Trade Marks Act, 1963
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Registered users. |
36.—(1) (a) Subject to this section, a person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions, provided that there subsists a prescribed relationship between the proprietor and the proposed registered user. | |
(b) The use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is in this Act referred to as the permitted use thereof. | ||
(2) The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor for the purposes of section 34 of this Act and for any other purposes for which such use is material under this Act or at common law. | ||
(3) (a) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant. | ||
(b) A proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. | ||
(4) Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user must apply in writing to the Controller in the prescribed manner and must furnish him with such documents, information or evidence as may be required under the rules or by the Controller. | ||
(5) When the requirements of subsection (4) of this section have been complied with, if the Controller, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark in relation to the proposed goods or any of them by the proposed registered user subject to any conditions or restrictions which the Controller thinks proper would not be contrary to the public interest, the Controller may register the proposed registered user as a registered user in respect of the goods as to which he is so satisfied subject as aforesaid. | ||
(6) The Controller shall refuse an application under subsection (4) of this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark. | ||
(7) Without prejudice to section 40 of this Act, the registration of a person as a registered user— | ||
(a) may be varied by the Controller as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the prescribed manner of the registered proprietor of the trade mark to which the registration relates; | ||
(b) may be cancelled by the Controller on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark; or | ||
(c) may be cancelled by the Controller on the application in writing in the prescribed manner of any person on any of the following grounds, that is to say— | ||
(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion; | ||
(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration; | ||
(iii) that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested. | ||
(8) Provision shall be made by the rules for the notification of the registration of a person as a registered user to any other registered user of the trade mark, and for the notification of an application under subsection (7) of this section to the registered proprietor and each registered user (not being the applicant) of the trade mark, and for giving to the applicant on such an application, and to all persons to whom such an application is notified and who intervene in the proceedings in accordance with the rules, an opportunity of being heard. | ||
(9) The Controller may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods in respect of which the trade mark is no longer registered. | ||
(10) Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof. | ||
(11) Any person who is registered under this Act as a registered user of a trade mark shall be deemed to have been so registered as of the date of the application for his registration as a registered user. |