Jul 25, 2025 | New Trends in Registered Trademark Infringement

1. Under Section 18 of the Trade Marks Ordinance, Cap. 559, the definition of “Infringement of registered trade mark” is quite broad. This includes any “use” of an infringing trademark in the course of trade or business. In practice, this includes the following actions:

a) Offering for sale of products bearing infringing trademarks;
b) Promoting products bearing infringing trademarks; and
c) Sale of products bearing infringing trademarks.

2. For example: the infringing company (Company A) possesses products bearing infringing trademarks in its office building. The registered trademark holder (Company B) can then accuse or even sue Company A for infringing the registered trademark due to Company A’s concealment behavior (possession behaviors) (Action 1).

3. However, with the rise of online shopping, the above-mentioned possession behaviors are no longer the most common infringement activities. This is followed by online promotion (Action 2) and sales (Action 3).

4. In fact, online promotion and sale are easier to detect than possession. This is also good news for Company B. All Company B needs to do is to print Company A’s online promotional materials (which of course must contain the infringing trademark) and order the infringing products from Company A. With the evidence of publicity and sales record of the infringing products, Company B can file a lawsuit against Company A for infringing the registered trademark.

5. Further, because of its simplicity and convenience to sell infringing products online, it is noteworthy that many infringers are small-scale operating companies. If Company A is really a small company, then Company B can sue the sole director of Company A together and claim the following:

a) permanent injunction;
b) delivery up order;
c) disclosure order;
d) damages; and;
e) costs.;

6. In addition to the above Actions 1, 2 and 3, the author has recently discovered the following online behaviors, which also constitutes infringements of registered trademarks:

a) Company A “implants” the infringing trademark into the source code of its own website (Action 4); and
b) Company A pays the online platforms to promote the company and through their services (also known as SEO), Company A’s website can be ranked high and eye-catching in the search results (Action 5).

7. The purpose of the above Actions 4 and 5 is to make the web users to see the website of Company A first. According to the above regulations, both Actions 4 and 5 are considered “use” and constitute infringements of registered trade mark.

8. Therefore, when collecting evidence, Company B may consider collecting and using the following evidence to prosecute:

a) Print online promotional pages (i.e. screenshots);
b) Access the source code of Company A’s website to check whether Company A has “planted” infringing trademarks therein; and
c) Check the promotional webpage to see if Company A has “sponsored” the promotional website.

9. Last but not least, after obtaining a successful injunction, Company A should also require Company B to terminate the SEO service and delete the infringing trademarks embedded in the source code.