TRADE MARKS ACT, 1996

FIRST SCHEDULE Collective Marks

Collective Marks

Section 54.

General

1. The provisions of this Act shall apply in relation to collective marks subject to the following provisions of this Schedule.

Signs of which a collective mark may consist

2. In relation to a collective mark, the reference in section 6 (1) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

Indication of geographical origin

3. (1) Notwithstanding the provisions of section 8 (1) (c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or service.

(2) However, the proprietor of a mark referred to in subparagraph (1) shall not be entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, in the case of a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significance

4. (1) A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a collective mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a collective mark shall comprise some indication that it is a collective mark, and, notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective mark

5. (1) An applicant for registration of a collective mark shall file with the Controller regulations governing the use of the mark.

(2) The regulations shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse of the mark.

(3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations by Controller

6. (1) A collective mark shall not be registered unless the regulations governing the use of the mark—

(a) comply with paragraph 5 (2) and any further requirements imposed by rules; and

(b) are not contrary to public policy or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the Controller and pay the prescribed fee; and if the applicant does not do so, the application shall be deemed to be withdrawn.

7. (1) If it appears to the Controller that the requirements (other than those specified in paragraph 6) for registration have been met, the Controller shall consider the matters specified in paragraph 6 (1) and may—

(a) accept the application;

(b) accept it subject to conditions (including amendment of the regulations or otherwise); or

(c) refuse to accept it.

(2) Where the Controller accepts an application subject to specified conditions, and those conditions are complied with within the prescribed period, the Controller shall proceed with the publication in the Journal in accordance with section 43.

(3) Where the Controller accepts an application subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

8. (1) The regulations governing the use of the mark shall be open to public inspection and notice of opposition may be given, and observations may be made, relating to the matters specified in paragraph 6 (1).

(2) The provisions of this paragraph are in addition to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

9. The regulations governing the use of a registered collective mark shall, in like manner as the register, be open to public inspection.

Amendment of regulations

10. Where the regulations governing the use of a registered collective mark are amended, the regulations, as amended, shall not be effective unless and until the amended regulations are filed with and accepted by the Controller.

Infringement proceedings: rights of authorised users

11. (1) Subject to any agreement to the contrary between an authorised user and the proprietor, the provisions of this paragraph shall have effect in relation to the infringement of a registered collective mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's name as if the authorised user were the proprietor.

(4) Where the infringement proceedings are brought by virtue of subparagraph (3)—

(a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless he takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered collective mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

12. Apart from the grounds of revocation provided for in section 51, the registration of a collective mark may be revoked on the ground that—

(a) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 4 (1); or

(b) the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark; or

(c) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 5 (2) and any further conditions imposed by rules; or

(ii) are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

13. Apart from the grounds of invalidity provided for in section 52, the registration of a collective mark may be declared invalid on the ground that the mark was registered contrary to the provisions of paragraph 4 (1) or 6 (1).

SECOND SCHEDULE Certification Marks

Certification Marks

Section 55.

General

1. The provisions of this Act shall apply in relation to certification marks subject to the following provisions of this Schedule.

Signs of which a certification mark may consist

2. In relation to a certification mark, the reference in section 6 (1) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not certified.

Indication of geographical origin

3. Notwithstanding the provisions of section 8 (1) (c), a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services

Provided that the proprietor of such a mark shall not be entitled to restrain the use of the signs or indications in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.

Nature of proprietor's business

4. A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.

Mark not to be misleading as to character or significance

5. (1) A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a certification mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a certification mark shall comprise some indication that it is a certification mark; and notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification mark

6. (1) An applicant for registration of a certification mark shall file with the Controller regulations governing the use of the mark.

(2) The regulations shall indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.

(3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations, &c. by Minister

7. (1) A certification mark shall not be registered unless the Minister is satisfied that—

(a) the regulations governing the use of the mark—

(i) comply with paragraph 6 (2) and any further requirements imposed by rules; and

(ii) are not contrary to public policy or to accepted principles of morality; and

(b) the applicant is competent to certify the goods or services for which the mark is to be registered.

(2) If it appears to the Controller that the requirements for registration other than those in subparagraph (1) are met, the Controller shall authorise the applicant to proceed with the application.

(3) Within the prescribed period of authorisation to proceed, the applicant must file the regulations (if this has not already been done) and pay the prescribed fee, failing which, the application shall be deemed to be withdrawn.

8. (1) The Minister shall consider the matters mentioned in paragraph 7 (1) and may direct that the application for registration be accepted, be accepted subject to conditions (as to amendment of the regulations or otherwise), or be not accepted.

(2) Where the Minister directs that the application be accepted, and any conditions are complied with within the prescribed period, the Controller shall proceed in accordance with section 43.

(3) Where the Minister directs that an application be accepted subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

9. The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7 (1), in addition to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

10. The regulations governing the use of a registered certification mark shall, in like manner as the register, be open to public inspection.

Amendment of regulations

11. (1) An amendment of the regulations governing the use of a registered certification mark shall not be effective unless and until the Minister consents to the amendment and the amended regulations are filed with the Controller.

(2) The Minister may cause an application for consent under subparagraph (1) to be published in any case where it appears expedient to do so.

(3) Any person may, within the prescribed time from the date of the publication of the application, give notice to the Minister of opposition to the application and any such notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition.

(4) After the Minister has consented to such an amendment as is mentioned in subparagraph (1), the Controller shall publish notice in the Journal when the amended regulations are filed with him.

Consent to assignment of registered certification mark

12. The assignment or other transmission of a registered certification mark shall not be effective without the consent of the Minister.

Infringement proceedings: rights of authorised users

13. (1) Subject to any agreement to the contrary between an authorised user and the proprietor, the provisions of this paragraph shall have effect in relation to the infringement of a registered certification mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's own name as if the authorised user were the proprietor.

(4) Where infringement proceedings are brought by virtue of subparagraph (3)—

(a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless the proprietor takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered certification mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

14. (1) Apart from the grounds of revocation provided for in section 51, the registration of a certification mark may be revoked on the ground that—

(a) the proprietor has begun to carry on such a business as is mentioned in paragraph 4; or

(b) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 5 (1); or

(c) the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or

(d) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 6 (2) and any further conditions imposed by rules; or

(ii) are contrary to public policy or to accepted principles of morality; or

(e) the proprietor is no longer competent to certify the goods or services for which the mark is registered.

(2) An application for revocation on the ground mentioned in subparagraph (1) (c), (d) or (e) shall be made to the Minister.

(3) For the purposes of this paragraph the reference in section 51 (6) to the Controller or the Court shall be construed as a reference to the Minister.

Grounds for invalidity of registration

15. (1) Apart from the grounds of invalidity provided for in section 52, the registration of a certification mark may be declared invalid on the ground that the mark was registered contrary to the provisions of paragraph 4, 5 (1) or 7 (1).

(2) An application for a declaration of invalidity on the ground that the registration was made contrary to the provisions of paragraph 7 (1) shall be made to the Minister.

General provisions as to functions of Minister

16. (1) The provisions of sections 69 to 74 shall apply in relation to the Minister and the Minister's functions under this Schedule as they apply in relation to the Controller and the Controller's functions.

(2) Section 79 shall apply in relation to a decision of the Minister under this Schedule as they apply in relation to a decision of the Controller.

(3) The Minister may, for the purpose of discharging any of his functions under this Schedule, refer any matter to a body or person appearing to the Minister to have experience of matters of that description, and may take their report or advice into account in reaching his decision.

THIRD SCHEDULE Transitional Provisions

Transitional Provisions

Section 100.

Introductory

1. (1) In this Schedule—

“commencement” means the commencement of this Act; “existing registered mark” means a trade mark or certification trade mark, within the meaning of the Act of 1963, registered under that Act immediately before commencement;

“the former register” means the register of trade marks kept under the Act of 1963;

“the old law” means the Act of 1963 and any other enactment or rule of law applying to existing registered marks immediately before commencement;

“the new register” means the Register of Trade Marks kept under this Act.

(2) For the purposes of this Schedule an application shall be treated as pending at commencement if it was made but not finally determined before commencement.

Existing registered marks

2. (1) Existing registered marks (whether registered in Part A or Part B of the former register) shall, on commencement, be deemed to be transferred to the new register and shall have effect, subject to the provisions of this Schedule, as if registered under this Act.

(2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it applies to the marks themselves.

(3) Entries indicating that existing registered marks are associated with other marks shall cease to have effect on commencement.

(4) A condition entered on the former register in relation to an existing registered mark immediately before commencement shall cease to have effect on commencement; and proceedings under section 41 of the Act of 1963 (application to expunge or vary registration for breach of condition) which are pending at commencement shall be dealt with under the old law (with any necessary alteration being made in the new register).

(5) A disclaimer or limitation entered on the former register in relation to an existing registered mark and in force immediately before commencement shall be deemed to be transferred to the new register and have effect as if entered on the new register in pursuance of section 17.

Effects of registration: infringement

3. (1) Sections 13 to 16 (effects of registration) apply in relation to an existing registered mark as from commencement and section 18 (action for infringement) applies in relation to infringement of an existing registered mark after commencement, subject to subparagraph (3).

(2) Without prejudice to the operation of the Interpretation Act, 1937, the old law shall continue to apply in relation to infringements committed before commencement.

(3) It shall not be an infringement of—

(a) an existing registered mark, or

(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articles

4. Section 20 (order for delivery up of infringing goods, material or articles) shall apply to infringing goods, material or articles made before, as well as after, commencement.

Rights and remedies of licensee or authorised user

5. (1) Section 34 (general provisions as to rights of licensees in case of infringement) shall apply to licences granted before commencement, but only as regards infringements committed after commencement.

(2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements committed after commencement.

Assignment &c. of registered trade marks

6. (1) Section 28 (assignment or other transmission of registered mark) shall apply only in relation to transactions and events occurring after commencement in relation to an existing registered mark; and the old law shall continue to apply in relation to transactions and events occurring before commencement.

(2) An application for registration under section 33 of the Act of 1963 (registration of assignments and transmissions) which is pending at commencement shall be treated as an application for registration under section 29 and shall proceed accordingly, except that the Controller may require the applicant to amend the application so as to conform with the requirements of this Act.

(3) An application for registration under section 33 of the Act of 1963 which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law.

(4) Where, before commencement, a person became entitled by assignment or transmission to an existing registered mark but did not make an application to register his title, any application for registration after commencement shall be made under section 29.

(5) Any entry falling to be made in the old register as a result of subparagraph (3) shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

Licensing of registered mark

7. (1) Sections 32 and 33 (2) (licensing of registered trade mark: rights of exclusive licensee against grantor's successor in title) shall apply only in relation to licences granted after commencement; and the old law shall continue to apply in relation to licences granted before commencement.

(2) Existing entries under section 36 of the Act of 1963 (registered users) shall be deemed to be transferred on commencement to the new register and shall have effect as if made under section 29.

(3) An application for registration as a registered user which is pending at commencement shall be treated as an application for registration of a licence under section 29 (1) and shall proceed accordingly, except that the Controller may require an applicant to amend the application so as to conform with the requirements of this Act.

(4) An application for registration as a registered user which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law, and any entry falling to be made in the old register as a result of this subparagraph shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

(5) Any proceedings pending on commencement under section 36 (7) or (9) of the Act of 1963 (variation or cancellation of registration of registered user) shall be dealt with under the old law (with any necessary alteration being made to the new register).

Pending applications for registration

8. (1) The provisions of this paragraph apply where an application for registration of a trade mark, within the meaning of the Act of 1963, is pending at commencement.

(2) Subject to paragraph 9, the application shall be dealt with (and the registrability of the mark shall be determined) in accordance with the old law and any mark which, on that determination, falls to be registered shall be treated for the purpose of this Schedule as an existing registered mark.

(3) Provision may be made by rules to enable pending applications for registration to continue in accordance with the procedural provisions of this Act.

Conversion of pending application

9. (1) This paragraph applies if an application which was pending at commencement has not been advertised under section 26 of the Act of 1963.

(2) If, in case where subparagraph (1) applies, the applicant gives notice to the Controller requesting that the registrability of the mark be determined in accordance with the provisions of this Act, the Controller shall deal with the application accordingly.

(3) Notice under subparagraph (2) shall be in the prescribed form, shall be accompanied by the appropriate fee and shall be given no later than six months after commencement.

(4) Notice given under subparagraph (2) shall be irrevocable and the application to which the notice relates shall be treated as if it were made at commencement and as if the date of filing were the date of commencement.

Duration and renewal of registration

10. (1) Section 47 (1) (duration of original period of registration) applies in any case where the registrability of a trade mark is determined in accordance with the provisions of this Act; and the old law applies in any other case.

(2) Sections 47 (2) and 48 (renewal of registration) apply when the renewal falls due at or after commencement; and the old law applies in any other case.

(3) For the purposes of this paragraph it is immaterial when the application is made or when the fee is paid.

Revocation for non-use

11. (1) An application under section 34 of the Act of 1963 (removal from register or imposition of limitation on ground of non-use) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).

(2) Subject to subparagraph (3), an application under section 51 (4) on the grounds specified in section 51 (1) (a) or (b) (revocation for non-use) may be made in relation to an existing registered mark at any time after commencement.

(3) No application for the revocation of the registration of an existing registered mark which was registered by virtue of section 35 of the Act of 1963 (defensive registration of well-known trade marks) may be made under section 51 until more than five years after commencement.

Application for rectification &c.

12. An application under section 40 or 42 of the Act of 1963 (rectification or correction of the register) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).

Validity of existing registered marks

13. The old law shall continue to apply as regards the validity of the registration of an existing registered mark; and no objection to the validity of such a registration may be taken on the ground of failure to satisfy the requirements of this Act.

Certification marks

14. (1) If, at commencement, a request is pending for the amendment of the regulations governing the use of an existing certification mark, that request shall be dealt with under the old law.

(2) In subparagraph (1) “existing certification mark” means a certification trade mark registered under the Act of 1963 immediately before commencement.

Pre-commencement applications in respect of trade marks for services.

15. (1) If, at any time between 1st January, 1993 and commencement, an application was made to the Controller for the registration of a trade mark in respect of services, this Act shall have effect, subject to subparagraph (2), as if—

(a) the application were made at commencement; and

(b) the date of filing were the date of commencement;

and the Controller shall deal with the application accordingly.

(2) Section 20 (3) of the Act of 1963 (separate applications for registration of identical trade marks in respect of goods, etc.) shall apply in relation to applications falling within subparagraph (1)—

(a) with the substitution of a reference to services for the reference to goods or a description of goods; and

(b) with the omission of the proviso.