PART IV

Administrative Provisions

The Register

66. —(1) The Controller shall keep a Register of Trade Marks; and references in this Act to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in the register.

(2) There shall be entered in the register in accordance with this Act—

(a) registered trade marks;

(b) particulars of registrable transactions affecting a registered trade mark; and

(c) such other matters as may be prescribed.

(3) The register shall be kept in such form as may be prescribed, and provision shall in particular be made for—

(a) public inspection of the register; and

(b) the supply of certified or uncertified copies of, or extracts from, entries in the register.

67. —(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.

(2) An application for rectification 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.

(3) Unless the Controller or the Court otherwise directs, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.

(4) The Controller may (of his own motion) correct any error made by him in any entry in the Register but, before doing so, he shall give notice of the proposed correction to any person who appears to him to be concerned.

(5) The Controller may, on request made in the prescribed manner by the proprietor of a registered trade mark—

(a) enter any change in the proprietor's name or address as recorded in the register;

(b) amend the specification of the goods in respect of which a trade mark is registered, provided that the amendment does not in any way extend the rights given by the existing registration of the trade mark; or

(c) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark.

(6) The Controller may, on request made in the prescribed manner by the licensee of a registered trade mark, enter any change in the licensee's name or address as recorded in the register.

(7) The Controller may remove from the register matter appearing to him to have ceased to have effect.

68. —(1) Provision may be made by rules authorising the Controller to do such things as the Controller considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks.

(2) Provision may, in particular, be made for the amendment of existing entries on the register so as to accord with the new classification.

(3) Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the Controller that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person.

(4) The rules may empower the Controller—

(a) to require the proprietor of a registered trade mark, within such time as may be prescribed, to file a proposal for amendment of the register; and

(b) to cancel or refuse to renew the registration of the trade mark in the event of the proprietor failing to do so.

(5) A proposal under subsection (4) (a) shall be advertised, and may be opposed, in such manner as may be prescribed.

Powers and Duties of the Controller

69. —(1) The Controller may require the use of such forms as he may direct for any purpose relating to the registration of a trade mark or any other proceedings before the Controller under this Act.

(2) The forms, and any directions of the Controller with respect to their use, shall be published in the Journal.

70. —(1) After publication of an application for registration of a trade mark, the Controller shall on request provide a person with such information as may be prescribed and permit him to inspect such documents as may be prescribed relating to the application or to any registered trade mark resulting from it.

(2) A request for the purposes of subsection (1) must be made in the prescribed manner and be accompanied by the appropriate fee (if any).

(3) Before publication of an application for registration of a trade mark, documents or information constituting or relating to the application shall not be published by the Controller or communicated by the Controller to any person except—

(a) in such classes of case and to such extent as may be prescribed; or

(b) with the consent of the applicant;

but subject to the following provisions of this section.

(4) Where a person has been notified—

(a) that an application for registration of a trade mark has been made, and

(b) that the applicant will if the application is granted bring proceedings against that person in respect of acts done after publication of the application,

that person may make a request under subsection (1) notwithstanding that the application has not been published and that subsection shall apply accordingly.

71. —Where any discretionary power is, by or under this Act, given to the Controller, that power shall not be exercised adversely to any applicant for or proprietor of a trade mark or to any party in any proceedings before the Controller, without that applicant, proprietor or party being given an opportunity of being heard as regards the exercise of that power.

72. —(1) The Controller may, in any proceeding before him under this Act, order the payment to any party of such costs (if any) as the Controller may consider reasonable and direct how and by what party they are to be paid; and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect.

(2) Where, under this Act, a party who neither resides nor carries on business in the State or in any other state which may be prescribed is a party to any proceedings before the Controller, the Controller or, in the case of any appeal, the Court, may require that party to give security for the costs of the proceedings.

(3) If a requirement under subsection (2) is not complied with, the Controller or the Court, as may be appropriate, may treat the proceedings as abandoned.

73. —In subsection (1) of section 92 of the Patents Act, 1992 (which relates to evidence in proceedings before the Controller under that Act or any other enactment) after the words “before the Controller” there shall be inserted “(including proceedings under the Trade Marks Act, 1996)”.

74. —(1) The Controller shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention, arrangement or engagement to which the State is a party.

(2) The Controller shall not have any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination.

(3) No proceedings shall lie against an officer of the Controller in respect of any matter for which, by virtue of this section, the Controller is not liable.

75. —In the report on the execution of the provisions of this Act included in the Controller's annual report, prepared in accordance with section 103 of the Patents Act, 1992 , there shall be included a report on the discharge of the Controller's functions in relation to the Madrid Protocol.

Legal Proceedings and Appeals

76. —In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.

77. —(1) If, in proceedings before the Court, the validity of the registration of a trade mark is contested and it is found by the Court that the trade mark is validly registered, the Court may give a certificate to that effect.

(2) If the Court gives such a certificate and in subsequent proceedings—

(a) the validity of the registration is again questioned, and

(b) the proprietor obtains a final order or judgment in the proprietor's favour,

the proprietor shall be entitled to his costs as between solicitor and client unless the Court otherwise directs.

(3) Subsection (2) does not extend to the costs of an appeal in any proceedings.

78. —(1) In any proceedings before the Court (including an appeal) which involve or relate to—

(a) the revocation of the registration of a trade mark, or

(b) a declaration of the invalidity of the registration of a trade mark, or

(c) the rectification of the register, or

(d) any other matter in which the relief sought would affect the register,

the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court.

(2) Unless otherwise directed by the Court, in any proceedings before the Court the Controller may instead of appearing submit to the Court a statement in writing signed by the Controller, giving particulars of—

(a) any proceedings before the Controller in relation to the matter in issue;

(b) the grounds of any decision given by the Controller affecting it;

(c) the practice of the Patents Office in like cases; or

(d) such matters relevant to the issues and within the Controller's knowledge as the Controller thinks fit;

and the statement shall be deemed to form part of the evidence in the proceedings.

79. —(1) Unless otherwise provided by rules of court, within the period of three months from the date of a decision of the Controller under this Act, an appeal shall lie from the decision to the Court.

(2) On an appeal under this section—

(a) the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court: and

(b) the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

(3) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified point of law.

80. —In any proceedings before the Courts under this Act, the Controller shall not be awarded or be ordered to pay costs.

Rules and Fees

81. —(1) The Minister may make rules—

(a) for the purposes of any provision of this Act authorising the making of rules with respect to any matter; and

(b) for prescribing anything authorised or required by any provision of this Act to be prescribed,

and generally for regulating practice and procedure under this Act.

(2) Without prejudice to the generality of subsection (1), provision may, in particular, be made by rules under this section—

(a) as to the manner of filing of applications and other documents;

(b) requiring and regulating the translation of documents and the filing and authentication of any translation;

(c) as to the service of documents;

(d) authorising the rectification of irregularities of procedure; and

(e) prescribing time limits for anything required to be done in connection with any proceeding under this Act, and providing for the extension of any such limit (whether or not it has already expired).

82. —(1) There shall be charged by the Controller and paid in respect of applications and registration and other matters under this Act, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance.

(2) Provision may be made by rules to enable the payment of a single fee in respect of two or more matters.

(3) All fees charged by the Controller under this section shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

(4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.