Trade Marks Act, 1996
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FIRST SCHEDULE Collective Marks | ||
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). |