Trade Marks Infringement Proceedings & Passing Off
Under section 22 of the Trade Marks Ordinance (Cap. 559), laws of Hong Kong, an unauthorised use of any mark similar or identical to a registered trade mark in the course of trade or business on identical or similar goods or services registered under the registered mark, and which causes confusion to the consumers, constitutes trade mark infringement.
Trade mark infringement proceedings
The owner of the registered trade mark has the right to take out infringement proceedings against the infringer and to apply for the following orders from the Court:
1. Injunction
The trade mark owner can apply for an Injunction Order from the Court to immediately stop the infringer from engaging in further infringement activities, and to destroy all the infringing goods.
2. Account of profits
The trade mark owner can apply for an Order from the Court to require the infringer to account for the profits that it has made as a result of the infringing activities.
3. Compensation for Damages
A Court order can be applied for by the trade mark owner to require the infringer to make financial compensation to the owner for the infringing activities.
Passing Off
Under common law, the owner of the registered trade mark or unregistered trade mark rights owner may also take out passing off action against the other party who take advantage of the existing reputation or goodwill of the claimant’s business by misrepresenting his goods and services as related to that of the claimant’s business.
In passing off case, the key issue is misrepresentation as to the origin of goods or services. If someone misleads consumers to believe that their goods or services are connected with another business when they are not, then there could be an action for passing off.
Passing off action therefore is to protect traders’ goodwill in relation to their goods and services. “Goodwill” is the brand reputation which is built-up in relation to specific goods or services and which attracts customers. It can be held by an individual trader or in some cases shared, such as between all the producers of a specific product in a specific areas.
For legal advice or services on trade mark infringement or defence to trade mark infringement claim, please contact CHOW & CHEUNG [Tel: +852 2856 3799 or Email: cac@ccsn.hk]
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