Comptroller objecting to importation of infringing goods. ! may give permission to any person to apply the trade mark to, or in relation to, the registered goods or services. - 14 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

Exclusive (Clause 32) (S.31) Not specifically stipulated. Not specifically stipulated. licensees ! where an exclusive ! where an exclusive licence licence provides rights to provides rights to a licensee a licensee as if licence is as if licence is an an assignment, exclusive assignment, exclusive license may have same licensee may have same rights as in an rights as in an assignment. assignment. (Clause 34) ! if same rights as an ! exclusive licensee assignee, exclusive licensee entitled to bring entitled to bring infringement proceedings infringement proceedings in in his own name; his his own name; his rights rights and remedies are and remedies are concurrent with those of concurrent with those of the the owner of the proprietor of the registered registered trade mark. trade mark.

Comment

The treatment is not uniform among the jurisdictions under comparison. This clause is added in the Bill for the avoidance of doubt. - 15 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

Defensive (Clause 58) UK does not have defensive (Part 17, Ss.184-189) Not specifically stipulated. trade mark trade mark. ! if a registered trade mark ! if due to extent of use of has become well-known a registered trade mark re through use and if as a goods/services covered result its use on other by registration, it is likely goods/services would that use of the trade mark detract from distinctive in relation to other character, such trade goods/services will be mark may be registered as taken to indicate there is a defensive trade mark in a connection between respect of any or all of those goods/services and other goods/services. the registered owner of the trade mark, a ! even if owner of defensive trade mark may defensive trade mark does be registered in respect of not use or intend to use any or all of those other trade mark re those goods/services. goods/services. ! may be registered as trade ! defensive trade mark may mark as well as defensive later be registered by trade mark. same owner as trade mark.

Comment There is no standard treatment of “defensive marks” in the jurisdictions under comparison. The provisions in the Bill - 16 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

serve as an additional means of protection for well-known or famous marks against dilution of their distinctive character.

Collective (Clause 59 & Schedule 1) (S.49 & Schedule 1) (Part 15, Ss.161-167) (15 USC § 1127) mark ! sign used/intended to be ! sign which distinguishes ! collective mark is one that ! means a trade mark/service used by members of an goods/ distinguishes goods/ mark used by members of a association to distinguish services of members of an services of members of an cooperative, association or goods/services provided association, which is association, which is other collective group or by them in the course of owner of the sign, from proprietor of the mark, from organisation, or which such trade from persons who those of other those of other undertakings. body has a bona fide are not members of the undertakings. intention to use in ! may consist of signs which association. commerce. ! may consist of signs designate geographical ! may ! includes marks indicating which designate origin of goods/services not be assigned or membership in a union, an geographical origin of subject to use by others of transmitted. association or other goods/services subject to such sign in accordance ! in action by association organisation. use by others of such sign with honest practices in for infringement, the in accordance with honest industrial or commercial association may take into (15 USC § 1054) practices in industrial or matters. account any damage or ! registrable by persons, commercial matters. ! collective mark not to be loss of profits sustained nations, states, ! collective mark not to be registered if misleading as by members by the municipalities, etc registered if misleading to character or significance infringement. exercising legitimate as to character or of mark. control over use of marks significance of mark. sought to be registered even ! applicant must file though no industrial or ! applicant must file regulations re use of commercial establishment. regulations re use of collective mark. - 17 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

collective mark. ! where the owner of a ! where the owner of a registered collective mark registered collective mark brings infringement brings infringement proceedings, any loss proceedings, any loss suffered or likely to be suffered or likely to be suffered by authorised users suffered by authorised shall be taken into account. users shall be taken into ! a collective mark may be account. revoked , inter alia, on the ! a collective mark may be ground that the regulations revoked , inter alia, on have not been observed. the ground that the

regulations have not been observed.

Comment The concept of a "collective mark" is recognized in all jurisdictions under comparison.

Certification (Clause 60 & Schedule 2) (S.50 & Schedule 2) (Part 16, S.168-183) (15 USC § 1127) mark ! sign used/intended to be ! sign which indicates ! mark which indicates ! to certify regional or other used to distinguish goods/services are goods/services are certified origin, material, mode of goods/services in the certified by owner of sign by proprietor of mark re manufacture, quality, course of trade and re certain characteristics. certain characteristics. accuracy, or other certified by a person re (i.e. origin, material, (i.e. origin, material, mode characteristics of goods/ certain characteristics, mode of manufacture, of manufacture, quantity, services provided by from goods/services not - 18 -

Issue HK Trade Marks Bill 1999 UK Trade Marks Act 1994 Australian Trade Marks Act US Lanham Act 1946 1995 (15 USC§1050 et seq) (as amended)

quantity, accuracy etc.) accuracy etc.) so certified. members of a union/organisation. ! may consist of signs ! may consist of signs which which designate designate geographical ! means any word, name, geographical origin of origin of goods/services symbol, or device or any goods/services subject to subject to use by others of combination thereof used use by others of such sign such sign in accordance by a person other than its in accordance with honest with honest practices in owner, or which its owner practices in industrial or industrial or commercial bona fide intends to permit commercial matters. matters. a person other than the owner himself to use in ! not to be registered if commerce. misleading as to character ! shall not be registered if or significance of mark. public liable to be misled as (15 USC § 1054) ! an applicant must file to character or significance ! registrable by persons, regulations governing use of mark. nations, states, of the mark. municipalities, etc ! applicant must file ! rules governing use of exercising legitimate regulations governing use certification trade mark control over use of marks ! a may of the mark. must be filed. sought to be registered even be revoked, inter alia, on ! application to be though no industrial or the ground that the ! a certification mark may be scrutinised by Registrar commercial establishment. regulations have not been revoked, inter alia, on the and the Trade Practices observed. ground that the regulations (15 USC § 1064) have not been observed. Commission (“Commission”) ! liable to cancellation if control not exercised (see Comment ! certification trade mark section on ‘Revocation’, may only be assigned The concept of a supra) "certification mark" is with consent of the recognized in all Commission. jurisdictions under comparison. - 19 -

Note

While every effort has been made to ensure accuracy in excerpting and explaining the trade mark laws in other jurisdictions, and in some cases where confirmation has also been sought from the relevant competent authorities, please note that the comparison above does not have the approval of the legal and judicial authorities in these jurisdictions. Please also note that in order to maintain accuracy in our comparison, we have not attempted to provide a Chinese translation of these foreign trade mark laws.

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