contention between the parties is whether Hong Kong and China are one and the same country
for purposes of trademark issues.
I wish to note that it is not in dispute that Hong Kong is a Special Administrative Region of
China. The certificate of registration of the trademark TECNO tendered in court shows that the
mark was registered under the Trademarks Ordinance (Chapter 559) of the Laws of Hong Kong
Special Administrative Region. This implies that trademarks in Hong Kong are regulated by a
separate law from that of China mainland. Counsel for the applicant did not address court on
whether or not registration of a trademark in Hong Kong automatically accords it protection in
China mainland such that there would be no need to register the same there. I will however, be
guided by the submission by the respondent based on the information obtained from the internet,
that Hong Kong enjoys autonomy from China in all matters except foreign relations and military.
Counsel for the applicant argued that since this application, where reciprocity between China and
Uganda is being considered is a foreign relations matter, then China and Hong Kong are one for
that purpose. I wish to point out that this application is not purely a reciprocity matter which is
just one aspect of what needs to be proved under section 45. Under that section, the applicant
must first prove that the trademark sought to be removed from the register, “is identical with or
nearly resembles a trademark which was, prior to the registration in Uganda of the trademark,
registered in respect of: - the same goods; the same description of goods; or services or
……………….in a country or place from which the goods originate”.
From the submissions of both counsels and my own analysis, the cracks of the matter here is the
country or place from which the TECNO phones that the applicant manufactures and its agent in
Uganda sells originate. Other matters like identity or resemblance of the marks, similarity of the
goods and even registration of the mark in Hong Kong appear not to be as contentious and I
would pronounce myself on them at this point that the applicant has indeed adduced enough
evidence to prove them. The original certificate of registration of the TECNO mark in Hong
Kong is on record and it confirms that it was in respect of goods in class 9 that include mobile
telephones. It was also confirmed by the respondent that it registered the same mark in Uganda
in respect of goods in class 9. For that reason, I find and rule that the trademarks are identical
and are in respect of the same goods.
I am also inclined to believe the submission of counsel for the applicant that for purposes of
reciprocity, China and Hong Kong are the same because it is a foreign relations matter. I have
had the benefit of looking at the Trademarks Ordinance (Chapter 559) of Hong Kong and I
found that under section 2 which is the interpretation clause, “Paris Convention” is defined to
mean “the Convention for the Protection of Industrial Property signed at Paris on 20 March
1883, as revised or amended from time to time”.
“Paris Convention country” is also defined to mean:(a) “Any country for the time being specified in Schedule 1 as being a country which has
acceded to the Paris Convention.