TRADE MARKS ACT, 1963

FIRST SCHEDULE. Certification Trade Marks.

Certification Trade Marks.

Section 45.

1. (1) An application for the registration of a mark under section 45 of this Act must be made to the Controller in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof.

(2) The provisions of subsection (2) and of subsections (4) to (8) of section 25 of this Act shall have effect in relation to an application under the said section 45 as they have effect in relation to an application under subsection (1) of the said section 25, except that for references therein to acceptance of an application there shall be substituted references to authorisation to proceed with the application.

(3) In dealing under the said provisions with an application under the said section 45, the Court or the Controller (as the case may be) shall have regard to the like considerations so far as relevant, as if the application were an application under the said section 25 of this Act and to any other considerations (not being matters within the competence of the Minister under subparagraph (5) of this paragraph) relevant to applications under the said section 45, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.

(4) An applicant for the registration of a mark under the said section 45 shall transmit to the Controller draft regulations for governing the use thereof at such time before the decision of the Controller on the application as he may require in order to enable him to consider the draft, and the Controller shall report thereon to the Minister.

(5) When authorisation to proceed with an application has been given, the Minister shall consider the application with regard to the following matters, that is to say:—

(a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;

(b) whether the draft regulations are satisfactory; and

(c) whether in all the circumstances the registration applied for would be to the public advantage;

and may either—

(i) direct that the application shall not be accepted; or

(ii) direct the Controller to accept the application, and approve the regulations, either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he thinks requisite having regard to any of the matters aforesaid;

but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Minister shall not decide the matter without giving to the applicant an opportunity of being heard

Provided that the Minister may, at the request of the applicant made with the concurrence of the Controller, consider the application with regard to any of the matters aforesaid before authorisation to proceed with the application has been given, so however that the Minister shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations.

2. (1) When an application has been accepted, the Controller shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and the provisions of subsections (2) to (12) of section 26 of this Act shall have effect in relation to the registration of the mark as if the application had been an application under section 25 of this Act

Provided that, in deciding under the said provisions, the Court or the Controller (as the case may be) shall have regard only to the considerations referred to in subparagraph (3) of paragraph 1 of this Schedule, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Minister under subparagraph (2) of this paragraph of any opposition relating to any of the matters referred to in subparagraph (5) of the said paragraph 1.

(2) When notice of opposition is given relating to any of the matters referred to in subparagraph (5) of paragraph 1 of this Schedule, the Minister shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted.

3. (1) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Controller with the consent of the Minister.

(2) The Minister may cause an application for his consent to be advertised in any case where it appears to him that it is expedient so to do, and, where the Minister causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to him of opposition to the application, he shall not decide the matter without giving the parties an opportunity of being heard.

4. (1) The Minister may, on the application in the prescribed manner of any person aggrieved or on the application of the Controller, make such order as he thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground—

(a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods;

(b) that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;

(c) that it is no longer to the public advantage that the trade mark should be registered; or

(d) that it is requisite for the public advantage that, if the trade mark remains registered, the regulations should be varied;

and neither the Court nor the Controller shall have any jurisdiction to make an order under section 40 of this Act on any of those grounds.

(2) The Controller shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under subparagraph (1) of this paragraph.

5. Notwithstanding anything in section 51 of this Act, the Controller shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the trade mark.

6. The following provisions of this Act shall not have effect in relation to a certification trade mark, that is to say, section 12, section 14, section 17, sections 25 and 26 (except as expressly applied by this Schedule), subsections (4) to (7) of section 30, sections 34 to 37, section 66, and any provisions the operation of which is limited by the terms thereof to registration in Part B of the register.

SECOND SCHEDULE. Transitional Provisions.

Transitional Provisions.

Section 72.

Preservation for three years of rights under section 82 (2) of Act of 1927.

1. Notwithstanding subsection (1) of section 17 of this Act and the repeal of subsection (2) of section 82 of the Act of 1927, any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade mark by the applicant or his predecessors in business before the 13th day of August, 1875, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application shall, in the period ending on the day which is three years after the commencement of this Act, be registrable as a trade mark in Part A of the register under this Act.

Assignments and transmissions before the commencement of this Act giving exclusive rights in different places in the State.

2. The validity of an assignment or transmission of a trade mark effected or claimed to have been effected before the commencement of this Act, in any such case as is mentioned in subsection (6) of section 30 of this Act, shall be determined as if the provisions contained in subsections (1) to (5) of that section had not been enacted

Provided that, on application made in the prescribed manner within three years from the commencement of this Act, by a person who claims that an assignment or transmission of a registered trade mark to him or to a predecessor in title of his has been so effected, the Controller shall have the like jurisdiction as under the proviso to subsection (6) of the said section 30, and an assignment or transmission approved by him shall not be deemed to have been invalid on the ground of the subsistence of such rights as are mentioned in the said subsection (6) or on the ground that the assignment or transmission was effected otherwise than in connection with the goodwill of a business or was effected in respect of some (but not all) of the goods in respect of which the trade mark was registered, if application for the registration under section 33 of this Act of the title of the person becoming entitled is made within six months from the date on which the approval is given, or was made before that date.

Saving as to retrospective provisions relating to assignments and transmissions.

3. The retrospective provisions contained in section 30 of this Act, and in paragraph 2 of this Schedule shall have effect without prejudice to any determination of the Controller or the Court that was made before the commencement of this Act, or to the determination of any appeal from a determination so made, or to any title acquired for valuable consideration before the commencement of this Act.

Association of trade marks assignable or transmissible as a whole.

4. Where immediately before the commencement of this Act a trade mark was registered in Part B of the register subject to a condition rendering it assignable or transmissible only as a whole with another trade mark registered in the name of the same proprietor or with two or more other trade marks so registered, and not separately, the trade marks shall be deemed to be associated trade marks, and the entries in the register relating thereto may be amended accordingly.

Previous use of a trade mark by person becoming registered user on application made within three years of appointed day.

5. Where a person is registered as a registered user of a trade mark on an application made within three years from the commencement of this Act, subsection (2) of section 36 of this Act shall have effect in relation to any previous use (whether before or after the commencement of this Act) of the trade mark by that person, being use in relation to the goods in respect of which he is registered and, where he is registered subject to conditions or restrictions, being use such as to comply substantially therewith, as if such previous use had been permitted use.

Use of trade mark for export trade before appointed day.

6. Section 39 of this Act shall be deemed to have had effect in relation to an act done before the commencement of this Act as it has effect in relation to an act done after the commencement of this Act, without prejudice, however, to any determination of the Controller or the Court which was made before the commencement of this Act or to the determination of any appeal from a determination so made.

Trade marks registered under section 123 of the Industrial and Commercial Property (Protection) Act, 1927 to be deemed to have been registered under section 45 of this Act.

7. Section 45 of this Act shall have effect, in relation to a trade mark that immediately before the appointed day was on the register by virtue of section 123 of the Act of 1927, as if the said section 45 had been in force at the date of the registration of the trade mark and it had been registered under that section, subject however to the following modifications, that is to say:—

(a) the proviso to subsection (1) of the said section 45 shall not apply;

(b) in a case in which regulations for governing the use of the trade mark are deposited at the Office at the commencement of this Act, those regulations shall be deemed to have been deposited under the said section 45;

(c) in a case in which no such regulations are deposited at the commencement of this Act, the proprietor shall be at liberty, or may be required by the Minister as a condition of the continuance of the registration, to deposit at any time thereafter such regulations as the Minister may permit or require; and

(d) in a case in which no such regulations are for the time being deposited, the said section 45 shall have effect as if references therein, and in the First Schedule to this Act, to the regulations had been omitted.