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6 1996

TRADE MARKS ACT, 1996

PART II

Register Trade Marks

Introductory

Trade marks.

6. —(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or of their packaging.

(3) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark within the meaning of section 54 or a certification mark within the meaning of section 55 .

Registered trade marks.

7. —(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark shall have the rights and remedies provided by this Act.

(2) No proceedings shall lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act shall affect the law relating to passing off.

Grounds for Refusal of Registration

Absolute grounds for refusal of registration.

8. —(1) The following shall not be registered as trade marks:

(a) signs which do not satisfy the requirements of section 6 (1);

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(2) A sign shall not be registered as a trade mark if it consists exclusively of—

(a) the shape which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

(3) A trade mark shall not be registered if—

(a) it is contrary to public policy or to accepted principles of morality; or

(b) it is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

(4) A trade mark shall not be registered if or to the extent that—

(a) its use is prohibited in the State by any enactment or rule of law or by any provision of Community law; or

(b) the application for registration is made in bad faith by the applicant.

Specially protected emblems.

9. —(1) A trade mark which consists of or contains any State emblem of Ireland or any insignia or device so nearly resembling such emblem that it may be mistaken for such emblem shall not be registered unless the Controller is satisfied that consent for its registration has been given by the Minister.

(2) A trade mark which consists of or contains a representation of the national flag of the State, as defined by Article 7 of the Constitution, shall not be registered if it appears to the Controller that the use of the trade mark would be misleading or grossly offensive.

(3) The Controller may refuse to register a trade mark which consists of or contains any badge, device or emblem of a public authority unless such consent as is required by rules is obtained.

Relative grounds for refusal of registration.

10. —(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

(2) A trade mark shall not be registered if because—

(a) it is identical with an earlier trade mark and would be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b) it is similar to an earlier trade mark and would be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the later trade mark with the earlier trade mark.

(3) A trade mark which—

(a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in the case of a Community trade mark, in the Community) and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.

(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to be prevented—

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or

(b) by virtue of an earlier right, other than those referred to in subsections (1) to (3) and paragraph (a), in particular by virtue of the law of copyright, registered designs or any other law relating to a right to a name, a right of personal portrayal or an industrial property right.

(5) Where by virtue of any such rule of law or earlier right as is referred to in subsection (4) a person would be entitled to prevent the use of a trade mark, that person is in this Act referred to as the proprietor of an “earlier right” in relation to the trade mark.

(6) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

Meaning of “earlier trade mark”.

11. —(1) In this Act an “earlier trade mark” means—

(a) a registered trade mark, an international trade mark or a Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks;

(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark, even when the latter trade mark has been surrendered or allowed to lapse; or

(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well-known trade mark.

(2) References in this Act to an earlier trade mark include references to a trade mark in respect of which an application for registration has been made and which, subject to its being registered, would be an earlier trade mark by virtue of subsection (1) (a) or (b).

(3) Where the registration of a trade mark specified in subsection (1) (a) or (b) expires, the trade mark shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the Controller is satisfied that there was no bona fide use of the trade mark during the two years immediately preceding the expiry.

Raising of relative grounds in case of honest concurrent use.

12. —(1) This section applies where on an application for the registration of a trade mark it appears to the Controller—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in section 10 (4) is satisfied,

but the applicant shows to the satisfaction of the Controller that there has been honest concurrent use of the trade mark for which registration is sought.

(2) In a case to which this section applies, the Controller shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section “honest concurrent use” means such use in the State, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 20 (2) of the Trade Marks Act, 1963 .

(4) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 8 ; or

(b) the making of an application for a declaration of invalidity under section 52 (2).

Effects of Registered Trade Mark

Rights conferred by registered trade mark.

13. —(1) The proprietor of a registered trade mark shall have exclusive rights in the trade mark and such rights shall be infringed by the use of that trade mark in the State without the proprietor's consent; and the acts referred to in section 14 , if done without that consent, shall constitute infringement of the proprietor's rights.

(2) References in this Act to the infringement of a registered trade mark are references to any infringement of the rights of the proprietor of the registered trade mark.

(3) The rights of the proprietor of a registered trade mark shall have effect from the date of registration of the trade mark (as determined under section 45 (3)).

(4) Notwithstanding subsection (3)

(a) no infringement proceedings may be begun before the date of publication of the registration of the trade mark; and

(b) no offence shall be regarded as committed under section 92 by anything done before that date.

Infringement of registered trade mark.

14. —(1) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

(4) For the purposes of this section, use of a sign shall include, in particular—

(a) affixing it to goods or the packaging thereof;

(b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign;

(c) importing or exporting goods under the sign; or

(d) using the sign on business papers or in advertising.

(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services shall be treated as a party to any use of the material which infringes the registered trade mark if, when that person applied the mark, that person knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee of the registered trade mark.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise than in accordance with honest practices in industrial or commercial matters, shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.

Limits on effect of registered trade mark.

15. —(1) A registered trade mark shall not be infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered, but subject to section 52 (6).

(2) A registered trade mark shall not be infringed by—

(a) the use by a person of his own name or address;

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service or other characteristics of goods or services; or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts:

Provided that such use is in accordance with honest practices in industrial and commercial matters.

(3) A registered trade mark shall not be infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

(4) For the purpose of subsection (3) an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by, or by a predecessor in title of, a person from a date prior to whichever is the earlier of—

(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of the proprietor; and

(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of the proprietor;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by any rule of law, in particular the law of passing off.

Exhaustion of rights conferred by registered trade mark.

16. —(1) A registered trade mark shall not be infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor of the trade mark or with the consent of the proprietor.

(2) The provisions of subsection (1) shall not apply where there exist legitimate reasons for the proprietor of the trade mark to oppose further dealings in the goods, in particular, where the condition of the goods has been changed or impaired after they have been put on the market.

Registration subject to disclaimer or limitation.

17. —(1) A person who applies for the registration of a trade mark or the proprietor of a registered trade mark may—

(a) disclaim any right to the exclusive use of any specified element of the trade mark, or

(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 13 shall be restricted accordingly.

(2) If on an application for the registration of a trade mark, it appears to the Controller that any particular element of the trade mark is not distinctive and the inclusion of the element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, he may refuse to accept the application unless the applicant agrees to make a disclaimer in respect of that element under subsection (1) (a) within such period as the Controller may specify.

(3) Particulars of any disclaimer or limitation shall be entered in the register.

Infringement Proceedings

Action for infringement.

18. —(1) Where a registered trade mark is infringed, the infringement shall be actionable by the proprietor of the trade mark.

(2) In an action for infringement of a registered trade mark all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor as is available in respect of the infringement of any other property right.

Order for erasure &c. of offending sign.

19. —(1) Where a person is found to have infringed a registered trade mark, the Court may make an order requiring him—

(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, materials or articles in question.

(2) If an order under subsection (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

Order for delivery up of infringing goods, material or articles.

20. —(1) The proprietor of a registered trade mark may apply to the Court for an order for the delivery up to the proprietor, or such other person as the Court may direct, of any infringing goods, material or articles of which a person has possession, custody or control in the course of a business or otherwise for the purpose of dealing in any way (including offering or exposing for sale or hire).

(2) An application for the delivery up of any infringing goods, material or articles shall not be made after the end of the period specified in section 22 ; and no order shall be made unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 23 .

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 23 is not made, retain them pending the making of an order or the decision not to make an order under that section.

(4) Nothing in this section shall affect any other power of the Court.

Meaning of “infringing goods, material or articles”.

21. —(1) In this Act the expressions “infringing goods”, “infringing material” and “infringing articles” shall be construed as defined herein.

(2) Goods shall be “infringing goods”, in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and either—

(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or

(b) they have been or are proposed to be imported into the State and the application of the mark in the State to the goods or their packaging would constitute an infringement of the registered trade mark, or

(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.

(3) Nothing in subsection (2) (b) shall be construed as applying to goods which may lawfully be imported into the State by virtue of any right created or arising under or by virtue of the treaties governing the European Union.

(4) Material shall be “infringing material”, in relation to a registered trade mark, if it bears a sign identical or similar to that mark and either—

(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark, or

(b) it is intended to be so used and such use would infringe the registered trade mark.

(5) “Infringing articles”, in relation to a registered trade mark, means articles—

(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b) which are in the possession, custody or control, of a person who knows or has reason to believe that they have been or are to be used to produce infringing goods or material.

Period after which remedy of delivery up not available.

22. —(1) Subject to the provisions of this section, an application for an order under section 20 may not be made after the end of the period of six years from—

(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging;

(b) in the case of infringing material, the date on which the trade mark was applied to the material; or

(c) in the case of infringing articles, the date on which they were made.

(2) If during the whole or part of the period referred to in subsection (1) the proprietor of the registered trade mark—

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling the proprietor to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which the proprietor ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(3) For the purposes of subsection (2) a person is under a disability if he is so for the purposes of the Statute of Limitations, 1957 .

Order as to disposal of infringing goods, material or articles.

23. —(1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 20 , an application may be made to the Court—

(a) for an order that they be destroyed or forfeited to such person as the Court thinks fit, or

(b) for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the Court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate and protect the interests of the proprietor and any licensee.

(3) Provision may be made by rules of court as to the service of notice on any person having an interest in the goods, material or articles, and any such person shall be entitled—

(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and

(b) to appeal against any order made, whether or not he appeared;

and, unless the Court otherwise directs, an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.

(4) Where there is more than one person interested in the goods, material or articles, the Court shall make such order as it thinks just.

(5) If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up shall be entitled to their return.

(6) References in this section to a person having an interest in goods, material or articles include references to any person in whose favour an order could be made under section 27 of the Copyright Act, 1963 .

Remedy for groundless threats of infringement proceedings.

24. —(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to—

(a) the application of the mark to goods,

(b) the importation of goods to which the mark has been applied, or

(c) the supply of services under the mark,

any person aggrieved may apply to the Court for relief under this section.

(2) The relief which may be applied for as mentioned in subsection (1) is any of the following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats;

(c) damages in respect of any loss sustained by the threats.

(3) A plaintiff shall be entitled to such relief as is referred to in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

(4) Notwithstanding the provisions of subsection (3), the plaintiff shall be entitled to such relief as is referred to in subsection (2) if the plaintiff shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

(5) Notification that a trade mark is registered or that an application for registration has been made shall not of itself constitute a threat of proceedings for the purposes of this section.

Infringing goods, material or articles: powers of seizure and search.

25. —(1) If the District Court is satisfied by evidence that there is reasonable ground for believing that infringing goods, material or articles are in the possession, custody or control of any person in the course of business or otherwise for the purpose of dealing in any way (including offering or exposing for sale), the District Court may by order authorise a member of the Garda Síochána to seize the goods, material or articles without warrant and to bring them before the court.

(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable ground for suspecting that infringing goods, material or articles are on any premises in the course of business or otherwise for the purpose of dealing in any way, the Judge may grant a search warrant authorising a named member of the Garda Síochána not below the rank of inspector, accompanied by such other members of the Garda Síochána as may be necessary, to enter on the premises, if need be by force, and to seize any such goods, material or articles and bring them before the court.

(3) On proof to the District Court that any goods, material or articles brought before the court under subsection (1) or (2) are infringing goods, material or articles, the court may—

(a) order them to be delivered up to the proprietor of the registered trade mark concerned;

(b) order them to be destroyed or forfeited to such person as the court thinks fit; or

(c) order them to be dealt with in such other way as the court thinks fit.

(4) The powers of the District Court under this section shall be exercisable by the Judge of the District Court for the district in which the goods, material or articles are for the time being or, as the case may be, where the premises concerned are situated.

Registered Trade Mark as Object of Property

Nature of registered trade mark.

26. —A registered trade mark is personal property.

Jointly owned trade marks.

27. —(1) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled, as between himself and the other or others, to use it except—

(a) on behalf of both or all of them, or

(b) in relation to an article with which both or all of them are connected in the course of trade,

those persons may be registered as joint proprietors of the trade mark.

(2) Except as provided by subsection (1), nothing in this Act shall permit the registration as joint proprietors of a trade mark of two or more persons who use, or propose to use, the trade mark independently.

(3) Subject to subsection (4), where, in accordance with subsection (1), two or more persons are registered as joint proprietors of a trade mark, this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights were vested in a single person.

(4) The rights of any one of the persons who are registered as joint proprietors of a trade mark (in this subsection referred to as “the joint owners”) shall be deemed to be infringed by any other of the joint owners who uses the trade mark in physical or other relation to goods or services—

(a) in respect of which the trade mark is so registered; but

(b) with which both or all of the joint owners are not and have not been connected in the course of trade.

Assignment &c. of registered trade mark.

28. —(1) A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal property, and shall be so transmissible either in connection with the goodwill of a business or independently.

(2) An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply—

(a) in relation to some but not all of the goods or services for which the trade mark is registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) An assignment of a registered trade mark, or a vesting assent relating to a registered trade mark, shall not be effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative; and this requirement may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.

(4) Subsections (1) to (3) shall apply to assignment by way of security as in relation to any other assignment.

(5) A registered trade mark may be the subject of a charge in the same way as other personal property.

(6) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business.

Registration of transactions affecting registered trade mark.

29. —(1) On application being made to the Controller in the prescribed manner by—

(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or

(b) any other person claiming to be affected by such a transaction,

particulars of the transaction shall be entered in the register in the prescribed manner.

(2) The following are registrable transactions for the purposes of this Act—

(a) an assignment of a registered trade mark or any right in it;

(b) the grant or assignment of a licence under a registered trade mark;

(c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;

(d) the making by a personal representative of a vesting assent in relation to a registered trade mark or any right in or under it; and

(e) an order of a court or other competent authority transferring a registered trade mark or any right in or under it.

(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction—

(a) the transaction shall be ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it; and

(b) a person claiming to be a licensee by virtue of the transaction shall not have the protection of section 34 or 35 .

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction, then unless—

(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with the date of the transaction, or

(b) the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter,

that person shall not be entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the application for registration of the prescribed particulars is made.

(5) Provision may be made by rules with respect to the amendment or deletion of particulars of registrable transactions entered in the register by virtue of this section.

Trusts and equities.

30. —(1) No notice of any trust (express, implied or constructive) shall be entered in the register; and the Controller shall not be affected by any such notice.

(2) Subject to the provisions of this Act, equities in respect of a registered trade mark may be enforced in like manner as in respect of other personal property.

Application for registration of trade mark as an object of property.

31. —(1) The provisions of sections 26 to 30 shall apply, with the necessary modifications, in relation to an application for the registration of a trade mark as they apply in relation to a registered trade mark.

(2) In section 29 as it applies in relation to a transaction affecting an application for the registration of a trade mark, the references to the entry of particulars in the register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the Controller of those particulars.

(3) The procedure subsequent to the giving of notice as mentioned in subsection (2) shall be such as may be prescribed by rules.

Licensing

Licensing of registered trade mark.

32. —(1) A licence to use a registered trade mark may be general or limited.

(2) A limited licence may, in particular, apply—

(a) in relation to some but not all of the goods or services for which the trade mark is registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) A licence shall not be effective unless it is in writing signed by or on behalf of the grantor and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

(4) Unless the licence provides otherwise, it shall be binding on a successor in title to the grantor's interest; and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.

(5) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

Exclusive licences.

33. —(1) In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee, to the

exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence; and the expression “exclusive licensee” shall be construed accordingly.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as the exclusive licensee has against the person granting the licence.

General provisions as to rights of licensees in case of infringement.

34. —(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark, except where or to the extent that, by virtue of section 35 (2), the licensee has a right to bring proceedings in the licensee's own name.

(2) A licensee is entitled, unless the licence, or any licence through which the licensee's interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects the licensee's interests.

(3) If the proprietor—

(a) refuses to take proceedings when called upon under subsection (2), or

(b) fails to do so within two months after being so called upon,

the licensee may bring the proceedings in his own name as if he were the proprietor.

(4) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee 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; but this subsection does not affect the granting of interlocutory relief on an application by a licensee alone.

(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be liable for any costs in the action unless he takes part in the proceedings.

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

(7) The provisions of this section shall apply in relation to an exclusive licensee if or to the extent that the licensee has, by virtue of section 35 (1), the rights and remedies of an assignee as if the licensee were the proprietor of the registered trade mark.

Exclusive licensee having rights and remedies of assignee.

35. —(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) Where or to the extent that provision is made as mentioned in subsection (1), the licensee shall be entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in the licensee's own name.

(3) Any such rights and remedies of an exclusive licensee shall be concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.

(4) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.

Exercise of concurrent rights.

36. —(1) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the Court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant; but this subsection does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.

(2) A person who is added as a defendant as mentioned in subsection (1) shall not be liable for any costs in the action unless he takes part in the proceedings.

(3) Where an action for infringement of a registered trade mark is brought which relates (wholly or partly) to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action—

(a) the Court shall in assessing damages take into account—

(i) the terms of the licence, and

(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

(c) the Court shall, if an account of profits is directed, apportion the profits between them as the Court considers just, subject to any agreement between them.

(4) The provisions of subsection (3) apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

(5) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 20 ; and the Court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

(6) The provisions of this section shall have effect subject to anyagreement to the contrary between the exclusive licensee and the proprietor.

Application for Registered Trade Mark

Application for registration.

37. —(1) An application for registration of a trade mark shall be made to the Controller in such manner and containing such information as may be prescribed.

(2) The application shall state that the trade mark is being used, by or with the consent of the applicant, in relation to the goods or services specified in the application, or that the applicant has a bona fide intention that it should be so used.

(3) The application shall be subject to the payment of the appropriate fee or fees.

Date of filing.

38. —(1) The date of filing of an application for registration of a trade mark is the date on which the prescribed documents are furnished to the Controller by the applicant; and if those documents are furnished on different days, the date of filing is the last of those days.

(2) References in this Act to the date of application for registration are to the date of filing of the application.

Classification of goods and services.

39. —(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification; and every trade mark shall be registered in respect of particular goods or services or in respect of classes of goods or services.

(2) Any question arising as to the class within which any goods or services fall shall be determined by the Controller, whose decision shall be final.

Priority

Claim to priority of Convention application.

40. —(1) A person who has duly filed an application for protection of a trade mark in a Convention country (in this Act referred to as a “Convention application”), or the successor in title to such a person, has a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first Convention application.

(2) If the application for registration under this Act is made within the period specified in subsection (1)

(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and

(b) the registrability of the trade mark shall not be affected by any use of the mark in the State in the period between that date and the date of the application under this Act.

(3) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority; and for this purpose a “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, irrespective of the outcome of the application.

(4) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority) if, at the time of the subsequent application—

(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and

(b) it has not yet served as a basis for claiming a right of priority;

and in such a case the previous application may not thereafter serve as a basis for claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.

(6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently; and the reference in subsection (1) to the applicant's successor in title shall be construed accordingly.

Claim to priority from other relevant overseas application.

41. —(1) This section applies to any country or territory in relation to which the State has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks.

(2) The Government may by order make provision for conferring on a person who has duly filed an application for protection of a trade mark in a country or territory to which this section applies a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.

(3) In relation to a country or territory to which this section applies, an order under this section may make provision corresponding to that made by section 40 in relation to Convention countries or such other provision as appears to the Government to be appropriate.

Registration Procedure

Examination of application.

42. —(1) The Controller shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules); and in this section those requirements are referred to as “the requirements for registration”.

(2) If it appears to the Controller that the requirements for registration are not met, the Controller shall inform the applicant and give the applicant an opportunity, within such period as the Controller may specify, to make representations or to amend the application.

(3) If the applicant fails to satisfy the Controller that the requirements for registration have been met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Controller shall refuse to accept the application.

(4) If it appears to the Controller that the requirements for registration are met, the Controller shall accept the application.

Publication, opposition proceedings and observations.

43. —(1) When an application for registration has been accepted, the Controller shall cause the application to be published in the Journal.

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

(3) Where an application has been published in the Journal, any person may, at any time before the registration of the trade mark, make observations in writing to the Controller as to whether the trade mark should be registered; and the Controller shall inform the applicant of any such observations.

(4) A person who makes observations as mentioned in subsection (3) shall not thereby become a party to the proceedings on the application.

Withdrawal, restriction or amendment of application.

44. —(1) An applicant may at any time by notice in writing withdraw his application or restrict the goods or services covered by the application; and, if the application has been published in the Journal, any withdrawal or restriction of the application shall also be published in the Journal.

(2) Any such withdrawal as is mentioned in subsection (1) shall be irrevocable after the expiry of three months from the date of notice of the withdrawal.

(3) In a case not falling within subsection (1), an application may be amended, at the request of the applicant, so long as the amendment does not substantially affect the identity of the trade mark or extend the goods or services covered by the application and, in particular, an amendment may be made (subject to that qualification) to correct—

(a) the name or address of the applicant;

(b) errors of wording or of copying; or

(c) obvious mistakes.

(4) Provision shall be made by rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.

Registration.

45. —(1) Where an application has been accepted and—

(a) no notice of opposition has been given within the period referred to in section 43 (2), or

(b) all opposition proceedings have been withdrawn or decided in favour of the applicant,

the Controller shall register the trade mark unless it appears to him, having regard to matters coming to his notice since accepting the application, that it was accepted in error.

(2) A trade mark shall not be registered unless any fee prescribed for the registration has been paid within the prescribed period and, if the fee has not been so paid, the application shall be deemed to be withdrawn.

(3) A trade mark when registered shall be registered as of the date of filing of the application for registration; and that date shall be deemed for the purposes of this Act to be the date of registration.

(4) On the registration of a trade mark the Controller shall publish the registration in the Journal and issue to the applicant a certificate of registration.

(5) The registration procedure shall be regarded as completed on the date of publication under subsection (4); and that date shall be entered in the register.

Registration: supplementary provisions.

46. —(1) Provision may be made by rules as to—

(a) the division of an application for the registration of a trade mark into several applications, each having the same filing date as the original application;

(b) the merging of separate applications or registrations; and

(c) the registration of a series of trade marks in one registration.

(2) A “series of trade marks” means a number of trade marks which resemble each other as to their material particulars and differ only in respect of matter of a non-distinctive character which does not substantially affect the identity of the trade mark.

Duration, Renewal and Alteration of Registered Trade Mark

Duration of registration.

47. —(1) A trade mark shall be registered for a period of ten years from the date of registration.

(2) Registration may be renewed in accordance with section 48 for further periods of ten years.

Renewal of registration.

48. —(1) Subject to payment of the prescribed renewal fee, the registration of a trade mark may be renewed at the request of the proprietor.

(2) Provision shall be made by rules for the Controller to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

(3) Subject to subsection (4), a request for renewal must be made, and the prescribed renewal fee paid, before the expiry of the registration.

(4) If subsection (3) is not complied with, a request for renewal may be made and the fee paid within such further period (of not less than six months) as may be prescribed; in which case the prescribed additional renewal fee must also be paid within that period.

(5) A term of renewal shall take effect from the expiry of the previous registration.

(6) If the registration is not renewed in accordance with the preceding provisions, the Controller shall remove the trade mark from the register; but provision may be made by rules for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed.

(7) The renewal, removal or restoration of the registration of a trade mark shall be published in the Journal.

Alteration of registered trade mark.

49. —(1) The proprietor of a registered trade mark may apply in the prescribed manner to the Controller for leave to add to or alter the trade mark in any manner which does not substantially affect its identity; and the Controller may refuse leave or grant it on such terms and subject to such limitations as the Controller thinks fit.

(2) In any case where it appears to the Controller expedient to do so, the Controller may cause an application under subsection (1) to be advertised in the Journal.

(3) If, within the prescribed time from the date of the advertisement of an application under subsection (2), any person gives notice to the Controller in the prescribed manner of opposition to the application, the Controller shall, after hearing the parties if so required, decide the matter.

(4) Where leave is granted as mentioned in subsection (1) and the trade mark concerned, in its altered form, has not already been advertised in an advertisement of the application under subsection (2), the trade mark, in its altered form, shall be advertised in the Journal.

Surrender, Revocation and Invalidity

Surrender of registered trade mark.

50. —(1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.

(2) Provision may be made by rules—

(a) as to the manner and effect of a surrender; and

(b) for protecting the interests of other persons having a right in the registered trade mark.

Revocation of registration.

51. —(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that, within the period of five years following the date of publication of the registration, the trade mark has not been put to genuine use in the State, by or with the consent of the proprietor, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;

(d) that, in consequence of the use made of it by or with the consent of the proprietor in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the State includes affixing the trade mark to goods or to the packaging of goods in the State solely for export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made; but, for this purpose, any such commencement or resumption of use occurring after the expiry of the five year period and within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

(4) An application for revocation may be made by any person, and may be made either to the Controller or to the Court, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and

(b) if in any other case the application is made to the Controller, he may at any stage of the proceedings refer the application to the Court.

(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—

(a) the date of the application for revocation; or

(b) if the Controller or the Court is satisfied that the grounds for revocation existed at an earlier date, that date.

(7) Revocation of a trade mark shall be entered in the register and the Controller shall publish the revocation of a trade mark in the Journal.

Grounds for invalidity of registration.

52. —(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 8 or any of the provisions referred to in that section; but where a trade mark was registered in breach of subsection (1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(2) The registration of a trade mark may be declared invalid on the grounds—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in paragraph (a) or (b) of subsection (4) of that section is satisfied,

unless the proprietor of that earlier trade mark or earlier right has consented to the registration.

(3) An application for a declaration of invalidity may be made by any person, and may be made either to the Controller or to the Court, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and

(b) if in any other case the application is made to the Controller, the Controller may at any stage of the proceedings refer the application to the Court.

(4) In the case of bad faith in the registration of a trade mark, the Controller may apply to the Court for a declaration of the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

(6) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, provided that this shall not affect transactions past and closed.

Effect of acquiescence.

53. —(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the State, while being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier trade mark or other right—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in connection with which it has been so used,

unless the registration of the later trade mark was applied for in bad faith.

(2) Where subsection (1) applies, the proprietor of the later trade mark shall not be entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against the proprietor's later trade mark.

Collective Marks

Collective marks.

54. —(1) A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks subject to the provisions of the First Schedule .

Certification Marks

Certification marks.

55. —(1) A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2) The provisions of this Act apply to certification marks subject to the provisions of the Second Schedule .