Trade Marks Act, 1996
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SECOND SCHEDULE Certification Marks | ||
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. |