Trade Marks Act, 2003 (Act No. 46 of 2003, as amended by Act No. 50 of 2004), Saint Vincent and the Grenadines

SAINT VINCENT AND THE GRENADINES
TRADE MARKS ACT, 2003

[Act No. 46 of 2003 as amended by Act. No. 50 of 2004 - Unofficial Consolidation]

ARRANGEMENT OF SECTIONS SECTION

1. Short title and commencement

PART 1
PRELIMINARY

1. Interpretation
2. Authorised use of a trade mark
3. Use of trade mark

PART 2
TRADE MARKS AND TRADE MARK RIGHTS

1. Categories of trade marks which may be registered
2. Rights accrued by registration of trade mark
3. Nature of registered trade mark as property
4. Power of registered owner to deal with trade mark
5. Limitation of rights for similar trade marks registered by different persons

1. Trade mark as a sign describing article
2. Trade mark relating to article formerly manufactured under patent
3. Powers of authorised user of registered trade mark

PART 3
APPLICATION FOR REGISTRATION

1. Making of application
2. Application by joint owners
3. Claim for right priority
4. Duties of the Registrar with respect to application of Trade Marks
5. Right to appeal
6. Deferment of acceptance
7. Lapsing of application
8. Revocation of acceptance
9. Grounds for rejecting application
10. Trade mark that cannot be represented graphically
11. Trade mark not distinguishing applicants goods or services
12. Trade mark scandalous or its use contrary to law
13. Trade mark likely to deceive or cause confusion
14. Identical trade marks

1. Making of Divisional Application
2. Divisional application for registration of part of trade mark
3. Divisional application for registration of trade mark in respect of part of trade mark
4. Divisional application for registration of trade mark in respect of some goods

31.

Filing date

PART 5
APPLICATION FOR REGISTRATION OF SERIES OF TRADE MARKS

32. Application for registration of series of trade marks

33.

Opposition

1. Circumstances in which opposition may proceed in name of a person other than a person who filed the notice
2. Opposition proceedings
3. Decision of the Registrar

37.

Appeal

PART 7
GROUNDS FOR OPPOSING REGISTRATION

1. Opposition to registration of trade mark
2. Application not intending to use trade mark
3. Trade mark similar to trade mark that has acquired a reputation in Saint Vincent and the Grenadines
4. Trade mark containing or consisting of a false geographical indication
5. Application defective

PART 8

AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK
AND OTHER DOCUMENTS

1. Amendment of application for registration of trade mark
2. Amendment before particulars of application are published
3. Amendment after particulars of application have been published
4. Amendment of other documents
5. Appeal of decision on amendment

PART 9
REGISTRATION OF TRADE MARKS

1. Duty of Registrar to register
2. Registration - how effected
3. Colours in registered trade marks
4. Notification of registration
5. Date and term of registration
6. Ceasing of registration
7. Disclaimers
8. Request for renewal of registration
9. Notice of renewal due
10. Renewal before registration expires
11. Failure to renew
12. Renewal within twelve months after registration expires
13. Status of unrenewed trade mark

PART 10

AMENDMENT AND CANCELLATION OF REGISTRATION – ACTION BY
REGISTRAR

1. Correction of Register
2. Adaptation of classification
3. Amendment of particulars of trade mark entered in Register
4. Cancellation of registration

PART 11

AMENDMENT AND CANCELLATION OF REGISTRATION - ACTION BY
COURT

1. Amendment to correct error or omission
2. Amendment or cancellation on ground of contravention of condition
3. Amendment or cancellation - loss or exclusive rights to use trade mark
4. Amendment or cancellation: other specified grounds
5. Rectification may not be granted in certain cases if registered owner not at fault
6. Duties and powers of Registrar
7. Amendment of certificate of registration

PART 12
REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE

1. Application for removal of trade mark from Register
2. Time for making application
3. Referral to court
4. Notification of application
5. Notice of opposition
6. Removal of trade mark from the Register if application unopposed
7. Trade mark restored to Register if notice of opposition filed within extended time
8. Proceedings before Registrar
9. Burden on opponent to establish use of trade mark
10. Determination of opposed application
11. Determination of opposed application, localised use of trade mark
12. Register to comply with order of court
13. Appeal
14. Certificate of use of trade mark

PART 13
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS

1. Assignment of trade mark
2. Applications for record to be made of assignment of trade mark whose registration is sought
3. Recording of assignment of trade mark whose registration is sought
4. Application for record of assignment of registered trade mark to be entered in Register
5. Recording of assignment of registered trade mark
6. Notice of application to be given to person recorded as claiming interest in trade mark

PART 14

VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN
RESPECT OF TRADE MARKS

1. Object of Part
2. Application to have claims to interest recorded
3. Record of claims to interest
4. Amendment and cancellation
5. Record not proof of existence of right
6. Application to have claims to interest recorded
7. Record of claims to interest

99. Regulations for the amendment and cancellation of particulars

PART 16
IMPORTATION OF GOODS INFRINGING VINCENTIAN TRADE MARKS

PART 15
INFRINGEMENT OF TRADE MARKS
100.	Infringement
101.	Infringement of trade mark by breach of certain restrictions
102.	Exceptions to infringement of trade mark
103.	Goods to which a registered trade mark has been applied by or with consent of
	registered owner
104.	Prior use of indentical trade mark
105.	Action for infringement to be brought before Court
106.	Relief to be obtained from Magistrate’s Court
107.	Special case where claimant not entitled to damages
108.	Circumstances in which action may not be brought
109.	Groundless threats of legal proceedings
110.	Counterclaim by defendant in action on groundless threats

1. Notice of objection to importation
2. Comptroller may seize good infringing trade mark
3. Notice of seizure
4. Forfeiture of goods
5. Release of goods to owner where no action for infringement
6. Action for infringement of trade mark
7. Action for infringement by authorised user
8. Disposal of forfeited goods
9. Power of Comptroller to retain control of goods
10. Insufficient security
11. Government not liable for loss suffered because of seizure
12. Power to require information

PART 17 OFFENCES

1. Falsfying, etc. a registered trade mark
2. Falsely applying a registered trade mark
3. Manufacture and possession of die, etc. for use in commission of offence
4. Selling, etc. goods with false marks
5. Penalty for offences
6. False representations regarding trade marks
7. False entries in Register
8. Disobeying summons
9. Refusing to give evidence
10. Unauthorised persons not to act in trade marks matters
11. False representation about Commerce and Intellectual Property Office
12. Employee not to prepare documents
13. Conduct of directors, servants and agents

PART 18 COLLECTIVE TRADE MARKS

1. Application and definition
2. Application for registration
3. Limitation on rights given by registered collective trade mark
4. Assignment etc. of collective trade mark
5. Infrigement of collective trade mark

PART 19 CERTIFICATION TRADE MARKS

1. Interpretation
2. Rights given by registration of a trade certification trade mark
3. Rights of persons allowed to use certification trade mark
4. Rules governing the use of certification trade marks
5. Grant of application to register

viii
146.	Refusal to Register
147.	Variation of rules
148.	Rules to be available for inspection
149.	Assignment of registered certification trade mark
150.	Assignment of registered certification trade mark
151.	Rectification Register by order of Court
152.	Variation of rules by order of Court
153.	Copy of order and rules
	PART 20
	DEFENSIVE TRADE MARKS
154.	Defensive trade marks
155.	Application of Act
156.	Additional grounds for rejecting application for registration or opposing
	registration
157.	Amendment or cancellation of registration by order of corut
158.	Cancellation of registration by Registrar
	PART 21
	JURISDICTION AND POWERS OF COURTS
159.	Jurisdiction of the High Court
160.	Transfer of proceedings
161.	Appeals
162.	Registrar may appear in appeals
163.	Powers of Court
	PART 22
	ADMINISTRATION
164.	Registrar of Commerce and Intellectual Property Office
165.	Registrar’s powers
166.	Exercise of power by Registrar

1. Registrar to act as soon as possible
2. Deputy Registrar
3. Delegation of Registrar’s powers and functions

PART 23 THE REGISTER AND OFFICIAL DOCUMENTS

1. The Register
2. Register may be kept on computer
3. Register
4. Certified copies of documents

PART 24 MISCELLANEOUS

1. Making and signing applications and filing of documents

175.

Withdrawal of application etc.

176.

Address for service

177.

Change of name

178.

Death of applicant etc.

2. Description of registered trade mark
3. Evidence of usage of trade mark
4. Death of party to proceeding before Registrar

182.

Cost awarded by Registrar

183.

Security for costs

184.

Fees

185.

Extension of time

186.

Publication of documents

5. Use of trade mark for export trade

188.

Passing off actions

189.

Expenses

190.

Regulations

191.

Repeal

192.

Transitional

DR.FREDERICK BALLENTYNE [L.S.] Governor-General 30^th December, 2003

AN ACT to repeal and replace the Registration of United Kingdom Trade Marks Act (Cap. 113) and the Merchandise Marks Act (Cap. 106) and to provide for the promotion and protection of Trade Marks and for related matters.

[30^th December, 2003]

BE IT ENACTED by the Queen’s Most Excellent Majesty, by and with the advice

and consent of the House of Assembly of Saint Vincent and the Grenadines and by the

authority of the same as follows:

1. This Act may be cited as the Trade Marks Act, 2003 and shall come

_commencement into force on a day to be appointed by the Governor-General by order published in the Gazette, and different days may be appointed for different provisions and different purposes.

PRELIMINARY

2. (1) In this Act

Interpretation

“applicant” means the person in whose name an application is for the time being proceeding;

“approved form” means a form approved by the Registrar of the Commerce and Intellectual Property;

“assignment” in relation to a trade mark means an assignment by act of the parties concerned;

“attorney at law” means a person duly admitted and entitled to practise law in Saint Vincent and the Grenadines;

“authorised user of trade mark” means a person who uses the trade mark under the control of the owner of the trade mark;

“authorised use of a trade mark” means the use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark ;

“Comptroller” means the Comptroller of Customs appointed under the Customs (Control and Management) Act 1999;

“Convention Country” means a country which is a party to the Paris Convention for the Protection of Industrial Property 1883;

“Court” means High Court;

“covering” includes packaging, frame, wrapper, container stopper, lid or cap;

“date of registration” in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade marks in respect of those goods and services is to have had taken effect under section 52;

“designated owner” in relation to goods imported into Saint Vincent and the Grenadines means the person identified as the owner of the goods in the entry made pursuant to the Customs (Control and Management) Act 1999;

“existing registered trade mark” means a mark that was registered under Registration of United Kingdom Trade Marks Act Cap. 113 and whose registration is due to expire after the coming into force of this Act;

“file” means to lodge with the Commerce and Intellectual Property Office;

“filing date” means

(a)

in relation to an application for the registration of a trade mark other than a divisional application, the day on which the application is filed;

(b)

in relation to a divisional application for the registration of a trade mark the day on which the initial application within the meaning of section 27 was filed;

“geographical indication” in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods

indicating that the goods

(a)

originated in that country, region or locality; and

(b)

have a quality, reputation or other characteristic attributable to their geographical origin;

“goods of a person” means goods dealt with or provided by the person in the course of trade;

“label” includes a band or ticket;

“limitations” means limitations of the exclusive right to use a trade mark given by the registration of the trade mark including limitations of that right as to

(a)

mode of use; or

(b)

extent of use in Saint Vincent and the Grenadines;

(c)

use in relation to goods or services to be exported;

“Minister” means the Minister with responsibility for Intellectual Property;

“notified trade mark” means a trade mark in respect of a notice under section 1 is in force;

“objector” in relation to seized goods, means any person who has given a notice under section 33 that is in force;

“official journal” means a publication issued by or at the direction of the Commerce and Intellectual property Office containing the matters that are required by this Act to be advertised and included advertisement in the Gazette;

“old register” means the Register of Trade Marks kept under the Registration of United Kingdom Trade Marks Act;

“opponent” in relation to the registration of a trade mark, means

(a)

the person who has filed a notice of opposition to the registration of the trade mark; or

(b)

where section 33 (5) applies, a person in whose name the notice of opposition is taken to have been filed;

“originate” in relation to wine, has the meaning given by section 2 (7) (1) (c) (ii);

“pending” in relation to an application for the registration of a trade mark, under this Act has the meaning given by section 2 (4);

No. 43 of 2003

“predecessor in title” in relation to a person who claims to be

the owner of a trade mark, means

(a)

if the trade mark was assigned or transmitted to one or more than one person before it was assigned or transmitted to the first-mentioned person, that other person or any one of those other persons; or

(b)

if paragraph (a) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first-mentioned person;

“priority date” has the meaning given by section 2 (6);

“Register” means the Register of Trade Marks kept under section 170;

“registered owner” in relation to a registered trade mark, means the person in whose name the trade mark is registered;

“registered trade mark” means a trade mark whose particulars are entered in the Register under this Act;

“Registrar” means the Registrar of Commerce and Intellectual Property designated under the Commerce and Intellectual Property Office Act;

“registration number” in relation to a registered trade mark, means the number given to it under section 49 (2);

“seized goods” means goods seized under section 112;

“services of a person” means services dealt with or provided in the course of trade by the person;

“sign” includes a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour or sound and any combination thereof;

“State” means the state of Saint Vincent and the Grenadines;

“trade mark” means a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;

“transmission” means

(a)

transmission by operation of law; or

(b)

devolution on the personal representative of a deceased person; or

(c)

any other kind of transfer except assignment;

“use of trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods, including secondhand goods;

“use of trade mark in relation to services” means the use of the trade mark in physical or in other relation to the services.

(2) For the purposes of this Act

(a)

a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

(b)

a trade mark is taken to be applied in relation to goods or services if it is

(i)

applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

(ii)

used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

(c)

a trade mark is taken also to be applied in relation to goods or services if it is used

(i)

in an advertisement including an advertisement by electronic means;

(ii)

in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

and goods are delivered, or services provided, as the case may be, to a person following a request or order made by referring to the trade mark as so used.

(3)

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

(4)

(1) An application for the registration of a trade mark under this act is pending from the time it is filed until

(a)

it lapses, is withdrawn or is rejected;

(b)

if the Registrar refuses under section 36 to register the trade mark and there is no appeal against the decision, the end of the period allowed for the appeal; or

(c)

the Registrar refuses to register the trade mark; and

(i)

there is an appeal against the decision; and

(ii)

the decision is confirmed on appeal;

the day on which the decision is confirmed on appeal; or

(d) the trade mark is registered.

(2)

An application for the registration of a trade mark under the Registration of United Kingdom Trade Marks Act Cap. 113 is pending if immediately before the commencement date of this Act the application had not been withdrawn;

(5)

The priority date for the registration of a trade mark in respect of particular goods or services is

(a)

if the trade mark is registered, the date of registration of the trade mark in respect of those goods or services; or

(b)

if the registration of the trade mark is being sought the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark was registered.

(6)

A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register.

(7) (1) For the purposes of this Act

(a)

goods are similar to other goods if

(i)

they are the same as the other goods; or

(ii)

they are of the same description as that of the other goods;

(b)

services are similar to other services

(i)

if they are the same as the other services; or

(ii)

if they are of the same description as that of the other services; and

(c)

a wine is taken to have originated

(i)

in a foreign country or in the state only if the wine is made within the territory of that country or the state, as the case may be; and

(ii)

a wine is taken to have originated in a particular region or locality of a foreign country or of the

Authorised use of a trade mark

Use of trade mark

Categories of trade marks which may be

region or locality of a foreign country or of the state only if the wine is made from grapes grown in that region or locality.

3. (1) If the owner of a trade mark exercises quality control over goods or services

(a)

dealt with or provided in the course of trade by another person; and

(b)

in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(2) If

(a)

a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)

the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

the other person is taken, for the purposes of section 4 (3), to use the trade mark in relation to the goods or services under the control of the owner.

(3) Subsections (1) and (2) do not limit the meaning of the expression “under the control of” under section 4 (3) and in the definition of “authorised use of a trade mark” under section 2.

4. (1) If the Registrar or the Court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the Court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

(2)

A trade mark is capable of being represented graphically if it can be represented on paper.

(3)

A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

PART 2

TRADE MARKS AND TRADE MARK RIGHTS

5. (1) A trade mark may be registered in accordance with this Act in respect of

(2) The registration of a trade mark may be in respect of goods or services of more than one class.

6. (1) If a trade mark is registered, the registered owner of the trade mark shall have, subject to this Part, the exclusive rights

(2)

Pursuant to subsection (1) the rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.

(3)

If the trade mark is registered subject to conditions or limitations, the rights of the registered owner shall be restricted by those conditions or limitations.

(4)

If the trade mark is registered in the name of two or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were

the rights of a single person.

1. A registered trade mark shall be deemed to be the personal property of the owner of the trade mark and any rights in respect of it shall be enforceable in the same way as rights in respect of any other personal property.
2. (1) The registered owner of a trade mark may, subject only to any rights vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing.

(2) Subsection (1) applies only to a person who deals with the registered owner as a purchaser in good faith for value, and without notice of any fraud on the part of the owner.

9. If the trade marks that are substantially identical or deceptively similar have been registered by more than one person whether in respect of the same or different goods or services, the registered owner of any one of those trade marks shall not have the right to prevent the registered owner of any other of those trade marks from using that trade mark

except to the extent that the first-mentioned owner is authorised to do so under the registration of his trade mark.

10. (1) This section shall apply if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.

(2)

If the trade mark consists of the sign, the registered owner

(a)

shall not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to

(i)

the article or substance or other goods of the same description; or

(ii)

the service or other services of the same description; and

(b)

is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4).

(3)

If the trade mark contains the sign, the registered owner

(a)

does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to

(i)

the article or substance or other goods of the same description; or

(ii)

the service or other services of the same description; and

(b)

is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4).

(4) For the purposes of subsection (2) and (3), the Court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.

11. (1) This section shall apply if

(2) If the trade mark consists of the sign referred to in subsection (1), the registered owner

12. (1) Subject to any agreement made between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following:

(2)

Subject to subsection 3 if the authorised user of the trade mark brings an action for infringement of the trade mark, the authorised user shall make the registered owner of the trade mark a defendant in the action.

(3)

The registered owner shall not be liable for costs if he does not take part in the proceedings for an action brought pursuant to subsection (2).

13. (1) A person may apply to the Registrar for the registration of a trade mark in respect of goods or services if:

(2) The application shall:

(3) Without limiting the particulars that may be included in an application, the application shall:

(4) An application other than an application under section 32 for the registration of two or more trade marks as a series, may be made in respect of goods and services of one or more of the classes prescribed in the Regulations.

14. If the relationship between two or more persons interested in a trade mark is such that none of them is entitled to use the trade mark except

15. (1) If:

(2) Pursuant to subsection (1) the priority claimed shall be for the registration of the trade mark in respect of goods or services

16. (1) The Registrar shall,

(2)

If a question arises as to the class in which goods or services are comprised:

(a)

that question shall be decided by the Registrar; and

(b)

that decision of the Registrar shall not be subject to appeal and may not be called into question in an appeal or other proceedings under this Act.

(3)

The Registrar shall, after the examination made pursuant to subsection (1), accept the application made pursuant to section 13 unless he is satisfied that:

(a)

the application has not been made in accordance with this Act; or

(b)

there are grounds for rejecting it.

(4)

The Registrar shall not reject an application made pursuant to section 13 without giving the applicant an opportunity of being heard.

(5) The Registrar shall;

17. An applicant may appeal to the Court against a decision made by the Registrar:

1. The Registrar may defer the acceptance of an application in the circumstances, and for the period, provided for in the Regulations.
2. (1) Subject to subsection (2), an application to register a trade mark shall lapse if it is not accepted within the prescribed period or within that period as extended in accordance with the Regulations.

within that period as extended in accordance with the Regulations.

(2) If, after the prescribed period or the prescribed period as extended has expired, the Registrar extends under section 185 the period within which the application may be accepted, the application

20. (1) If, before a trade mark is registered, the Registrar is satisfied

the Registrar may revoke the acceptance of the application.

(2) If the Registrar revokes the acceptance of the application

21. (1) An application for the registration of a trade mark shall be rejected if the trade mark contains or consists of a sign that is prescribed for the purposes of this subsection not to be used as a trade mark.

(2) An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:

22. An application for the registration of a trade mark shall be rejected if the trade mark cannot be represented graphically.

23. (1) For the purposes of this section, the use of a trade mark by a predecessor in title of an application for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

(2)

An application for the registration of a trade mark shall be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons.

(3)

In deciding the question whether or not a trade mark is capable of distinguishing the goods or services of the applicant from the goods or services of any other person, the Registrar shall first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services of the applicant from the goods or services of the other person.

(4)

Pursuant to subsection (3), if the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone that the trade mark is capable of distinguishing the designated goods or services, the following shall apply:

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(5) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services of the applicant

adapted to distinguish the designated goods or services of the applicant from the goods or services of any person, the following provisions shall apply:

24. An application for the registration of a trade mark shall be rejected if:

1. An application for the registration of a trade mark in respect of particular goods or services shall be rejected if, because of some connotation that the trade mark or sign contained in the trade mark has its use in relation to those goods or services would be likely to deceive or cause confusion.
2. (1) Subject to subsections (3) and (5), an application for the registration of a trade mark in respect of goods shall be rejected if

(2) Subject to subsections (3) and (5), an application for the registration of a trade mark in respect of services shall be rejected if:

(3) If the Registrar in either case is satisfied

(4)

Pursuant to subsection 3, if the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(5)

If the Registrar in either case is satisfied that the applicant, or the applicant and his predecessor in title, have continuously used the applicant’s trade mark for a period

(a)

beginning before the priority date for the registration of the other trade mark in respect of:

(i)

the similar goods or closely related services; or

(ii)

the similar services or closely related goods; and

(b)

ending on the priority date for the registration of the applicant’s trade mark;

27. (1) A person who has made an application for the registration of a trade mark in respect of certain goods or services or both may, in accordance with this Part, make another application

(2)

For the purposes of this Part, the initial application shall be taken to be the application of which particulars have been published by the Registrar under section 16.

(3)

For the avoidance of doubt a divisional application is an application made under this Part.

(4) A divisional application for the registration of a trade mark

may be made only if the initial application for the registration of the trade mark is pending.

28. (1) This section provides for the making of a divisional application for the registration of a part only of the trade mark that is subject of the initial application.

(2)

If a part of a trade mark, by itself, may be registered as a trade mark, the applicant for the registration of the trade mark may, within the prescribed period but subject to subsection (3), make a divisional application for the registration of that part as a trade mark in respect of any or all of the goods or services or both specified in the initial application.

(3)

If the initial application has been accepted, the divisional application may not be made after the acceptance is advertised in the official journal pursuant to section 16 (5).

29. (1) This section provides for the making of a divisional application for the registration of a trade mark in respect of some of the goods or services or both in respect of which registration of the trade mark is being sought by the initial application.

(2) The applicant for the registration of a trade mark may, subject to subsection (3), make a divisional application for the registration of the trade mark in respect of any but not all of:

(3) If the initial application has been accepted, the divisional application may not be made after the acceptance is advertised in the official journal pursuant to section 16.

30. (1) This section shall

(2) If the initial application is amended:

(3)

If the initial application has been accepted, the divisional application may not be made after the acceptance is advertised in the official journal, pursuant to section 16.

(4)

If the initial application whether it has already been amended or not is amended after its acceptance has been advertised in the official journal, the applicant may, within the prescribed period, make a divisional application for the registration of the trade mark in respect of any or all of the goods or services or both that have been excluded from the application whose acceptance was advertised in the official journal, pursuant to section 16.

31. A divisional application shall be taken to have been filed on the day on which the initial application concerned was filed.

APPLICATION FOR REGISTRATION OF SERIES OF TRADE
MARKS

32. (1) A person may make a single application under section 13(1) for the registration of two or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters

(2) If:

33. (1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

(2)

The notice of opposition shall be in a prescribed form and shall be filed within that period as extended in accordance with the regulations made hereunder.

(3)

The opponent shall serve a copy of the notice of the opposition filed pursuant to subsection (1) on the applicant.

(4)

The registration of a trade mark may be opposed only on the grounds specified under Part 7 and no other grounds.

(5) If:

34. If:

35. (1) The Registrar shall give to the opponent and to the applicant an opportunity of being heard on the opposition.

(2) Regulations shall prescribe the procedure for hearing opposition proceedings.

36. Unless the proceedings are discontinued or dismissed, the Registrar shall at the end decide

having regard to the extent if any to which any ground on which the application was opposed has been established.

37. An applicant or opponent may appeal to the Court from a decision of the Registrar under section 36.

1. The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Part 3, except the ground that the trade mark cannot be represented graphically.
1. The registration of a trade mark may be opposed on the ground that
1. the applicant is not the owner of the trade mark; or
1. the applicant does not intend
1. to use, or authorise the use of the trade mark in Saint Vincent and the Grenadines; or
2. to assign the trade mark to a body corporate for use by the body corporate in Saint Vincent and the Grenadines;

in relation to the goods or services or both specified in the application.

40. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that

41. (1) The registration of a trade mark in respect of particular goods may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for other goods originating in

(2) An opposition on a ground referred to in subsection (1) shall fail if the applicant establishes that

(3) An opposition on a ground referred to in subsection (1) shall also fail if the applicant establishes that:

(4) For the purpose of this section;

42. The registration of a trade mark may be opposed on any of the following grounds:

AMENDMENT OF APPLICATION FOR REGISTRATION OF A
TRADE MARK AND OTHER DOCUMENTS

43. (1) The Registrar may, at the written request of the applicant or his agent, amend an application for the registration of a trade mark in accordance with section 44 or 45.

(2) If:

the Registrar may, on his own initiative but in accordance with the regulations, amend the application as necessary to remove any ground on which the application could be rejected so as to ensure that the application is made in accordance with this Act.

44. If:

45. If the particulars of an application have been published under section 16 (1), an amendment may be made:

46. The Registrar may, at the written request of the person who has filed an application other than an application for the registration of a trade mark, a notice or other document for the purposes of this Act or at the written request of the person’s agent, amend the application, notice or document

47. An appeal lies to the Court from a decision of the Registrar under this Part.

48. (1) The Registrar shall, within the period prescribed, register a trade mark that has been accepted for registration:

(2)

Upon registration of a trade mark, pursuant to subsection (1) the Registrar shall give it a number by which it may be identified.

49. (1) The trade mark shall be registered

(a)

in the name of the applicant for registration; and

(b)

in respect of the goods or services or both specified in the application at the time of registration; and

(c)

subject to the conditions, and the limitations if any imposed by the Registrar in accepting the application for registration or deciding to register the trade mark.

(2)

The Registrar shall enter in the register the particulars stated in subsection (1) and shall also enter the following

(a)

a graphical representation of the trade mark;

(b)

its registration number; and

(c)

any other particulars that are required by this Act to be entered in the Register.

(3)

If two or more persons applied together for the registration of the trade mark the applicants shall be registered as joint owners of the trade mark.

50. (1) A trade mark may be registered with limitations as to colour.

(2)

The limitations may be in respect of the whole, or a part, of the trade mark.

(3)

To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

51. When a trade mark has been registered, the Registrar shall

52. (1) The registration of a trade mark in respect of goods or services or both is taken to have had effect from and including the filing date in respect of the application for registration.

(2) Pursuant to subsection (1), if

(3) Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, the registration of the trade mark expires ten years after the filing date in respect of the application for its registration.

53. The registration of a trade mark ceases if:

54. (1) An applicant for the registration of a trade mark, or the registered owner of a registered trade mark, may , by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark.

(2)

A disclaimer under subsection (1) shall affect only the rights given by this Act to the registered owner of the trade mark on registration of the trade mark.

(3)

The Registrar shall, on registering the trade mark or on receiving notice of the disclaimer whichever is later, enter the particulars of the disclaimer in the Register.

(4) A disclaimer properly made shall not be revoked.

55. (1) Any person may, within the prescribed period before the registration of a trade mark expires, file a request with the Registrar seeking renewal of the registration.

(2) The request under subsection (1) shall be filed in the prescribed form.

1. If, within the prescribed period, the Registrar has not received a request for the renewal of the registration of the trade mark, the Registrar shall, in accordance with the regulations, notify the registered owner of the trade mark that the renewal is due.
2. (1) If a request for the renewal of the registration of a trade mark is made in accordance with section 55, the Registrar shall renew the registration for a period of ten years from the day on which the registration of the trade mark would have expired if it were not renewed.

(2) The Registrar shall give notice in the prescribed form, of a renewal to the registered owner of the trade mark in accordance with the regulations.

58. If the registration of a trade mark is not renewed under section 55, then:

59. If, within twelve months after the registration of a trade mark has

expired, a person makes a request to the Registrar, in accordance with section 55, to renew the registration of the trade mark, the Registrar shall renew the registration of the trade mark for ten years from the day on which the registration expired.

60. If:

1. The Registrar may, on his own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.
2. The Registrar may, in accordance with the regulations, amend the Register whether by making, removing or altering entries, for the purpose of adapting the designation of the goods or services in respect of which trade marks are registered to reflect any change that has occurred in the classification of goods or services for the purposes of this Act.
1. (1) Subject to Part 14, the Registrar may, at the written request of the registered owner of a registered trade mark:
1. amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application for the registration of the trade mark were published under section 16;
2. amend any particulars entered in the Register relating to any goods or services in respect of which the trade mark is registered if the amendment does not have the effect of extending the rights that apart from the amendment , the owner has under the registration; or
3. amend, or enter in the Register, any other particular in respect of the trade mark if the amendment or entry does not have the effect of extending the rights that, apart from

(2) An appeal lies to the Court from a decision of the Registrar under subsection (1).

64. (1) The Registrar shall cancel the registration of a trade mark in accordance with the regulations if the registered owner asks in writing that it be so cancelled.

(2) Before cancelling the registration of the trade mark, the Registrar shall notify in accordance with the Regulations

65. The Court may, on the application of an aggrieved person, order that the Register be rectified by

66. The Court may, on the application of an aggrieved person, order that the Register be rectified by

67. (1) If section 10 or 11applies in relation to a registered trade mark, the court may, on the application of an aggrieved person, but subject to subsection (2) and section 69, order that the Register be rectified by

having regard to the effect of section 10 or 11as the case may be on the right of the registered owner of the trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.

(2) If section 10 or 11 applies in relation to the trade mark because the trade mark contains a sign that

the Court may decide not to make an order under subsection (1) and allow the trade mark to remain on the Register in respect of the article or substance or goods of the same description or the service or services of the same description or subject to any condition or limitation that the Court may impose.

68. (1) Subject to subsection (2) and section 69, the Court may, on the application of an aggrieved person, order that the Register be rectified by

(2) An application referred to under subsection (1) may be made only on any of the following grounds;

69. (1) The Court may not grant an application for rectification made

if the registered owner of the trade mark satisfies the Court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.

(2) In making a decision under subsection (1), the Court

70. (1) A person applying to Court under this Part shall give notice of the application to the Registrar.

(2)

Except for cases where the Court directs the Registrar to appear, the Registrar may appear before the Court and be heard at his discretion.

(3)

A person applying to the Court under this Part, shall give to the Registrar a copy of any order made by the Court under this Part and the Registrar shall comply with the order.

71. If the Registrar amends any particular entry in the Register in respect of a trade mark, the Registrar may also amend the certificate of registration if he thinks it is appropriate to do so.

REMOVAL OF TRADE MARK FROM REGISTER FOR NONUSE

72. (1) A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

(3) An application shall not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in the Court, but the person aggrieved may apply to the Court for an order directing the Registrar to remove the trade mark from the Register.

in relation to the goods or services or both to which the application relates and the registered owner has not used the trade mark in Saint Vincent and the Grenadines or has not used the trade mark in good faith in Saint Vincent and the Grenadines in relation to those goods or services or both at any time before the period of one month ending on the day on which the application is filed or;

in relation to the goods or services or both to which the application relates.

(5) If the right or interest on which a person relied to make an application under subsection (1) or (3) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the Court as the case requires, be substituted for the first-mentioned person as the applicant.

73. (1) Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark.

(2) An application on the ground referred to in section 72 (4)(b) not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.

74. If:

the Registrar may refer the matter to the court and the Court may hear and determine the matter as if an application had been made to it under section 72 (3).

75. (1) If an application has been made to the Registrar under section 72 (1), the Registrar shall give notice of the application in accordance with the Regulations.

(2)

If the application is in respect of a trade mark already entered on the Register, the Registrar shall advertise the application in the official journal.

(3)

If the application referred to in subsection (1) is in respect of a trade mark whose registration is being sought, the Registrar is to advertise the application in the official journal only if the trade mark is registered.

76. (1) Any person may oppose an application under section 72 by filing a notice of opposition with the Registrar or the Court, as the case requires

77. (1) If there is no opposition to an application to the Registrar under section 72 (1), the Registrar shall remove the trade mark from the Register in respect of the goods or services or both specified in the application.

(2)

If there is no opposition to an application to a court under section 72 (3), the Court shall order the Registrar to remove the trade mark from the Register in respect of the goods or services or both specified in the application.

(3)

The Court shall cause a copy of the order to be served on the Registrar and the Registrar shall comply with the order.

78. If

the Registrar shall restore the trade mark to the Register and the trade mark shall be deemed not to have been removed from the Register.

1. If an application to the Registrar is opposed, the Registrar shall deal with the matter in accordance with the regulations.
2. (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

(2)

For the purposes of subsection (1) (b), the opponent shall be deemed to have rebutted the allegation that the trade mark has not, at any time before the period referred to in that subsection, been used, or been used in good faith, by its registered owner in relation to the relevant good or services or both if

(a)

the opponent has established that the trade mark or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services before that period; or

(b)

in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register

(i)

the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee in relation to those goods or services or both before that period and that that use was in accordance with the terms of the assignment; and

(ii)

the Registrar or the Court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee before that period as having been a use of the trade mark in relation to those goods or services or both by the registered owner.

(3)

For the purposes of subsection 1 (c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time

during the period referred to in that subsection been used, or been used in good faith, by its registered owner in relation to the relevant goods or services or both if

81. (1) Subject to subsection (3) and to section 82, if

the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods or services or both to which the application relates.

(2) Subject to subsection (3) and to section 82, if, at the end of the proceedings relating to an opposed application, the Court is satisfied that the grounds on which the application was made have been established, it may order the Registrar to remove the trade mark from the Register in

may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods or services or both to which the application relates.

(3) If satisfied that it is reasonable to do so, the Registrar or the Court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

82. (1) This section shall apply if an application for the removal of a trade mark from the Register is made on the ground referred to in section 72 (4) (b) and

the Registrar may decide, or the Court may order, that the challenged trade mark should be removed from the Register but that the registration of the trade mark should be subject to the conditions or limitations that the Registrar of the Court considers necessary to ensure that the registration does not extend to the use of the trade mark in relation to goods or services dealt with or provided in the specified place; or goods or services to be exported to the specified market.

or services to be exported to the specified market.

(3) For the purposes of this section “challenged trade mark” means the trade mark in relation to which an application for removal is made pursuant to subsection (1).

1. If the Court makes an order under section 81 or 82, it shall cause copy of the order to be served on the Registrar and the Registrar shall comply with the order.
2. An appeal lies to the Court from a decision of the Registrar under section 81 or 82.
1. (1) If in any proceedings relating to an opposed application the Registrar or the Court has found that
1. a trade mark has been used in good faith during a particular period; or
2. a trade mark has not been used during a particular period solely because of circumstances that were an obstacle to its use;

the Registrar or the Court shall, if so requested by the registered owner of the trade mark, give to the registered owner a certificate of those findings.

(2) In any subsequent proceedings in which non-use of the trade mark is alleged

ASSIGNMENT AND TRANSMISSION OF TRADE MARKS

86. (1) A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted in accordance with this section.

(2) An assignment or transmission may be partial, that is it may apply to some only of the goods or services or both in respect of which registration is sought or the trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular area.

(3) An assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods or services or both.

87. (1) If a trade mark whose registration is being sought is assigned or transmitted:

88. (1) If an application pursuant to section 87 complies with this Act, the Registrar shall

(2) On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark.

89. (1) If a registered trade mark is assigned or transmitted,

(2) The application shall be filed in a prescribed form together with any prescribed document, in accordance with the regulations.

90. (1) If the application made pursuant to section 89 complies with this Act, the Registrar shall, at, or within, the time provided for in the Regulations

(2) The particulars pursuant to subsection (1) (a) are taken to have been entered in the Register on the day on which the application was filed, and the registration of the beneficiary as the owner of the trade mark pursuant to subsection 1 (b) is taken to have had effect from and including that day.

91. If an application made under section 87 or 89 in relation to the assignment or transmission of a trade mark complies with this Act, the Registrar shall notify in accordance with the regulations any person recorded under Part 14 as claiming an interest in, or a right in respect of, the trade mark.

VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN
AND RIGHTS IN RESPECT OF TRADE MARKS

92. This Part makes provision

93. (1) If

(2) The application shall be in a prescribed form and shall be filed in accordance with the Regulations.

94. (1) If an application has been made in accordance with section 93, the Registrar shall enter in the Register the particulars of the claim set out in the application.

the Registrar shall enter those particulars in the Register.

1. Regulations may provide for the amendment and cancellation of particulars entered in the Register under this Part;
2. The fact that a record has been made in the Register under this Part that a person claims an interest in, or a right in respect of, a registered trade mark shall not be proof or evidence that the person has that right or interest.

97. (1) If

they may together apply to the Registrar for a record to be kept of the other person’s claim.

(2) The application shall be in an approved form and shall be filed in accordance with the Regulations.

1. If an application has been made in accordance with section 97, the Registrar shall record in the manner that the Registrar thinks fit, but not in the Register, the particulars of the claim set out in the application.
2. Regulations may provide for the amendment and cancellation of particulars recorded under this Part.

100. (1) A person infringes a registered trade mark if that person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

(2) Subject to subsection (3) a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to

(3)

A person shall not be taken to have infringed the trade mark if the person establishes that his using the sign is not likely to deceive or cause confusion.

(4) A person infringes a registered trade mark if

(a)

the trade mark is well known in Saint Vincent and the Grenadines; and

(b)

the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to

(i)

unrelated goods that are not of the same description as that of the goods in respect of which the trade mark is registered, or are not closely related to services in respect of which the trade mark is registered; or

(ii)

unrelated services that are not of the same description as that of the registered goods; and

(c)

because the trade mark is well known the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and

(d)

for that reason, the interests of the registered owner are likely to be adversely affected.

(5)

In deciding, for the purposes of subsection (4) (a), whether a trade mark is well known in Saint Vincent and the Grenadines, the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason, shall be taken into account.

101. (1) This section shall apply to a registered trade mark if the registered owner, or an authorised user of the trade mark having power to do so, has caused to be displayed on goods in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice prohibiting any act under subsection (2) to be done in relation to the goods.

(2) Pursuant to subsection (1) the following acts shall be deemed to be prohibited:

(3)

Subject to subsection (4), a person infringes a trade mark to which this section applies if the person

(a)

is the owner of registered goods; and

(b)

in the course of trade, or with a view to a dealing with the goods in the course of trade

(i)

does an act that is prohibited under the notice of prohibition; or

(ii)

authorises that act to be done.

(4)

The trade mark shall not be infringed if the owner of the goods

(a)

acquired them in good faith and without being aware of the notice of prohibited; or

(b)

became the owner of the goods by virtue of a title derived from a person who had so acquired them.

102. (1) Notwithstanding section 101, a person shall not infringe a registered trade mark if:

(2) Notwithstanding section 100, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.

103. (1) Notwithstanding section 100 a person who uses a registered trade mark

104. (1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to

if the person, or the person and his predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before the date of the registration of the registered trade mark, or the date the registered owner of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Acts, first used the trade mark, whichever is earlier.

(2)

If the unregistered trade mark has continuously been used only in a particular area in Saint Vincent and the Grenadines subsection

(1)

shall apply only to the use of the trade mark by the person in that area.

105. (1) An action for an infringement of a registered trade mark may be brought in the Court.

(2) The relief that the Court pursuant to subsection (1) may grant in an action for infringement of a registered trade mark includes:

1. Deleted by Act No.50//2004.
1. If
1. in an action for the infringement of a trade mark registered in respect of particular goods or services, the court finds that the defendant has infringed the trade mark; and
2. the defendant has applied under section 72 (3) for an order directing the Registrar to remove the trade mark from the Register in respect of those goods or services; and

the Court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the particular period.

108. If the registration of a trade mark is renewed under section 59 within twelve months after it has expired, an action may not be brought in respect of an act that

109. (1) If a person threatens to bring an action against another person on the ground that the threatened person has infringed

any person aggrieved by the threat may bring an action in the Court.

(2)

The purpose of the action pursuant to subsection (1) shall be to

(a)

obtain from either court a declaration that the defendant has no grounds for making the threat; and

(b)

obtain from either court an injunction restraining the defendant from continuing to make the threat;

(c)

recover any damages that the person aggrieved has sustained because of the conduct of the defendant.

(3)

An action may be brought whether or not the respondent is the registered owner, or an authorised user, of the trade mark alleged to have been infringed.

(4)

Pursuant to subsection (1) the court may not find in favour of the claimant if the respondent satisfies the court that:

(a)

the trade mark is registered; and

(b)

the acts of the threatened person in respect of which the respondent threatened to bring an action constitute an infringement of the trade mark.

(5)

An action may not be brought, or if brought may not proceed, under this section if the registered owner of the trade mark, or an

under this section if the registered owner of the trade mark, or an authorised user of the trade mark having power to bring an action for infringement of the trade mark, with due diligence, begins and pursues an action against the threatened person for infringement of the trade mark.

110. If the respondent in an action brought under section 109 would be entitled to bring against the claimant an action for infringement of the registered trade mark

111. (1) The registered owner of a registered trade mark may give to the Comptroller a prescribed notice objecting to the importation after the date of the notice of goods that infringe or appears to infringe, the registered trade mark.

an authorised user of the trade mark having power to give a notice under subsection (1) may ask the registered owner to give such a notice in respect of the trade mark.

(3)

If the registered owner does not comply with the request within the prescribed period, the authorised user may give the notice to the Comptroller together with

(a)

any document prescribed for the purposes of subsection (1); and

(b)

any other prescribed document.

(4)

A notice given by the registered owner of a trade mark shall remain in force for two years from the day on which the notice is given until it is revoked, before the end of that period, by notice in writing

given to the Comptroller of the person who is then the registered owner

of the trade mark.

(5) A notice given by an authorised user of the trade mark remains in force for two years unless it is revoked, before the end of that period by notice in writing given to the Comptroller

112. (1) This section shall apply to goods manufactured outside Saint Vincent and the Grenadines that:

the Comptroller shall seize the goods unless he is satisfied that there are reasonable grounds for believing that the notified trade mark is not infringed by the importation of the goods.

(3)

The Comptroller may decide not to seize the goods if he has not been given by the objector, or by one or more of the objectors, security in an amount that he considers sufficient to repay to the Government the expense that may be incurred by the Government if the goods were seized.

(4)

Goods seized under this section must be kept in a secure place as directed by the Comptroller.

113. The Comptroller shall, as soon as practicable

114. (1) The designated owner of any seized goods may, at any time before an objector starts an action for infringement of a notified trade mark in respect of the goods, consent to the goods being forfeited to the Crown by giving notice in writing of that effect to the Comptroller.

(2) If the designated owner gives such a notice, the goods shall be forfeited to the State.

115. (1) The Comptroller shall release the seized goods to their designated owner if, within the action period, the objector has not, or none of the objectors has

(2)

The Comptroller shall release the seized goods to their designated owner if

(a)

before the end of the action period, the objector or each of the objectors has, by notice in writing to the Comptroller consented to the release of the goods; and

(b)

at that time:

(i)

the objector has not, or none of the objectors has, brought an action for infringement of the notified trade mark in respect of the goods; or

(ii)

any action brought by an objector has been withdrawn.

(3)

The Comptroller may release the seized goods to their designated owner at any time before the end of the action period if

designated owner at any time before the end of the action period if

116. (1) An objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Comptroller

(1)

(3) In addition to any relief that the court may grant apart from this section, the court may:

the Court may order the objector to pay to the designated owner or other defendant compensation, in the amount determined by such court, for any part of that loss or damage that is attributable to any period beginning on or after the day on which the action was brought.

(5)

If, after twenty working days from the day on which the action was brought, there is not in force at any time an order of either court preventing the goods from being released, the Comptroller shall release the goods to their designated owner.

(6)

If either court orders that the goods be released, the Comptroller must, subject to section 119, comply with the order.

117. If an authorised user of a notified trade mark is an objector in relation to any seized goods, the authorised user may start any action for the infringement of the trade mark in respect of the goods within the required period without first ascertaining whether the registered owner is willing to bring the action.

118.	If
	(a) goods are forfeited to the State under section 114; or
	(b) the Court orders under section 116 that goods be forfeited
	to the State ;
	the goods shall to be disposed of as the Comptroller directs.
119.	Notwithstanding this Part, the Comptroller:
	(a) shall not release, or dispose of, any seized goods; or
	(b) shall not take any action in relation to the goods to give
	effect to any order of either court under section 116;

if the Comptroller is required or allowed to retain control of the goods under any other law of the State.

120. If security given under section 112 (3) by the objector or objectors who gave notice under section 111 in respect of a trade mark is not sufficient to meet the expenses incurred by the State as a result of the action taken by the Comptroller under this Part because of the notice, the amount of the difference between those expenses and the amount of security

121. The State shall not be liable for any loss or damage suffered by a person:

122. (1) If goods that may be seized under this Part are imported into Saint Vincent and the Grenadines, and the Comptroller, relying on information received, is satisfied on reasonable grounds that the use of a trade mark applied to or in relation to these goods is fraudulent, the Comptroller may ask the importer of the goods or an agent of the importer

(2) If the importer or his agent intentionally or recklessly fails to comply with the request within the prescribed period, the importer or agent commits an offence and shall be liable on conviction to a fine of ten thousand dollars.

123. (1) No person shall, intentionally or recklessly, falsify or unlawfully remove a trade mark that has been applied

knowing that the trade mark is registered or reckless of whether or not the trade mark is registered.

without the permission of the registered owner, or an authorised user, of the trade mark and without being required or authorised to do so by this Act, a direction of the Registrar or an order of a court of competent jurisdiction.

(3) A person unlawfully removes a registered trade mark if the person wholly removes, erases or obliterates it

124. (1) A person shall not, intentionally or recklessly falsely apply a registered trade mark

knowing that the trade mark is registered or reckless as to whether or not the trade mark is registered.

(2) A person falsely applies a registered trade mark to goods, or in relation to goods or services if the person applies the trade mark or a sign substantially identical with it to the goods or in relation to the goods or services without

125. (1) A person shall not make a die, block, machine or instrument

(2)

A person shall not draw, or program a computer or other device to draw, a registered trade mark or part of a registered trade mark

(a)

knowing that the trade mark or part of the trade mark is likely to be used for, or in the course of, committing an offence against section 123 or 124; or

(b)

reckless as to whether or not the trade mark or part of a trade mark is likely to be used for, or in the course of, committing an offence against section 123 or 124.

(3)

A person shall not intentionally have in his possession, or dispose of

(a)

a die, block, machine or instrument; or

(b)

a computer, or other device, programmed to draw a registered trade mark or part of a registered trade mark; or

(c)

a representation of a registered trade mark or of part of a registered trade mark

knowing that, or reckless as to whether or not, the die, block, machine, instrument, computer device or representation is likely to be used for, or in the course of, committing an offence against section 123 or 124.

126. A person shall not intentionally

knowing that, or reckless as to whether or not a falsified registered trade

mark is applied to them or in relation to them or a registered trade mark has been unlawfully removed from them, or a registered trade mark is falsely applied to them or in relation to them.

1. A person who contravenes section 123,124, 125 or 126 commits an offence and shall be liable upon conviction to a fine not exceeding two hundred and fifty thousand dollars.
2. (1) A person shall not intentionally or recklessly make representation to the effect that a trade mark is registered as a trade mark unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Saint Vincent and the Grenadines.

(2)

A person shall not intentionally or recklessly make representation to the effect that a part of a registered trade mark is registered as a trade mark unless the person knows, or has reasonable grounds to believe, that the part is registered as a trade mark in Saint Vincent and the Grenadines.

(3)

A person shall not intentionally or recklessly make representation to the effect that a trade mark is registered in respect of goods or services unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Saint Vincent and the Grenadines in respect of those goods or services.

(4)

A person shall not intentionally or recklessly make representation to the effect that the registration of a trade mark give exclusive rights to the use of the trade mark in circumstances in which, having regard to conditions or limitations entered in the Register, the registration does not give those rights unless the person has reasonable grounds to believe that the registration does give those exclusive rights.

(5)

For the purposes of this section, the use in Saint Vincent and the Grenadines in relation to a trade mark of the word registered, or of any other word or any symbol referring, either expressly or by implication, to registration is taken to be a representation that the trade mark is registered in Saint Vincent and the Grenadines in respect of the goods and services in relation to which it is used except if the trade mark is registered in a country other than Saint Vincent and the Grenadines in respect of these goods and services and

(a)

the word or symbol by itself indicates that the trade mark is registered in that other country or in a country outside Saint Vincent and the Grenadines; or

(b)

the word or symbol is used, together with other words or symbols of the same or a bigger size to indicate that the trade mark is registered in that other country or in a country outside Saint Vincent and the Grenadines; or

(c)

the word or symbol is issued in relation to goods that are

(6)

A person who contravenes a provision of this section commits an offence and upon conviction shall be liable to a fine of ten thousand

(2)

A person who contravenes subsection (1) commits an offence and upon summary conviction shall be liable to a fine of one thousand dollars.

dollars.
129.	(1) A person shall not intentionally
	(a) make a false entry in the Register; or
	(b) cause a false entry to be made in the Register; or
	(c) tender in evidence a document that falsely purports to be a copy of, or an extract from, an entry in the Register or a document in the Commerce and Intellectual Property Office.

130. (1) A person

shall not, without reasonable excuse, fail to appear in answer to the summons.

shall not, without reasonable excuse, fail to produce the document or thing.

(3) A person who contravenes subsection (1) or (2) commits an offence and upon summary conviction shall be liable to a fine of two hundred and fifty dollars.

131. (1) A person appearing before the Registrar as a witness shall not without reasonable excuse

(2) A person who contravenes subsection (1) commits an offence and upon summary conviction shall be liable to a fine of two hundred and fifty dollars.

Unauthorised 132. (1) A person shall not persons not to act in the trade (a) apply for, or obtain, on behalf of another person marks matters

unless the person is an attorney-at-law.

(2) A person who contravenes subsection (1) commits an offence and upon summary conviction shall be liable to a fine of ten thousand dollars.

133. (1) A person

^{Commerce and} (i) place, or allow to be placed, on the building in which Intellectual

the words “Commerce and Intellectual Property Office” or words of similar import whether alone or together with other words; or

(2) A person who contravenes subsection (1) commits an offence and upon summary conviction shall be liable to a fine of ten thousand dollars.

134. (1) A public officer employed in the Commerce and Intellectual Property Office shall not prepare, or help to prepare, a document to be filed under this Act unless required or authorised to do so by a written direction of the Registrar or an order of the Court.

(2) A public officer who contravenes subsection (1) shall be liable to disciplinary action by the Public Service Commission.

135. (1) This section applies for the purposes of a prosecution for an offence under this Act.

(2)

If it is necessary to prove the state of mind of a body corporate in relation to a particular conduct, it shall be enough to show

(a)

that the conduct was engaged in by a director, servant or agent of the body corporate within the scope of his actual apparent authority; and

(b)

that the director, servant or agent had the state of mind.

(3)

Any conduct engaged in on behalf of a body corporate by a director, servant, agent of the body corporate within the scope of his actual or apparent authority is taken to have been engaged in also

by the body corporate unless it proves that it took reasonable precautions and exercised due diligence to avoid the conduct.

(4)

If it is necessary to prove the state of mind of an individual in relation to a particular conduct, it shall be enough to show

(a)

that the conduct was engaged in by a servant or agent of the individual within the scope of his actual or apparent authority; and

(b)

that the servant or agent had the state of mind.

(5)

Any conduct engaged in on behalf of an individual by a servant or agent of the individual within the scope of his actual or apparent authority is taken to have been engaged in also by the individual, unless the individual establishes that he took reasonable precautions and exercised due diligence to avoid the conduct.

136. (1) For the purposes of this Part

(2) The provisions of this Act relating to trade mark, other than Part 13 shall apply to collective trade marks and so apply as if

(4) Section 23 applies in relation to a collective trade mark as if reference to the applicant were a reference to the members of the association that applied for registration of the collective trade mark.

1. An application for the registration of a collective trade mark shall be made by the association to which the mark belongs.
2. A member of an association in whose name a collective trade mark is registered shall not have the right to prevent another member of the association from using the collective trade mark in accordance with the rules which may be made by the association.

139. A collective trade mark may not be assigned or transmitted.

140. In an action by an association in whose name a collective trade mark is registered seeking relief for infringement of the collective trade mark, the association may take into account, in claiming damages, any damage or loss of profits sustained or incurred by the members of the association as a result of the infringement.

141. (1) For the purposes of this Part, “certification trade mark” means a sign used, or intended to be used to distinguish goods or services:

from other goods or services dealt with or provided in the course of trade but not so certified.

(2) Subject to this Part, the provisions of this Act relating to trade marks, other than the following shall apply to certification trade marks and so apply as if a reference to a trade mark included a reference to a certification trade mark:

142. (1) If a certification trade mark is registered, the registered owner shall have subject to Part 2 and not withstanding subsection (1) of section 6, the exclusive rights to use, and to allow other persons to use, the certification trade mark, in relation to the goods or services or both in respect of which the certification trade mark is registered.

(2)

Pursuant to subsection (1) the registered owner may, use the certification trade mark only in accordance with the rules governing the use of the certification trade mark.

(3)

The rights pursuant to subsection (1) and (2) shall be deemed to have accured to the registered owner as from the date of registration of the certification trade mark.

(4)

If a certification trade mark is registered under this Act subject to conditions or limitations, the rights of the registered owner shall be restricted by those conditions or limitations.

(5)

If a certification trade mark is registered in the name of two or more persons as joint owners of the trade mark, the rights granted to those persons under this section shall be exercised by them as if they were the rights of a single person.

143. (1) Where the registered owner of a registered certification trade mark allows another person to use the certification trade mark in relation to goods or services in respect of which it is registered, the approved user has a right to use the certification trade mark in relation to those goods or services in accordance with the rules governing the use of the certification trade mark.

(2) For the purposes of the section “approved user” means the person allowed to use a registered certification trade mark pursuant to subsection (1).

144. (1) A person who has filed an application for the registration of a certification trade mark shall file in accordance with the Regulations, a copy of the rules governing the use of the certification trade mark and any document prescribed under section 13 (2).

any document prescribed under section 13 (2).

(ii)

to allow the use of the certification trade mark; and any other condition that the Registrar may permit.

(3)

For the purposes of this section “acquired certifier” means a person approved for the purpose of certifying goods or services or both pursuant to subsection (2).

145. (1) If after examining an application made pursuant to this Part, the Registrar is satisfied that

the Registrar shall register the certification trade mark and issue a certificate to that effect to the applicant and shall publish notice of the registration in the prescribed form in the official journal.

(2) In deciding, pursuant to subsection (1) (d), whether or not a certification trade mark is capable of distinguishing goods or services

certification trade mark is capable of distinguishing goods or services certified by the applicant or an approved certifier, the Registrar shall take into account the extent to which

(3) The Registrar may require the applicant to make amendments to any of the rules referred to in section 144 as the Registrar considers necessary.

146. (1) The Registrar may, subject to subsection (2) reject an application made pursuant to this Part if he is not satisfied as to any of the grounds referred to in section 145 (1).

(2) The Registrar may not reject an application made pursuant to this Part without giving the applicant an opportunity to be heard.

147. (1) Subject to subsection (2), the rules governing the use of a registered certification trade mark may be varied in accordance with the Regulations.

(2)

The rules governing the use of a certification trade mark shall not be varied without the approval of the Registrar.

(3)

Before dealing to approve a variation in the rules governing the use of a certification trade mark the Registrar shall be satisfied that the rules as varied

(a)

would not be detrimental to the public;

(b)

are satisfactory having regard to the criteria prescribed pursuant to section 144 (2) (b).

148. Rules governing the use of a registered certification trade mark shall be available for inspection at the same time and in the same manner as the Register.

149. (1) A registered certification trade mark may be assigned only with the consent of the Registrar.

(2)

An application to the Registrar for his consent to the assignment of a registered certification trade mark shall be in the prescribed form.

(3)

In deciding whether or not give her consent, the Registrar may have regard to the matters provided for under the regulations.

(4)

A person aggrieved by a decision may be the Registrar pursuant to this section may appeal to the High Court.

150. (1) A registered certification trade mark shall not be assigned unless with the consent of the Registrar.

(2)

An application to the Registrar for his consent to the assignment of a registered certification trade mark shall be in the prescribed form.

(3)

The Registrar may, having regard to the matters provided for under the Regulations, grant or refuse consent.

(4)

A person aggrieved by a decision of the Registrar pursuant to this section may appeal to the Court.

151. (1) Subject to subsection (2), the Court may, on the application of an aggrieved person, order that the Register be rectified by:

(2) An applicant, referred to in subsection (1) may be made on any of the following grounds:

(3)

The Court may on the application of a person aggrieved, order that the Register be rectified by cancelling the registration of a certification trade mark, or removing or amending an entry in the Register relating to the certification trade mark, on the ground that

(a)

the registered owner or approved certifier is no longer competent to certify any of the goods or services or both in respect of which the mark is registered;

(b)

the rules governing the use of the certification trade mark are detrimental to the public; or

(c)

the registered owner or an approved user has failed to comply with a provision of the rules governing the use of the certification trade mark.

(3) Notice of an application to the Court pursuant to subsection

(1)

shall be given to the Registrar.

(4)

Except for cases in which the Court directs the Registrar to appear, the Registrar may appear before the High Court and be heard at his discretion.

(5)

A copy of any order made by the Court under this section shall be given to the Registrar and the Registrar shall comply with the order.

152.(1)The Court may, on the application of a person aggrieved, make such orders as it thinks fit for varying the rules governing the use of a certification trade mark.

(2)

Notice of an application to the Court must be given to the Registrar.

153.(1)A copy of any order made by the Court under this section shall be given to the Registrar.

(2)

If the Court orders that the rules are to be varied, the registered owner of the certification trade mark shall give to the Registrar a copy of the rules as varied to be certified by the Registrar as a true copy.

154. (1) If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.

(2)

A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the registered owner does not use or intend to use the trade mark in relation to those goods or services.

(3)

A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if it is already registered otherwise than a defensive trade mark in the name of the applicant in respect of those goods or services.

(4)

A trade mark that is registered as a defensive trade mark in respect of particular goods or services may be subsequently registered otherwise than as a defensive trade mark in the name of the registered owner in respect of the same goods or services.

155. Subject to this Part, the provisions of this Act, other than section 6 (1), 13 (1) (b), 23, 39, 101 and 107, Part 12 and Part 19 apply to defensive trade marks and so apply as if a reference to a trade mark included a reference to a defensive trade mark.

156. In addition to any other ground on which

1. Section 68 applies in relation to a defensive trade mark as if “or under section 156” were added at the end of subsection (2) (a).
2. The Registrar may cancel the registration of a trade mark as a defensive trade mark if the trade mark is not otherwise registered in the name of the registered owner of the defensive trade mark.

159. (1) The High Court has jurisdiction with respect to matters arising under this Act.

(2)

The jurisdiction of the High Court to hear and determine appeals against decisions, directions or orders of the Registrar shall be exclusive of the jurisdiction of any other court.

(3)

A prosecution for an offence against this Act may not be started in the High Court.

160. (1) A Magistrate’s Court in which an action or proceeding under this Act has been started may, on the application of a party made at any stage, by an order, transfer the action or proceeding to another court having jurisdiction to hear and determine the action or proceeding.

(2) When a court transfers an action or proceeding to another court

161. (1) An appeal lies to the High Court against a judgement or order of lower court exercising jurisdiction under this Act.

(2)

Except with the leave of the Court of Appeal, an appeal does not lie to the Court of Appeal against a judgment or order of a single judge of the High Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Registrar.

(3)

With the special leave of the High Court, an appeal lies to the High Court against a judgement or order referred to in subsection (1).

High Court against a judgement or order referred to in subsection (1).

(4) Except as otherwise provided by this section, an appeal does not lie against a judgment or order referred to in subsection (1).

1. The Registrar may appear and be heard at the hearing of an appeal to the High Court against a decision or direction of the Registrar.
1. On hearing an appeal against a decision or direction of the Registrar, the Court may do anyone or more of the following:
1. admit further evidence orally, or on affidavit or otherwise;
2. permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;
3. order an issue of fact to be tried as it directs;
4. affirm, reverse or vary the Registrar’s decision or direction;
5. give any judgment, or make any order, that, in all the circumstances, it thinks fit;
6. order a party to pay costs to another party.

164. The Registrar shall have the powers and functions that are given to him under this Act and any other Act and shall be responsible for the administration of this Act.

165. The Registrar may, for the purposes of this Act

166. The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being

heard.
167.	If
	(a) the Registrar is required under this Act to any act or thing; and
	(b) no time or period is provided within which the act or thing is to be done;

the Registrar is to do the act or thing as soon as practicable.

168. (1) Subject to any direction by the Registrar, a Deputy Registrar has all the powers and functions of the Registrar, except the powers of delegation under section 169.

(2)

A power or function of the Registrar, when exercised by a Deputy Registrar, is taken to have been exercised by the Registrar.

(3)

The exercise of a power or function of the Registrar by a Deputy Registrar does not prevent the exercise of the power or function by the Registrar.

(4)

If the exercise of a power or function by the Registrar is dependent on the opinion, belief or state of mind of the Registrar in relation to a matter, that power or function may be exercised by a Deputy Registrar on his or her opinion, belief or state of mind in relation to that matter.

(5)

If the operation of a provision of this Act or another Act is dependent on the opinion, belief or state of mind of the Registrar in relation to a matter, that provision may operate on the opinion, belief or state of mind of a Deputy Registrar in relation to that matter.

169. (1) The Registrar may by signed instrument delegate all or any of his other powers or functions to

(2) A delegate shall, if so required by the instrument of delegation, exercise or perform a delegated power or function under the direction or supervision of

170. (1) A Register of Trade Marks is to be kept at the Commerce and Intellectual Property Office.

(2)

The Registrar shall enter in the Register in accordance with this Act

(a)

all particulars of registered trade marks, and all other matters that were on the old register when the Registration of United Kingdom Trade Marks Act was repealed; and

(b)

particulars of trade marks, certification trade marks, collective trade marks and defensive trade marks, and all other matters, that are required to be registered under this Act; and

(c)

other prescribed matters.

(3)

All particulars entered in the Register under subsection (2) (a) shall be taken to have been so entered at the commencement of this Act.

171.(1)The Register may be kept in whole or in part by using a computer.

(2)

Any record of a particular or other matter made by using a computer for the purpose of keeping the Register is taken to be an entry in the Register.

172. (1) The Register is prima facie evidence of any particular or other matter entered in it.

(2)

A copy of, or an extract from, the Register that is certified by the Registrar to be a true record or extract is admissible in any proceedings as if it were the original.

(3)

If the Register or a part of the Register is kept by using a computer, a document certified by the Registrar as reproducing in writing a computer record of all or any of the particulars comprised in the Register or in the part of the Register shall be admissible in any proceedings as evidence of those particulars.

173. (1) A certificate signed by the Registrar and stating that

shall be prima facie evidence of the matters so state.

(2) A copy of, or an extract from, a document held in the Commerce and Intellectual Property Office that is certified by the Registrar to be a true copy or extract is admissible in any proceedings as if it were the original.

MISCELLANEOUS

1. An application, notice or request required or permitted under this Act to be made or signed by a person shall be made or signed, on behalf of that person, by an attorney-at-law in accordance with the Regulations.
2. (1) A person who has filed an application, notice or request may withdraw it, in accordance with the Regulations, at any time while it is still being considered by the Registrar.

(2) If

(a)

the right or interest on which the person relied to file the application, notice or request has become vested in another person; and

(b)

the other person notifies the Registrar in writing that the right or interest is vested in him;

the other person may withdraw the application, notice or request as provided in subsection (1).

176. (1) The address for service of a person who has filed an application, notice or request is

(a)

the address for service stated in the application, notice or request; or

(b)

if the person subsequently notifies in writing another address to the Registrar, that other address.

(2) Where a trade mark is registered, or a claim to an interest in, or to a right in respect of, a registered trade mark that a person has is recorded in the Register, the Registrar shall enter in the Register as the address for service of the registered owner or of the person

Change of name

(a)

if paragraph (b) does not apply, the address given, or last given, by the registered owner or the person to the Registrar under subsection (1); or

(b)

if, before the Registrar registers the trade mark or records the claim to the interest or right, the registered owner or person

gives in writing to the Registrar another address as his or her address for service, that other address.

(3) The registered owner of a registered trade mark, or any person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register, shall notify the Registrar in writing of any change in his address for service and the Registrar shall amend the Register accordingly.

(4) The address for service of

(a)

the registered owner of a registered trade mark; or

(b)

a person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register;

is the address set out from time to time in the Register as being the address for service of the registered owner or of the person.

(5)

An address for service shall be an address in Saint Vincent and the Grenadines.

(6)

If this Act provides that a document is to be served on, or given or sent to, a person

(a)

the document may be left at, or sent by post to, the address for service of the person; or

(b)

if the person does not have an address for service, the document may be served on an agent of the person in Saint Vincent and the Grenadines.

177. (1) If there is a change in the name of a person who has filed an application, notice or request, the person shall notify the Registrar in writing of the change.

(2) If there is a change in the name of

(a)

the registered owner of a registered trade mark; or

(b)

a person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register;

the registered owner or the person shall notify the Registrar in writing of the change and the Registrar shall amend the Register accordingly.

Death of applicant etc.

Description of registered trade mark

Evidence of usage of trade mark

Death of party to proceeding before Registrar

Costs awarded by Registrar

Security for costs

178. (1) If an applicant for the registration of a trade mark dies before registration is granted on the application, his legal representative may proceed with the application.

(2) If, at any time after a trade mark is registered, the Registrar is satisfied that the person in whose name the trade mark is registered had died, or, in the case of a body corporate, had ceased to exist, before registration was granted, the Registrar may amend the Register by substituting for the name entered in the Register the name of the person who should be the registered owner of the trade mark.

1. In an indictment, information, pleading or proceeding relating to a registered trade mark, the trade mark may be identified by its registration number and it shall not be necessary to reproduce or describe the trade mark.
2. In an action or proceeding relating to a trade mark, evidence is admissible of the usage of the trade concerned and of any relevant trade mark or trade name legitimately used by other persons.
1. If a person who is party to a proceeding pending before the Registrar dies, the Registrar may
1. on being asked, substitute in the proceeding another person in the place of the deceased party if the Registrar is satisfied that the interest of the deceased party has been transmitted to that other person; or
2. allow the proceeding to continue without any substitution if the Registrar is of the opinion that the interest of the deceased party is sufficiently represented by the surviving parties.
3. (1) The Registrar may award costs in respect of the matters, and in the amounts, provided for in the Regulations against any party to proceedings brought before him.

(2)

A party desiring to obtain costs shall apply to the Registrar in accordance with the Regulations.

(3)

If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

183. If a person who neither resides nor carries on business in Saint Vincent and the Grenadines

(a)

gives notice of opposition under this Act; or

(b)

applies to the Registrar under Part 12 for a trade mark to be removed from the Register;

Fees

Extension of time

the Registrar may require the person to give security for the costs of the proceeding and may, if security is not given, dismiss the proceeding.

184. (1) The Minister responsible for trade marks may make Regulations prescribing the fees to be paid for the purposes of this Act and may prescribe different fees in respect of the doing of an act according to the time when the act is done.

(2)

Prescribed fees shall be payable in accordance with the Regulations.

(3)

If a fee is payable in respect of doing an act by the Registrar or Comptroller, he or she shall not do the act until the fee has been paid.

(4) Subject to subsection (5), if

(a)

a fee is payable in respect of the doing of an act by a person other than the Registrar or the Comptroller; or

(b)

a fee is payable in respect of the filing of a document;

the act is taken to have been done, or the document is taken to have been filed, in spite of the failure to pay the fee.

(5) If the Registrar or the Comptroller notifies the person concerned or his or her agent, in accordance with the Regulations, that the fee has not been paid, the act is not taken to have been done, or the document is not taken to have been filed, before the day on which the fee is paid.

185. (1) If, because of an error or omission by the Commerce and Intellectual Property Office, a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar shall extend the time for doing the act.

(2) If, because of

(a)

an error or omission by the person concerned or by his or her agent; or

(b)

circumstances beyond the control of the person concerned;

a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the Regulations, extend the time for doing the act.

(3) If

(a)

a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and

(b)

on application made by that person in accordance with the

Publication of documents

Use of trade mark for export trade

Regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;

the Registrar may extend the time for doing the act.

(4)

The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

(5)

If an application is made under subsection (2) or (3) for an extension of time for more than three months, the Registrar shall publish notice of the application in the official journal.

(6)

A person may, as prescribed, oppose the granting of the application.

(7)

An appeal against the decision of the Registrar not to extend the time for the doing of an act, lies to the Court.

(8) In this section

“relevant act” means

(a)

any act, other than a prescribed act, done in relation to a trade mark;

(b)

the filing of any document, other than a prescribed document; or

(c)

any proceedings, other than court proceedings.

186. The Registrar may prepare, publish and sell documents relating to trade marks as the Registrar thinks fit.

187. (1) If

(a)

a trade mark is applied in Saint Vincent and the Grenadines

(i)

to, or in relation to goods that are to be exported from Saint Vincent and the Grenadines;

(ii)

in relation to services that are to be exported from Saint Vincent and the Grenadines; or

(b)

any other act is done in Saint Vincent and the Grenadines to goods to be exported from Saint Vincent and the Grenadines or services to be exported from Saint Vincent and the Grenadines which, if done in relation to goods or services to be dealt with or provided in the course of trade in Saint Vincent and the Grenadines, would constitute a use of the trade mark in Saint Vincent and the Grenadines;

the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the goods to be exported from Saint Vincent and the Grenadines or services

Passing off actions

Expenses Regulations

76

to be exported from Saint Vincent and the Grenadines.

(2) Subsection (1) applies to an act done before the commencement of this Act as it applies to an act done on or after that day, but it does not affect

(a)

a decision of a court made before that day; or

(b)

the determination of an appeal from such a decision.

188. (1) Except as provided in subsection (2), this Act does not affect the law relating to passing off.

(2) In an action for passing off arising out of the use by the defendant of a registered trade mark of which he or she is the registered owner or an authorised user and that is substantially identical with or deceptively similar to, the trade mark of the person aggrieved, damages may not be awarded against the defendant if the defendant satisfies the Court or Magistrate’s Court

(a)

that, at the time when the respondent began using the trade mark, he was unaware, and had no reasonable means of finding out, that the trade mark of the claimant was in use; and

(b)

that, when the defendant became aware of the existence and nature of the person aggrieved’s trade mark, he immediately ceased to use the trade mark in relation to the goods or services in relation to which it was used by the person aggrieved.

1. Any expenses incurred pursuant to this Act shall be a charge on the Consolidated Fund.
1. (1) The Minister may after consultation with the Registrar, make Regulations
1. prescribing matters required or permitted by this Act to be prescribed;
2. prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act;
3. prescribing matters necessary or convenient to be prescribed for the conduct of any business relating to the Commerce and Intellectual Property Office.

(2) Without limiting the generality of subsection (1), the Regulations may

(a)

provide for appeals against decisions of the Registrar made outside the scope of the Regulations;

(b)

require persons to make statutory declarations in support

Repeal Transitional

of any application, notice or request filed under this Act;

(c)

provide for the making of a declaration, or the doing of an act, under this Act on behalf of a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act;

(d)

provide for the refund, in specific circumstances, of the whole or part of a fee paid under this Act;

(e)

provide for the remission of, or the exemption of specified classes of persons from the payment of, the whole or part of a Registrar;

(f)

provide for the expenses and allowances to be paid to witnesses or persons attending at proceedings before the Registrar;

(g)

give power to the Registrar

(i) to require, in specified circumstances, a person applying under Part 12 for a trade mark to be removed from the Register to give security for any costs that may arise from the proceedings;

(ii)not to proceed with the application if security is

not given;

(iii)to refund to the applicant any amount given as security and not applied in setting costs awarded against the applicant;

(h)

provide for the destruction of documents relating to a trade mark at least ten years after the registration of the trade mark has ceased;

(i)

prescribe as penalties for offences against the Regulations fines not exceeding two hundred and fifty dollars;

(j)

make transitional or consequential provision as necessary or convenient because of the repeal of the repealed Acts and the enactment of this Act.

1. The Registration of United Kingdom Trade Marks Act and the Merchandise Marks Act are hereby repealed.
2. (1) A trade mark that, immediately before the date of commencement of this Act, was registered under the Registration of United kingdom Trade Marks Act is a registered trade mark for the purposes of this Act.

(2)

The registration of an existing trade mark expires on the day on which it would have expired under the Registration of United

kingdom Trade Marks Act if this Act had not been repealed.

(3)

Part 9 sections 55 to 60 shall apply in relation to the renewal of the registration of an existing trade mark.

(4) (1) Subject to subsection (3), an application or request that:

(a)

was lodged with the Registrar in accordance with the Registration of United Kingdom Trade Marks Act; and

(b)

was pending immediately before the commencement

date of this Act; is deemed to have been filed in accordance with this Act and shall be dealt with in accordance with this Act.

(2)

Subject to subsection (3), the filing date in respect of an application referred to in subsection (1) is the day on which the application was lodged with the Trade Marks Office under the Registration of United Kingdom Trade Marks Act.

(3)

If an application for the registration in the old register of the assignment or transmission of an existing registered mark was pending immediately before the commencement date of this Act, this Act shall apply in relation to the application as if:

(a)

it were an application under section 89 for a record of the assignment or transmission to be entered in the Register; and

(b)

that application was filed after the commencement date of this Act.

(5)

The Registrar shall continue to keep in accordance with this Act all documents that, immediately before the commencement date of this Act, were kept by a registrar under the Registration of United Kingdom Trade Marks Act.

(6)

If, immediately before the commencement date of this Act, the proprietor of an existing registered mark had appointed an agent in Saint Vincent and the Grenadines, the business address of that agent is the address for service of the registered owner of the mark for the purposes of this Act until the registered owner notifies another address to the Registrar under section 176.

If immediately before the commencement date of this Act, the proprietor of an existing registered mark had not appointed an agent in Saint Vincent and the Grenadines, and the address then entered in the old register as the address of the proprietor was not an address in Saint Vincent and the Grenadines; that address is not to be used as the address for service of the registered owner of the mark, and the registered owner shall give notice in writing to the Registrar of an address of in Saint Vincent and the Grenadines as his address for service..

Passed in the House of Assembly this 16^th day of October 2003.

NICOLE HERBERT Clerk of the House of Assembly (Ag.)