Ley de Marcas de Fábrica o de Comercio (Ley Nº 67 de 1952, modificada por la Ley Nº 4 de 1972), Guyana

Page 2

-THE LAWS OF GUYANA

REVISED EDITION

.CHAPTER 90:01

TRADE MARKS

Published by the Government of Guyana

1973

LAWS OF GUYANA.

TRADE MARKS ACT

CHAPTER 90:01

Act 67 of 1952

Amended by 4 of 1912

Page 3

L.R.O.l/1973

Page 4

Index

of

Subsidiary Legislation

Trade Marks Rule (R. 1/1955, 4 of 1972) ...

Note on

Repeal This Act repealed the Trade Marks Ordinance, Cap. 59 of the 1929 Edition.

Note on

Revision Date As this Act and certain subsidiary instruments were amended by the Law Revision Act (Cap. 2:02), the whole of this Chapter has, on its first publication, been revised up to the date of the Law Revision Act (23rd September, 1972)-instead of 23rd February, 1970 (Republic Day).

CHAPTER 90·01

TRADE MARKS ACT

ARRANGEMENT OF SECTIONS

SECTION 1. Short title. 2. Interpretation.

PART I

REGISTRATION, INFRINGEMENT AND OTHER SUBSTANTIVE

PROVISIONS

The Register

3. The register of trade marks.

EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT

4. No action for infringement of unregistered trade mark. 5. Registration to be in respect of particular goods. 6. Right given by registration in Part A, and infringement thereof. 7. Right given by registration in Part B, and infringement thereof. 8. Infringement by breach of certain restrictions. 9. Saving for vested rights.

10. Saving for use of name, address or description of goods.

REGISTRABILITY AND VALIDITY OF REGISTRATION

11. Distinctiveness requisite for registration in Part A. 12. Capability of distinguishing requisite for registration in Part B. 13. Prohibition of registration of deceptive, etc., matter. 14. Prohibition of registration of identical and resembling trade marks. 15. Registration in Part A to be conclusive as to validity after seven

years. 16. Registration subject to disclaimer. 17. Words used as name or description of an article or substance. 18. Effect of limitation as to colour, and of absence thereof.

PROCEDURE FOR, AND DURATION OF, REGISTRATION

19. Application for registration. 20. Opposition to registration. 21. Registration. 22. Duration and renewal of registration. 23. Registration of parts of trade marks and of trade marks as a series.

ASSIGNMENT AND TRANSMISSION

24. Powers of, and restrictions on, assignment and transmission. 25. Certain trade marks to be associated, so as to be assignable and

transmissible as a whole only.

26. Power of registered proprietor to assign and give receipts. 27. Registration of assignments and transmissions. .

USE AND NON-USE

28. Removal from register and imposition of limitations on ground of non-use.

29. Defensive registration of well-known trade marks. 30. Registered users. 3I. Proposed use of trade mark by corporation to be constituted, etc. 32. Use of one of associated or substantially identical trade marks

equivalent to use of another. 33. Use of trade mark for export trade.

Page 5

Page 6

RECTIFICATION AND CORRECTION OF THE REGISTER

34. General power to rectify entries in the register. 35. Power to expunge or vary registration for breach of condition. 36. Correction of register. 37. Alteration of registered trade mark. 38. Adaptation of entries in register to amended or substituted classifi-

cation of goods.

CERTIFICATION TRADE MARKS

39. Certification trade marks.

PART II

REGISTRATION OF UNITED KINGDOM TRADE MARKS.

40. Application for registration of trade mark registered in United Kingdom.

41. Documents required. 42. Certificate of registration. 43. Privileges conferred by certificate. 44. Duration of privileges. 45. "Passing off" actions not affected. 46. Court may declare privileges not acquired. 47. Registration of assignment, etc. 48. Registered users. 49. Registrar to enter United Kingdom registered users on application. 50. Renewals of registration. 5!. Alterations in the register.

PART III

GENERAL AND MISCELLANEOUS

Rules and Fees

52. Power of Minister to make rules. 53. Fees.

POWERS AND DUTIES OF REGISTRAR

54. Preliminary advice by Registrar as to distinctiveness. 55. Hearing before exercise of Registrar's discretion. 56. Power of Registrar to award costs.

LEGAL PROCEEDINGS AND APPEALS

57. Registration to be prima Jacie evidence of validity. 58. Certificate of validity. 59. Costs of Registrar in proceedings before Court. 60. Trade usage, etc., to be considered. 61. Registrar's appearance in proceedings involving rectification. 62. Court's power to review Registrar's decision. 63. Discretion of Court in appeals. 64. Procedure in cases of option to apply to Court or Registrar.

EVIDENCE

65. Mode of giving evidence. 66. Evidence of entries in register. 67. Evidence of things done by Registrar.

OFFENCES

68. Falsification of entries in register a misdemeanour. 69. Penalty for falsely representing a trade mark as registered.

MISCELLANEOUS

70. Change of form of trade connection not to be deemed to cause deception.

71. Jointly owned trade marks. 72. Trusts and equities. 73. Recognition of agents.

THE PATENT OFFICE

74. Patent Office. 75. Seal of Patent Office.

SCHEDULE-Certification Trade Marks.

CHAPTER 90:01

TRADE MARKS ACT

An Act to amend and consolidate the law relating to Trade Marks.

[1ST JANUARY, 1956]

1. This Act may be cited as the Trade Marks Act.

Interpretation. 2. (1) In this Act- "the appointed day" means the date immediately before the date

of the commencement of this Act; "assignment" means assignment by act of the parties concerned;

c.3:02 "the Court" means the High Court; "limitations" means any limitations of the exclusive right to the use

of a trade mark given by the registration of a person as pro- prietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or otherwise traded in, in any place within Guyana, or as to use in relation to goods to be exported to any market outside Guyana;

"mark" includes a device, brand, heading, label, ticket, name, sig- nature, word, letter, numeral, or any combination thereof;

"permitted use" has the meaning assigned to it by section 30(1); "prescribed" means, in relation to proceedings before the Court,

prescribed by rilles of court, and, in other cases, prescribed by this Act or the rilles;

"the register" means the register of trade marks kept under this Act;

"registered trade mark" means a trade mark that is actually on the register;

"registered user" means a person who is for the time being registered as such under section 30;

"the Registrar" means the Registrar of Patents, Designs and Trade Marks;

"the Registrar of Patents, Designs and Trade Marks" means the Registrar of Deeds;

"the rules" means any rules made under the provisions of this Act; "trade mark" means, except in relation to a certification trade mark,

a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the

Page 7

Cap. 340 1953 Ed.

67 of 1952

Short title

Page 8

right either as proprietor or as registered user to use that mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 39;

"transmission" means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment. (2) References in this Act to the use of a mark shall be con-

strued as references to the use of a printed or other visual representa-

tion of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods.

PART I

REGISTRATION, INFRINGEMENT AND OTHER

SUBSTANTIVE PROVISIONS

The Register

3. (1) There shall continue to be kept for the purposes of this Act a record called the register of trade marks, wherein shall be entered all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be prescribed.

(2) The register shall continue to be divided into three parts .called respectively Part A, Part B and Part c.

(3) The register shall at all convenient times be open to the inspection of the public, subject to such regulations as may be pre- scribed.

(4) The register shall be kept at the Patent Office under the control and management of the Registrar.

Effect of Registration and the Action for Infringement

The register of trade marles.

4. No person shall be entitled to institute any proceeding to pre- No action vent, or to recover damages for, the infringement of an unregistered for infringe-

ment of trade mark, but nothing in this Act shall be deemed to affect rights unregistered of action against any person for passing-off goods as the goods of trade mark. another person or the remedies in respect thereof.

5. A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods faU shall be determined by the Registrar, whose decision shall be final.

6. (1) Subject to this section and sections 9 and 10, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) in respect of any goods shall, if valid, give or be deemed to have given to_ that person the exclusive right to the use of the trade mark in relation to those goods and, without preju- dice to the generality of the foregoing words-, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the

Registration to be in respect of particular goods.

Right given by registra- tion in Part A, and infringement thereof.

permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect ofwhich it is registered, and in such manner as to render the use of the mark likely to be taken either-

(a) as being used as a trade mark; or (b) in a case in which the use is use upon the goods or in

physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade. (2) The right to the use of a trade mark given by registration as

aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.

(3) The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person-

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly con- sented to the use of the trade mark; or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as afore- said or might for the time being so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods. (4) The use of a registered trade mark, being one of two or

more registered trade marks that are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringe- ment of the right so given to the use of any other of those trade marks.

Page 9

7. (1) Except as provided by subsection (2) the "registration Right pven. h f hi A ) f by regIstration(whether before or after t e commencement 0 t s ct 0 a person in Part B, and

in Part B of the register as proprietor of a trade mark in respect of infringement any goods shall, if valid, give or be deemed to have given to that thereof. person the like right in relation to those goods as if the registration had been in Part A of the register, and the provisions of the last foregoing section shall have effect in like manner in relation to a trade mark registered in Part B of the register as they have effect in relation to a trade mark registered in Part A of the register.

Page 10

Saving for vested rights.

(2) In any action for infringement of the right to the use of a trade mark given by registration as aforesaid in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of the next succeeding section, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the trade mark.

8. (1) Where, by a contract in writing made with the proprietor Infringement or a registered user of a registered trade mark, a purchaser or owner ~:ri:ach of of goods enters into an obligation to the effect that he will not do, restrictions. in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorises it to be done, in relation to the goods, in the course of trade or with a view to any dealing therewith in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money's worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof.

(2) The acts to which this section applies are- (a) the application of the trade mark upon the goods after

they have suffered alteration in any manner specified in the contract as respects their state or condition, get-up or packing;

(b) in a case in which the trade mark is upon the goods, the alteration, part removal or part obliteration thereof;

(c) in a case in which the trade mark is upon the goods, and there is also thereon other matter, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the trade mark unless that other matter is wholly removed or obliterated;

(d) in a case in which the trade mark is upon the goods, the application of any other trade mark to the goods;

(e) in a case in which the trade mark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the trade mark. (3) In this section references in relation to any goods to the

proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those goods, and the expression "upon" includes in relation to any goods a reference to physical relation thereto.

9. Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a pre- decessor in title of his has continuously used that trade mark from a date anterior-

Saving for use of name, address or description of goods.

Distinctive- ness requisite for registra- tion in Part A.

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or

(b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a pre- decessor in title of his ;

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under section 14(2).

10. No registration of a trade mark shall interfere with- (a) any bonafide use by a person of his own name or of the

name of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business; or

(b) the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is m~ntioned in section 6(1)(b), or section 39(3)(b).

Registrability and Validity of Registration

11. (1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:

(a) the name of a company, individual, or firm, represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business; .

(c) an invented word or invented words; (d) a word or words having no direct reference to the charac-

ter or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;

(e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness. (2) For the purposes of this section "distinctive" means

adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trade mark is adapted to dis- tinguish as aforesaid the tribunal may have regard to the extent to which-

(a) the trade mark is inherently adapted to distinguish as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.

Page 11

Page 12

Prohibition of registration of deceptive, etc., matter.

Prohibition of registration of identical and resembling trade marks.

Registration in Part A to be conclusive as to validity after seven years.

12. (1) In order for a trade mark to betegistrable in Part B of the Capability of register it must be capable, in relation to the goods in respect of distiJ?~t's~ing

. h" . d db' d f d'· . hin requlSl e lorwhic It IS regrstere or propose to e reglstere ,0 IstmgUls g registration goods with which the proprietor of the trade mark is or may be in Part B. connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(2) In determining whether a trade mark is capable of distin- guishing as aforesaid the tribunal may have regard to the extent to which-

(a) the trade mark is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguish- ing as aforesaid.

(3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof.

13. It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

14. (1) Subject to subsection (2), no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion.

(2) In case of honest concurrent use, or of other special cir- cumstances which in the opinion of the Court or the Registrar make it proper so to do, the Court or the Registrar may permit the registra- tion of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Court or the Registrar, as the case may be, may think it right to impose.

(3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by the Court, or have been settled by agreement in a manner approved by him or, on an appeal by the Court.

15. (1) In all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 34) the original registration in Part A of the register of the trade mark shall, after the expiration of seven years from the date of that regis- tration, be taken to be valid in all respects, unless-

(a) that registration was obtained by fraud; or (b) the trade mark offends against section 13.

(2) Nothing in section 7(1) shall be construed as making ap- plicable to a trade mark, as being a trade mark registered in Part B of the register, the foregoing provisions of this section relating to a trade mark registered in Part A of the register.

Page 13

16. If a trade mark- (a) contains any part not separately registered by the pro-

prietor as a trade mark; or

Registration subject to disclaimer.

(b) contains matter common to the trade or otherwise of a non-distinctive character,

the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a con- dition of its being on the register-

(i) that the proprietor shall disclaim any right to the ex- clusive use of any part of the trade mark, or to the exclusive use of all or any portion of any such matter as aforesaid, to the exclusive use of which the tribunal holds him not to be entitled; or

(ii) that the proprietor shall make such other disclaimer as the tribunal may consider necessary for the purpose of defining his rights under the registration:

Provided that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out ofthe registration of the trade mark in respect of which the disclaimer is made.

17. (1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of the registration, of a word or words which the trade mark contains, or of which it consists, as the name or description of an article or substance:

Provided that, if it is proved either- (a) that there is a well-known and established use of the

word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being used in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or

(b) that the article or substance was formerly manufactured under a patent (being a patent in force on, or granted after, the 22nd December, 1928), that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or descrip- tion of the article or substance,

the next succeeding subsection shall have effect. (2) Where the facts mentioned in paragraph (a) or (b) of the

proviso to the foregoing subsection are proved with respect to any word or words, then-

(a) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed for the purposes of section 34 to be an entry wrongly remaining on the register;

Words used as name or description of an article or substance.

Page 14

(b) if the trade mark contains that word or those words and other matter, the Court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may in case of a decision in favour of its remaining on the register require as a condition thereof that the proprietor shall dis- claim any right to the exclusive use in relation to that article or substance and any goods of the same description of that word or those words, so, however, that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and

(c) for the purposes of any other legal proceedings relating to the trade mark-

(i) if the trade mark consists solely of that word or those words, all rights of the proprietor to the exclusive use of the trade mark in relation to the article or sub- stance in question or to any goods of the same description; or

(ii) if the trade mark contains that word or those words and other matter, all such rights of the proprietor to the exclusive use of that word or those words in such relation as aforesaid;

shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of the proviso to the foregoing subsection first became well known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that proviso.

(3) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such regis- tration in force at the commencement of this Act or thereafter shall, notwithstanding anything in section 15, be deemed for the purposes of section 34 to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circum- stances may require:

Provided that the foregoing provisions of this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the pro- prietor or a registered user of the trade mark, as distinguished from the element or compound as made by others, and in association with a suitable name or description open to the public use.

18. A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark.

If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

Procedure jor, and Duration of, Registration

Effect of limitation as to colour, and of absence thereof.

19. (1) Any person claiming to be the proprietor of a trade mark Applic~tion d d b d b hi h · d· f··· for regIstra-use or propose to e use y m w 0 IS eSlfous 0 regIstenng It tion.

must apply in writing to the Registrar in the prescribed manner for registration either in Part A or in Part B of the register.

Opposition to registra- tion.

(2) Subject to this Act, the Registrar may refuse the applica- tion, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think right.

(3) In the case of an application for registration of a trade mark (other than a certification trade mark) in Part A of the register, the Registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part Band deal with the application accordingly.

(4) In the case of a refusal or conditional acceptance, the Registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the Court.

(5) An appeal under this section shall be made in the pre- scribed manner, and on the appeal the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, condi- tions or limitations, if any, the application is to be accepted.

(6) Appeals under this section shall be heard on the materials stated as aforesaid by the Registrar, and no further grounds of ob- jection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those so stated as aforesaid by him, except by leave of the Court hearing the appeal. Where any further grounds of objection are taken, the applicant shall be en- titled to withdraw his application without payment of costs on giving notice as prescribed.

(7) The Registrar or the Court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as the Registrar or the Court, as the case may be, may think fit.

20. (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limi- tations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted:

Provided that the Registrar may cause an application to be ad- vertised before acceptance if it is made under section l1(I)(e), or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do.

(2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Registrar of opposition to the registration.

(3) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

(4) The Registrar shall send a copy of the notice to the ap- plicant, and within the prescribed time after receipt thereof the applicant shall send to the Registrar, in the prescribed manner, in duplicate, a counter-statement of the grounds on which he relies for his application, and, ifhe does not do so, he shall be deemed to have abandoned his application.

Page 15

Page 16

(5) If the applicant sends such a counter-statement as afore- said, the Registrar shall furnish a copy thereof to the persons giving notice of opposition, and shall, after hearing the parties, if so re- quired, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be per- mitted.

(6) The decision of the Registrar shall be subject to appeal to the Court.

(7) An appeal under this section shall be made in the pre- scribed manner, and on the appeal the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(8) On the hearing of an appeal under this section any party

may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration ofthe Court.

(9) On an appeal under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated as aforesaid by the opponent, except by leave of the Court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.

(10) On an appeal under this section the Court may, after hearing the Registrar, permit the trade mark proposed to be regis- tered to be modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed m3.nner before being registered.

(11) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, or an appellant, neither resides nor carries on business in Guyana, the tribunal may require him to give security for costs of the pro- ceedings before the tribunal relative to the opposition or to the appeal, as the case may be, and in default of such security being dilly given may treat the opposition or application, or the appeal, as the case may be, as abandoned.

21. (1) When an application for registration of a trade mark in Registration. .Part A or in Part B of the register has been accepted, and either-

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been o'pposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A, or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration:

Provided that the foregoing provisions of this subsection, relating to the date as of which a trade mark shall be registered and to the date to be deemed to be the date of registration, shall, as respects a trade mark registered under this Act with the benefit of any enact- ment relating to international or Commonwealth arrangements, have effect subject to that enactment.

Duration and renewal of registration.

(2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Patent Office.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

22. (1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with this section:

Provided that, in relation to a registration as of a date prior to the commencement of this Act, this subsection shall have effect with the substitution of a period of fourteen years for the said period of seven years.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within 'the prescribed period, renew the registration of the trade mark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registration, as the case may be, which date is in this section referred to as "the expiration of the last registration."

(3) At the prescribed time before the expiration of the last registration of a trade mark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expira- tion and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the ex- piration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove. the trade mark from the register, subject to such conditions, if any, as to its restoration to the register as may be prescribed.

(4) Where a trade mark has been removed from the register ,for non-payment of the fee for renewal, it shall, nevertheless, for the purpose of any application for the registration of a trade mark during one year next after the date of the removal, be deemed to be a trade mark that is already on the register:

Provided that the foregoing provisions of this subsection shall not have effect where. the tribunal is satisfied either-

(a) that there has been no bonafide trade use of the trade mark that has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application for registration by reason of any previous use of the trade mark that has been removed.

Page 17

23. (1) Where the proprietor of a trade mark claims to be entitled Registration 1 of parts ofto the exclusive use of any part thereof separately, he may app Y trade marks

to reo-ister the whole and any such part as separate trade marks. and of trade I:Y marks as a

Each such separate trade mark must satisfy all the conditions of an series. independent trade mark and shall, subject to section 25(3) and section 32(2), have all the incidents of an independent trade mark.

Page 18

(2) Where a person claiming to be the proprietor of several trade marks, in respect of the same goods or description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of-

(a) statements of the goods in relation to which they are respectively used or proposed to be used; or

(b) statements of number, price, quality or names of places; or

(c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or

(d) colour, seeks to register those trade marks, they may be registered as a series in one registration.

Assignment and Transmission

24. (1) Notwithstanding any rule oflaw or equity to the contrary, Powers of, a registered trade mark shall be, and shall be deemed always to have :1c~~ns on, been, assignable and transmissible either in connection with the good- assignment

'11 f b . and trans-Wl 0 a usmess or not. mission. (2) A registered trade mark shall be, and shall be deemed

always to have been, assignable and transmissible in respect either of all the goods in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods.

(3) The provisions of the two foregoing subsections shall have effect in the case of an unregistered trade mark used in relation to any goods as they have effect in the case of a registered trade mark registered in respect of any goods, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods all of which are goods in relation to which the unregistered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted.

(4) Notwithstanding l.nything in the foregoing subsections, a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which as a result of an assignment or trans- mission there would in the circumstances subsist, or have subsisted, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be, or have been, likely to deceive or cause confusion:

Provided that, where a trade mark is, or has been, assigned or transmitted in such a case as aforesaid, the assignment or transmis- sion shall not be deemed to be, or to have been, invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, or were, having regard to limita- tions imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within Guyana (otherwise than for export therefrom) or in rela- tion to goods to be exported to the same market outside Guyana.

(5) The proprietor of a registered trade mark who proposes to assign it in respect of any goods in respect of which it is registered may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances, and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the pro- posed assignment of the first-mentioned trade mark would or would not be invalid under the last foregoing subsection, and a certificate so issued shall, subject to the provisions of this section as to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under the last foregoing subsection of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 27 of the title of the person becoming entitled is made within six months from the date on which the cer- tificate is issued.

(6) Notwithstanding anything in subsections (1) to (3) (in- clusive), a trade mark shall not, on or after the commencement of this Act, be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the cir- cumstances subsist, whether under the common law or by registra- tion, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in a place or places in Guyana, and an exclusive right in another of those persons to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or des<;ription of goods limited to

use in relation to goods to be sold, or otherwise traded in, in another place or other places in Guyana:

Provided that, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or of a person who claims that a trade mark has been transmitted to him or to a predecessor in title of his on or after the commencement of this Act, in any such case, the Registrar, if he is satisfied that in all the circumstances the use of the trade marks in exercise of the said rights would not be contrary to the public interest, may approve the assign- ment or transmission, and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this sub- section or under subsection (4), so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 27 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.

(7) Where an assignment in respect of any goods of a trade -mark that is at the time of the assignment used in a business in those goods is made, on or after the commencement of this Act, otherwise than in connection with the goodwill of that business, the assign- ment shall not take effect until the following requirements have been satisfied, that is to say, the assignee must, not later than the expira- tion of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, apply to him for directions with respect to the advertisement of the assignment, and must advertise it in such form and manner and within such period as the Registrar may direct.

(8) Any decision of the Registrar under this section shall be subject to appeal to the Court.

Page 19

Page 20

Power of registered proprietor to assign and give receipts.

Registration of assign- ments and transmissions.

25. (1) Trade marks that are registered as, or that are deemed Certain trade by virtue of this Act to be, associated trade marks shall be assignable ~:~a!~dbe and transmissible only as a whole and not separately, but they shall so as to be for all other purposes be deemed to have been registered as separate ~~~~~~~ trade marks. missible as a

(2) Wh d k h · . d . h b' f whole only.ere a tra e mar t at IS reglstere ,or IS t e su ~ect 0 an application for registration, in respect of any goods is identical with another trade mark that is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.

Any decision of the Registrar under this subsection shall be sub- ject to appeaJ to the Court.

(3) Where a trade mark and any part or parts thereof are by virtue of section 23(1), registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.

(4) All trade marks that are, by virtue of section 23(2), regis- tered as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.

(5) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by another person in relation to any of the goods in respect of which it is registered, and may amend the register accord- ingly.

Any decision of the Registrar under this subsection shall be sub- ject to appeal to the Court.

26. Subject to this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for an assignment thereof.

27. (1) Where a person becomes, entitled by assignment or trans- mission to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on, receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register.

(2) Any decision of the Registrar under this section shall be subject to appeal to the Court.

(3) Except for the purposes of an appeal under this section or of an application under section 34, a document or instrument in respect of which no entry has been made in the register in accord- ance with the provisions of subsection (1) shall not be admitted in evidence in any court in proof of the title to a trade mark unless the court otherwise directs.

Page 21

Use and Non-Use

28. (1) Subject to the next succeeding section, a registered trade Removal mark may be taken off the register in respect of any of the goods in ~~d register respect of which it is registered on application by any person ag- ~~osi~ion of grieved to the Court or, at the option of the applicant and subject :u:r~~d of to section 64, to the Registrar, on the ground either- non-use.

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the applica- tion; or

(b) that up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

Provided that (except where the applicant has been permitted under section 14(2) to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal i& 'of opinion that he might properly be permitted so to register sucp. a trade mark) the tribunal may refuse an application made uJ;lder paragraph (a) or (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same descrip- tion, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered-

(a) the matters referred to in paragraph (b) of the foregoing subsection are shown so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in Guyana (otherwise than for export from Guyana), or in relation to goods to be exported to a particu- lar market outside Guyana; and

(b) a person has been permitted under section 14(2) to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be sold, or otherwise traded in, in that place (otherwise than for export from Guyana), or in relation to goods to be exported to that market, or the tribunal is of

the opinion that he might properly be permitted so to register such a trade mark,

on application by that person to the Court or, at the option of the applicant and subject to the provisions of section 64, to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as the tribunal thinks proper for securing that that registration shall cease to extend to such use as last afore- said.

(3) An applicant shall not be entitled to rely for the purposes of subsection (l)(b), or for the purposes of subsection (2), on any non-use of a trade mark that is shown to have been due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark in relation to the goods to which the application relates.

Page 22

Defensive registration of well- known trade marks.

29. (1) Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprie- tor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in the last foregoing section, the trade mark may, on the application in the prescribed manner of the pro- prietor registered in respect of the first-mentioned goods, be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under the last foregoing section.

(2) The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods other- wise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.

(3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks.

(4) On application by any person aggrieved to the Court or, at the option of the applicant and subject to section 64, to the

Registrar, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of subsection (1) are no longer satisfied in respect of any goods in respect of which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in respect of which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in subsection (1).

(5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.

(6) Except as otherwise expressly provided in this section, this Act shall apply in respect of the registration of trade marks as defensive trademarks and of trade marks so registered as they apply in other cases.

30. (1) Subject to this section, a person other than the proprietor Registered of a trade mark may be registered as a registered user thereof in users. respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.

The use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in

.respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is sub- ject, is in this Act referred to as the "permitted use" thereof.

(2) The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use bY' a person other than the proprietor, for the purposes of section 28 and for any other purpose for which such use is material under this Act or at common law.

(3) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and~ if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant.

A proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

(4) Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user must apply in writing to the Registrar in the pre- scribed manner and must furnish him with a statutory declaration made by the proprietor, or by some person authorised to act on his behalf and approved by the Registrar-

(a) giving particulars of the relationship, existing or pro- posed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may bemade;

(b) stating the goods in respect of which registration is proposed;

(c) stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter; and

(d) stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof,

and with such further documents, information or evidence as may be required under the rules or by the Registrar.

(5) When the requirements of the last foregoing subsection have been complied with, if the Registrar, after considering the in- formation furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark in relation to the proposed goods or any of them by the proposed registered user subject to any conditions or restrictions which the Registrar thinks proper would not be contrary to the public interest, the Registrar may register the proposed registered user as a registered user in respect of the goods as to which he is so satisfied subject as afore- said.

(6) The Registrar shall refuse an application under the fore- going provisions of this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.

Page 23

Page 24

(7) The Registrar shall, if so required by an applicant, take steps for securing that information given for the purposes of an application under the foregoing provisions of this section (other than matter entered in the register) is not disclosed to rivals in trade.

(8) Without prejudice to the provisions of section 34, the registration of a person as a registered user-

(a) may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the pre- scribed manner of the registered proprietor of the trade mark to which the registration relates;

(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark; or

(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following grounds:

(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion;

(ii) that the proprietor or the registered user misrepre- sented, or failed to disclose, some fact material to the application for the registration, or that the cir- cumstances have materially changed since the date of the registration;

(iii) that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.

. (9) Provision shall be made by the rules for the notification of the registration of a person as a registered user to any other registered user of the trade mark, and for the notification of an application under the last foregoing subsection to the registered proprietor and each registered user (not being the applicant) of the trade mark, and for giving to the applicant on such an application, and to all persons to whom such an application is notified and who intervene in the proceedings in accordance with the rules, an opportunity for being heard.

(10) The Registrar may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods in respect of which the trade mark is no longer registered.

(11) Any decision of the Registrar under the foregoing pro- visions of this section shall be subject to appeal to the Court.

(12) Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.

Proposed use of trade mark by corporation to be con- stituted, etc.

Use of one of associated or SUbstan- tially identical trade marks equivalent to use of another.

31. (1) No application for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark-

(a) if the tribunal is satisfied that a body corporate is about to be constituted, and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods by the corporation; or

(b) if the application is accompanied by an application for the registration of a person as a registered user of the trade mark, and the tribunal is satisfied that the proprietor intends it to be used by that person in relation to those goods and the tribunal is also satisfied that that person will be registered as a registered user thereof immediately after the registration of the trade mark. (2) Section 28 shall have effect, in relation to a trade mark

registered under the power conferred by the foregoing subsection, as if for the reference, in subsection (1)(a), to intention on the part of an applicant for registration that a trade mark should be used by him there were substituted a reference to intention on his part that it should be used by the corporation or registered user con- cerned.

(3) The tribunal may, as a condition of the exercise of the power conferred by subsection (1) in favour of an applicant who relies on the intention to assign to a corporation as aforesaid, require him to give security for the costs of any proceedings before the tribunal relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.

(4) Where a trade mark is registered in respect of any goods under the power conferred by subsection (1) in the name of an applicant who relies on intention to assign to a corporation as aforesai~, then, unless within such period as may be prescribed, or within such further period not exceeding six months as the Registrar may on application being made to him in the prescribed manner allow, the corporation has been registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.

32. (1) Where under this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, if and so far as the tribunal thinks right, accept use of an associated registered trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, 'as an equivalent for the use required to be proved.

(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any registered trade mark, being a part thereof, registered in the name of the same proprietor by virtue of section 23(1).

Page 25

33. The application in Guyana of a trade mark to goods to be Use of G d h d . G . I' trademarkexported from uyana, an any ot er act one ill uyana ill re atlOn for export

to goods to be so exported which,if done in relation to goods to be trade. sold or otherwise traded in within Guyana, would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or at common law.

Page 26

Correction of register.

Alteration of registered trade mark.

Rectification and Correction of the Register

34. (1) Any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or, at the option of the applicant and subject to section 64, to the Registrar, and the tri- bunal may make such order for making, expunging or varying the entry as the tribunal may think fit.

(2) The tribunal may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.

(3) In case of fraud in the registration, assignment or trans- mission of a registered trade mark, the Registrar may himself apply to the Court under this section.

(4) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served in the prescribed manner on the Registrar, and the Registrar shall on receipt of the notice rectify the register accordingly.

(5) The power to rectify the register conferred by this section shall include power to remove a registration in Part A of the register to Part B.

General power to rectify entries in register.

35. On application by any person aggrieved to the Court, or, at Power to the option of the applicant and subject to section 64, to the Registrar, expunge.or

1· . b th . . vary regLStra-or on app lcation y e RegIstrar to the Court, the tnbunal may tion for make such order as the tribunal may think fit for expunging or vary- bread<:~ of . h .. f d k h conltlOn.lUg t e regIstratIOn 0 a tra e mar on t e ground of any contra- vention of, or failure to observe, a condition entered on the register in relation thereto.

36. (1) The Registrar may, on request made in the prescribed manner by the registered proprietor-

(a) correct any error in the name, address or description of the registered proprietor of a trade mark;

(b) enter any change in the name, address or descriptio_n of the person who is registered as proprietor of a trade mark;

(c) cancel the entry of a trade mark on the register;

(d) strike out any goods or classes of goods from those in respect of which a trade mark is registered; or

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

(2) The Registrar may, on request made in the prescribed manner by a registered user of a trade mark, correct any error, or enter any change, in the name, address or description of the registered user.

(3) Any decision of the Registrar under this section shall be subject to appeal to the Court.

37. (1) The registered proprietor of a trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

Adaption of entries in register to amended or substituted classification of goods.

(2) The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it ap- pears to him that it is expedient so to do, and where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.

(3) Any decision of the Registrar under this section shall be subject to appeal to the Court.

(4) Where leave as aforesaid is granted, the trade mark as altered shall be advertised in the prescribed manner, unless it has already been advertised, in the form to which it has been altered, in an advertisement under subsection (2).

38. (1) The Minister may from time to time make such rules, prescribe such forms and generally do such things as he thinks ex- pedient, for empowering the Registrar to amend the register, whether by making or expunging or varying entries therein, so far as may be requisite for the purpose of adapting the designation therein of the

goods or classes of goods in respect of which trade. marks are registered to any amended or substituted classification that may be prescribed.

(2) The Registrar shall not, in exercise of any power conferred on him for the purpose aforesaid, make any amendment of the register that would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made, or of antedating the registration of a trade mark in respect of any goods:

Provided that this subsection shall not have effect in relation to goods as to which the Registrar is satisfied that compliance with this subsection in relation thereto would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

(3) A proposal for the amendment of the register for the purpose aforesaid shall be notified to the registered proprietor of the trade mark affected, shall be subject to appeal by the registered proprietor to the Court, shall be advertised with any modifications, and may be opposed before the Registrar by any person aggrieved on the ground that the proposed amendment contravenes the pro- visions of the last foregoing subsection, and the decision of the Registrar on any such opposition shall be subject to appeal to the Court.

Certification Trade Marks

Page 27

39. (1) A mark adapted in relation to any goods to distinguish Certification in the course of trade goods certified by any person in respect of trade marIes. origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person:

Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified.

Page 28

(2) In determining whether a mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which-

(a) the mark is inherently adapted to distinguish as afore- said in relation to the goods in question; and

(b) by reason of the use of the mark or of any other circum- stances, the mark is in fact adapted to distinguish as aforesaid in relation to the goods in question. (3) Subject to subsections (4) to (6) (inclusive) of this section,

and to sections 9 and 10, the registration of a person as proprietor

of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to those goods, and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-

(a) as being used as a trade mark; or

(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods certified by the proprietor. (4) The right to the use of a certification trade mark given by

registration as aforesaid shall be subject to any conditions or limita- tions entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.

(5) The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person-

(a) in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authori- sation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly con- sented to the use of the trade mark; or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accord- ance with the fact that the goods are certified by the proprietor;

Certificate of registra- tion.

provided that paragraph (a) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are men- tioned in that paragraph, if such application is contrary to the rele- vant regulations.

(6) Where a certification trade mark is one of two or more registered trade marks that are identical or nearly resemble each other, the use of any of those trade marks in exercise of the right to the use of that trade mark given by registration shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.

(7) There shall be deposited at the Patent Office in respect of every trade mark registered under this section regulations approved by the Minister for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the trade. mark, and may contain any other provisions that the Minister may require or permit to be in- serted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or to authorise the use of the trade mark in accordance with the regulations). Regulations so deposited shall be open to inspection in like manner as the register.

(8) A certification trade mark shall not be assignable or trans- missible otherwise than with the consent of the Minister.

(9) The provisions of the Schedule shall have effect withrespect Schedule. to the registration of a mark under this section and to marks so registered.

PART II

REGISTRATION OF UNITED KINGDOM TRADE MARKS

Page 29

40. Any person being the registered proprietor of a trade mark Application in the United Kingdom by virtue of an entry in the register of trade f9r regIf·strad-

. . tion 0 tra e marks kept under the Trade Marks Act, 1938, of the Urnted King- mark regis- dom or any Act amending or substituted for that Act, or any person ~rt::d ~n deriving title from such registered proprietor by assignment or other Ki~~dom. mode of transfer, may apply at any time during the existence of the 1 and 2 registration in the United Kingdom to have such trade mark registered Geo. VI, c.22. in Guyana in respect of some or all of the goods comprised in the United Kingdom registration.

41. An application for registration of a trade mark under this Documents Part shall be made to the Registrar and accompanied by a certified required. representation of the trade mark and a certificate of the Comptroller- General of the United Kingdom Patent Office (under his title of Registrar of Trade Marks) giving full particulars of the registration of the trade mark in the United Kingdom.

42. Upon such application being lodged, together with the documents mentioned in section 41, the Registrar shall enter the prescribed particulars in Part C of the register, and shall issue a certificate of registration to the applicant, who shall then be the registered proprietor in Guyana of the trade mark in respect of the goods entered in the register.

Page 30

Privileges conferred by certificate.

Duration of privileges.

"Passing off" actions not affected.

Court may declare privileges not acquired.

Registration of assignment, etc.

43. Subject to this Part, a registered proprietor shall have in Guyana such privileges and rights in the use of the trade mark in respect of the goods entered in the register as, mutatis mutandis, would be conferred on him by the law for the time being in force in the United Kingdom.

44. The privileges and rights conferred by section 43 shall date from the date of registration in the United Kingdom and shall con- tinue in force, subject to section 50, for so long as the registration in the United Kingdom remains in force in respect of the goods for which the trade mark is registered in Guyana:

Provided that no action for infringement of the trade mark shall be entertained in respect of any use of the trade mark prior to the date of issue of the certificate of registration in Guyana.

45. Nothing in this Part shall be deemed to affect any right of action against any person for passing off goods as those of another person or any remedy in respect thereof.

46. The Court shall have power, upon the application of any person who alleges that his interests have been prejudicially affected by the issue of a certificate of registration, to declare on any of the grounds, mutatis mutandis, on which the United Kingdom registra- tion might be cancelled under the law for the time being in force in the United Kingdom that the exclusive privileges and rights have not been acquired.

47. Subject to this Part, where a person becomes entitled by assignment or other mode of transfer to the privileges and rights conferred on a registered proprietor by tllls Part, the Registrar shall, on application being made in the prescribed manner, and on proof of title to his satisfaction, cause such person to be entered in the register as subsequent registered proprietor of the trade mark.

48. Any person entered in the United Kingdom register of Trade Registered Marks under section 28 of the Trade Marks Act, 1938, of the United ys:~~ 2 Kingdom as a registered user in respect of any goods of which a Geo. VI, c.22. certificate of registration under this Part is in force may apply to be registered in Guyana as a registered user of the mark in respect of some or all of such goods, subject to any conditions or restrictions entered in the United Kingdom register.

49. Upon such application being lodged, together with a certificate of the United Kingdom Registrar of Trade Marks giving full par- ticulars of the entry in the United Kingdom register under section 28, of the said Act of the United Kingdom, the Registrar shall cause the applicant to be entered in the register as a registered user of the trade mark, and on such entry the registered user shallbe entitledin Guyana, subject to the aforesaid conditions and restrictions, to such privileges and rights in respect of the goods for which he is entered as, mutatis mutandis, would be conferred on him by the law for the time being in force in the United Kingdom.

Registrar to enter United Kingdom registered users on application.

Fees.

Preliminary advice by Registrar as to distinc- tiveness.

50. If the registration in the United Kingdom of a trade mark registered under this Part is renewed, the registered proprietor may, within such time after the date of renewal in the United Kingdom as may be prescribed, notify the Registrar, who shall then on sufficient evidence thereof and on payment of the prescribed fee, renew the registration in the register in the prescribed manner. If the registra- tion in the register is not so renewed it shall be cancelled by the Registrar.

51. The Registrar may, on request in writing made by the regis- tered proprietor, and on payment of the prescribed fee-

(a) cancel the registration of a trade mark or of a registered user thereunder either wholly or as regards any particular goods in respect of which the trade mark or the registered user is registered;

(b) correct any clerical error in or in connection with any application under this Part or in any matter which is entered in the register;

(c) enter into the register any change in the name, description or address of the person who is registered as proprietor or user of a trade mark.

PART III GENERAL AND MISCELLANEOUS

Rules and Fees 52. (1) The Minister may from time to time make such rules,

prescribe such forms and generally do such things as he thinks ex- pedient-

(a) for regulating the practice under this Act, including the service of documents;

(b) for classifying goods for the purposes of registration of trade marks;

(c) for making or requiring duplicates of trade marks and other documents;

(d) for securing and regulating the publishing and selling or distributing, in such manner as he thinks fit, of copies of trade marks and other documents;

(e) generally for regulating the business of the Patent Office in relation to trade marks and all things by this Act placed under the direction or control of the Registrar.

(2) Rules made under this Act shall, while in force, be of the same effect as if they were contained in this Act.

(3) Any rules made in pursuance of this section shall be pub- lished in the Gazette.

53. There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed by the Registrar with the approval and consent of the Minister.

Powers and Duties ofRegistrar 54. (1) The power to give to a person who proposes to apply for

the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish, or capable of distin- guishing, as the case may be, shall be a function of the Registrar under this Act.

(2) Any such person who is desirous of obtaining such advice must make application to the Registrar therefor in the prescribed manner.

Renewals of registration.

Alterations

Page 31

in the register.

Power of Minister to make rules.

Page 32

Hearing before exercise of Registrar's discretion.

(3) If on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirma- tive, made within three months after the advice is given, the Regis- trar, after further investigation or consideration, gives notice ~o the applicant of objection on the ground that the trade mark IS not adapted to distinguish, or capable of distinguishing, as the case may be the applicant shall be entitled, on giving notice of withdrawal of th~ application within the prescribed period, to have repaid to him any fee paid on the filing of the application.

55. Where any discretionary or other power is given to the Regis- trar by this Act or the rules, he shall not exercise that power ad- versely to the applicant for registration or the registered proprietor

of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.

56. In all proceedings before the Registrar under this Act, the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may, by leave of the Court or a judge thereof, be enforced in the same manner as a judgment or order of the Court to the same effect.

Legal Proceedings and Appeals

Power of Registrar to award costs.

57. In all legal proceedings relating to a registered trade mark Registration (including applications under section 34) the fact that a person is }~c~: :.:fde~ce registered as proprietor of the trade mark shall be prima facie evi- of validity. dence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.

58. In any legal proceeding in which the validity of the registration Certificate of of a registered trade mark comes into question and is decided in validity. favour of the proprietor of the trade mark, the Court may certify to that effect, and if it so certifies then in any subsequent legal pro- ceeding in which the validity of the registration comes into question the proprietor of the trade mark on obtaining a final order or judg- ment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceedings the Court certifies that he ought not to have them.

59. In all proceedings before the Court under this Act the costs of the Registrar shall be in the discretion of the Court, but the Registrar shall not be ordered to. pay the costs of any other of the parties.

60. In any action or proceedings relating to a trade mark or trade name, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons.

Costs of Registrar in proceedings before Court.

Trade usage, etc., to be considered.

61. (1) In any legal proceeding in which the relief sought includes Registrar's. alteration or rectification of the reaister the Reaistrar shall have the appearda!lce III

• /:)L, /:)L procee mgs nght to appear and be heard, and shall appear if so directed by the inv~lvin~ Court. rectification.

(2) Unless otherwise directed by the Court, the Registrar in lieu of appearing and being heard may submit to the Court a state- ment in writing signed by him, giving particulars of the proceedings

Court's power to review Registrar's decision.

Discretion of Court in appeals.

Procedure in cases of option to apply to Court or Registrar.

Mode of giving evidence.

Evidence of entries in register.

before him in relation to the matter in issue or of the grounds of any decision given by him affecting it or of the practice of the Patent Office in like cases or of such other matters relevant to the issues, and within his knowledge as Registrar, as he thinks fit, and the statement shall be deemed to form part of the evidence in the pro- ceeding.

62. The Court, in dealing with any question of the rectification of the register (including all applications under section 34), shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made.

63. In any appeal from a decision of the Registrar to the Court under this Act, the Court shall have and exercise the same discre- tionary powers as under this Act are conferred upon the Registrar.

64. Where under any of the foregoing provisions of this Act an applicant has an option to make an application either to the Court or to the Registrar-

(a) if an action concerning the trade mark in question is pending, the application must be made to the Court;

(b) if in any other case the application is made to the Regis- trar, he may, at any stage of the proceedings, refer the applica- tion to the Court, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.

Evidence

65. In any proceeding under this Act before the Registrar, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which he thinks it right so to do, he may take evidence viva voce in lieu of or in addi- tion to evidence by declaration. Any such statutory declaration may in the case of appeal be used before the Court in lieu of evidence by affidavit, but if so used shall have all the incidents and consequences of evidence by affidavit.

In case any part of the evidence is taken viva voce, the Registrar shall, in respect of requiring the attendance of witnesses and taking evidence on oath, be in the same position in all respects as the Court.

66. (1) A printed or written copy of any entry in the register, purporting to be certified by the Registrar and sealed with the seal of the Patent Office, shall be admitted in evidence in all courts, and in all proceedings, without further proof or production of the originaL

(2) Any person requiring such a certified copy as aforesaid shall be entitled to obtain it on payment of the prescribed fee.

Page 33

67. A certificate purporting to be under the hand of the Registrar Evidence of as to any entry, matter or thing that he is authorised by this Act or ~hinleJ~~. the rules to make or do shall be prima facie evidence of the entry y having been made, and of the contents thereof, and of the matter or thing having been done or not done.

Offences 68. If any person makes or causes to be made a false entry in the Falsific.ati,?n . .. ell . b f . of entrles illregIster, or a wntmg la se y purporting to e a copy 0 an entry 1ll register a

the register, or produces or tenders or causes to be produced or misdeIlleanour. tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanour.

Page 34

Change of fonn of trade con- nection not to be deemed to cause deception.

Jointly owned trade marks.

69. (1) Any person who makes a representation- (a) with respect to a mark not being a registered trade mark,

to the effect that it is a registered trade mark; or (b) with respect to a part of a registered trade mark not

being a part separately registered as a trade mark, to the effect that it is so registered; or

(c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not registered; or

(d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right,

shall be liable on summary conviction to a fine of one hundred dollars.

(2) For the purposes of this section, the use in Guyana in relation to a trade mark of the word "registered", or of any other word referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except-

(a) where that word is used in physical association with other words delineated in characters at least as large as those in which that word is delineated and indicating that the refer- ence is to registration as a trade mark under the law of a country outside Guyana, being a country under the law of which the registration referred to is in fact in force;

(b) where that word (being a word other than the word "registered") is of itself such as to indicate that the reference is to such registration as last aforesaid; or

Penalty for falsely representing a trade mark as registered.

(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside Guyana and in relation to goods to be exported to that country.

Miscellaneous 70. The use of a registered trade mark in relation to goods be-

tween which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.

71. Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except-

(a) on behalf of both or all of them; or (b) in relation to an article with which both or all of them are

connected in the course of trade, those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

Subject as aforesaid, nothing in this Act shall authorise the regis- tration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

Trusts and equities.

72. (1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Registrar.

(2) Subject to this Act, equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.

Recognition 73. Where by this Act any act has to be done by or to any person of agents. in connection with a trade mark or proposed trade mark or any

procedure relating thereto, the act may under and in accordance with the rules, or in particular cases by special leave of the Registrar be done by or to an agent of that person duly authorised in the pre- scribed manner.

The Patent Office Patent Office. 74. (1) The Patent Office shall be situate at the Deeds Registry,

Georgetown, Demerara, or at any other place that may be appointed by the Minister.

(2) The Patent Office shall be under the immediate control of the Registrar.

(3) All things required or authorised under this Act to be done by, to or before the Registrar may be done by, to or before a deputy registrar or by, to or before any other officer authorised by the Registrar.

75. (1) Impressions of the seal of the Patent Office shall be judicially noticed and admitted in evidence.

(2) The seal of the Patent Office shall be the seal of the Deeds Registry with the words "Patent Office", added thereto.

76. [This section formerly section 77 omitted but still in force. See Order under section 8 of the Law Revision Act, Cap. 2:02.]

SCHEDULE

CERTIFICATION TRADE MARKS

1. (1) An application for the registration of a mark under section 39 of this Act must be made to the Registrar in writing in the pre- scribed manner by the person proposed to be registered as the pro- prietor thereof.

(2) The provisions of section 19(2) and (4) to (7) (inclusive) of this Act shall have effect in relation to an application under the said section 39 as they have effect in relation to an application under the said section 19(1), except that for references therein to acceptance of an application there shall be substituted references to authorisa- tion to proceed with the application.

(3) In dealing under the said provisions with an application under the said section 39 the tribunal shall have regard to the like considerations, so far as relevant, as if the application were an application under section 19 of this Act and to any other considera- tions (not being matters within the competence of the Minister under subparagraph (5) of this paragraph) relevant to applications under the said section 39, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.

Page 35

Seal of Patent Office.

s.39

Page 36

(4) An applicant for the registration of a mark under the said section 39 shall transmit to the Registrar draft regulations for govern- ing the use thereof at such time before the decision of the Registrar on the application as he may require in order to enable him to con- sider the draft, and the Registrar shall report thereon to the Minister.

(5) When authorisation to proceed with an application has

been given, the Minister shall consider the application with regard to the following matters that is to say-

(a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;

(b) whether the draft regulations are satisfactory; and

(c) whether in all the circumstances the registration appliep for would be to the public advantage;

and may either- (i) direct that the application shall not be accepted; or

(ii) direct the Registrar to accept the application, and approve the regulations, either without modification and uncondi- tionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he thinks requisite having regard to any of the matters aforesaid;

but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Minister shall not decide the matter without giving to the applicant an opportunity of being heard:

Provided that the Minister may, at the request of the applicant made with the concurrence of the Registrar, consider the application with regard to any of the matters aforesaid before authorisation to proceed with the application has been given, so however that the Minister shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modi- fication is thereafter made in the application or in the draft regula- tions.

2. (1) When an application has been accepted, the Registrar shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and the pro- visions of section 20(2) to (11) (inclusive) shall have effect in relation to the registration of the mark as if the application had been an application under section 19 of this Act:

Provided that, in deciding under the said provisions, the tribunal shall have regard only to the considerations referred to in sub- paragraph (3) of the foregoing paragraph, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour under subparagraph (2) of this para- graph of any opposition relating to any of the matters referred to in subparagraph (5) of the foregoing paragraph.

(2) When notice of opposition is given relating to any of the matters referred to in subparagraph (5) of the last foregoing para- graph, the Registrar shall, after hearing the parties, if so required,

and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted.

3. (1) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Registrar with the consent of the Minister.

(2) The Minister may cause an application for his consent to be advertised in any case where it appears to the Minister that it is expedient so to do, and, where the Minister causes an application to be advertised, if within the prescribed time from the date of the ad- vertisement any person gives notice to him of opposition to the application, the Minister shall not decide the matter without giving the parties an opportunity of being heard.

4. (1) The Minister may, on the application in the prescribed manner of any person aggrieved, or on the application of the Regis- trar, make such order as he thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground-

(a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods;

(b) that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;

(c) that it is no longer to the public advantage that the trade mark should be registered; or

(d) that it is requisite for the public advantage that, if the trade mark remains registered, the regulations should be varied,

and neither the Court nor the Registrar shall have any jurisdiction to make an order under section 34 of this Act on any of those grounds.

(2) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under the foregoing subparagraph.

5. Notwithstanding anything in section 56 of this Act, the Regis- trar shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the trade mark.

6. The following provisions of this Act shall not have effect in relation to a certification trade mark, that is to say, section 6, sec- tion 8, section 11, sections 19 and 20 (except as expressly applied by

this schedule), section 24(4) to (8) (inclusive), sections 28 to 31 (in- clusive), section 71, and any provisions the operation of which is limited by the terms thereof to registration in Part B of the Register.

[Second Schedule omitted but still in force. See Order under section 8 of the Law Revision Act, Cap. 2:02.]

Page 37