If someone infringes a trademark, what penalties will they receive?

If you have registered a trademark and someone else has used a trademark in the course of business or trade similar or identical to your trademark in relation to similar or identical goods or services, you are entitled to sue that person for trademark infringement (section 18 of the Trade Marks Ordinance (Cap. 559)).

However, if your registered trademark is a well-known trademark, you will be entitled to sue the other person for infringement whether or not their use of a similar or identical trademark is in relation to similar or identical goods or services. For more details about what a “well-known trademark” is, you may look at section 4 and Schedule 2 of the Trade Marks Ordinance (Cap. 559).

Where a person has infringed a trademark, they are said to be in a civil wrong (not a criminal wrong). Hence, the infringer would incur civil liability. To bring a civil action for trademark enforcement, your application should be filed with the Court of First Instance. Nevertheless, you must note that there is a time limit for bringing a claim for an order for delivery up in relation to trademark infringement. According to section 24 of the Trade Marks Ordinance (Cap. 559), such a claim cannot be made six years after the date that:

  • The trademark was applied to the infringing material;
  • The trademark was applied to the infringing goods or their packaging; or
  • The infringing articles were made.

You may only be exempted from the time limit if you are under a disability or are prevented by concealment or fraud from discovering the relevant facts. However, you still need to apply within 6 years from the date you cease to be disable or could have discovered those facts with reasonable diligence.

If you succeed in the legal proceedings for trademark infringement, the court may:

  • Order the infringer to pay damages (compensation) to you;
  • Put an injunction in place, which will forbid the infringer from continuing to sell their goods under the trademark in question;
  • Order the infringer to surrender the infringing goods; and/or
  • Order the infringer to surrender the profits gained in respect of the infringing goods.