Ley de Marcas (Capítulo 78:42), Dominica

LAWS OF DOMiNiCA

TRADE MARKS ACT

CHAPTER 78:42

Act 11 ofl887

Amended by 19 of 1939 12ofl990

Current Authorised Page. Pages Authorised (inclusive) by L.R.O.

1-37 111991

L.R.O.111991

2

17

Chap. 78:42 TradeMarks

Index of

Subsidiary Legislation

Page

Trade Marks Rules

3TradeMarks Chap. 78:42

CHAPTER 78:42

TRADE MARKS ACT

ARRANGEMENTS OF SECTIONS

SEcnON

1. Shon title. 2. Interpretation.

PART I

REGISTRATION OF TRADE MARKS

3. Application for registration. 4. Limit of time for proceeding with application. S. Paniculars of trade marl<:. 6. Connection oftrade mark with goods. 7. Registration of a series of marl<:s. 8. Trade marks may be registered in any colour or colours. 9. Advertisement of application.

10. Opposition to registration. 11. Assignment and transmission of trade marl<:. 12. Conflicting claims to registration. 13. Restrictions on registration. 14. Funher restriction on registration. 15. Saving for power to provide for entry on register of common

marks as additions to trade marks.

PART II

EFFECf OF REGISTRATION

16. Effect of application. 17. Right of first proprietor to exclusive use of trade marl<:. 18. Restrictions on actions for infringement. 19. Costs of action for infringement of trade marl<:.

PART III

REGISTER OF TRADE MARKS

20. Register of trade marks. 21. Removal of trade marl<: afterfoutteen years unless fee paid.

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SECfION

PARTlY

FEES

22. Fees for registration.

PARTY

GENERAL

23. Trade marlcs office. 24. Trusts not to be entered in registers. 25. Refusal to register trade mark in certain cases. 26. Entry of assignments and transmissions in register. 27. Seal of trade marks office. 28. Inspection of and extracts from registers. 29. Sealed copies to be received in evidence. 30. Rectification of registers by Court. 31. Power to Registrar to correct clerical errors. 32. Alteration of registered trade marks. 33. Falsification of entries in registers. 34. Exercise of discretionary power by Registrar. 35. Registrar may apply to Solicitor General. 36. Certificate of Registrar to be evidence. 37. Applications and notices by post. 38. Provision as to days for leaving documents at office. 39. Declaration by infant. lunatic. etc. 40. Power ofMinisterto make general rules for classifying goods

and regulating business of trade marks office. 41. Authority for taking declarations.

SCHEDULE.

5TradeMarks Chap. 78:42

CHAPTER 78:42

TRADE MARKS ACT

AN ACT relating to trade marks. 1961 Ed. Cap. 332. 11 of 1887.

[31st December 1887] Commencement.

1. 111is Act may be cited as the ­ Short title.

1RADE MARKS ACT.

2. In this Act - Interpretation.

"Coun" means the High Coun;

"prescribed" means prescribed by general rules under or within the meaning of this Act;

"Registrar" means the Registrar of the High Coun.

PART I

REGISTRATION OF TRADE MARKS

3. (1) The Registrar may, on application by or on behalf of any Application for person claiming to be the proprietor of a trade mark, register the trade registration. mark.

(2) The application must be made in the fonn set fonh in the Schedule, orin such other fonn as may be from time to time prescribed, Schedule. and must be left at, or sent by post to, the trade marks office in the prescribed manner.

(3) The application must be accompanied by the prescribed number of representations of the trade mark, and must state the particular goods or classes of goods in connection with which the applicant desires the trade mark to be registered.

(4) The Registrar may, ifhe thinks fit, refuse to register a trade mark, but any such refusal shall be subject to appeal to the Coun, and the Coun shall have jurisdiction to hear and detennine the appeal, and may make an order determining whether, and subject to what condi­ tions, if any, registration is to be pennitted.

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(5) When an applicant for the registration of a trade marie, otherwise than under an international convention, is out of the State at the timeofmaking the application, heshall give the Registraran address for service in the State and, ifhe fails to do so, the application shall not be proceeded with until the address has been given.

Limit of time for proceeding with application.

Particulars of trade mark.

4. Where registration of a trade mark has not been or is not completed within twelve months from the date of the application, by reason of default on the part of the applicant, the Registrar shall give notice of the non-completion to the agent (if any) employed on behalf ofthe applicant, and, ifattheexpirationoffourteendays from thatnotice the registration is not completed, shall give the like notice to the applicant (to be left at his address within the State, if he is out of the State), and ifat the expiration of the latter fourteen days, or such further time as the Registrar may in special cases permit, the registration is not completed, the application shall be deemed to be abandoned.

s. (l) For the purposes ofthis Act, atrade mark must consist ofor contain, at least, one of the following essential particulars:

(a) a name of an individual or firm printed, impressed or woven in some particular and distinctive manner;

(b) awritten signature, orcopy ofawritten signature, ofthe individual or firm applying for registration thereofas a trade mark;

(c) a distinctive device, mark, brand, heading, label or ticket;

(d) an invented word or invented words; or

(e) a word or words having no reference to the characteror qUality of the goods, and not being a geographical name.

(2) There may be added to anyone or more of the essential particulars mentioned in this section any letters, words or figures, or combination of letters, words or figures, or any of them; but the applicant for registration of any such additional matter must state in his applicationtheessentialparticulars ofthe trade marie, andmustdisclaim in his application any right to the exclusive use ofthe added matter, and a copy of the statement and disclaimer shall be entered on the register. A person need not, under this section, disclaim his own name or the foreign equivalent thereof, or his place ofbusiness, but no entry of any

7TradeMarks Chap. 78:42

such name shall affect the right of any owner of the same name to use that name or the foreign equivalent thereof.

6. A trade mark must be registered for particular goods or classes Connection of o g . goods.foods -- ­

7. When a person claiming to be the proprietor of several trade Registration of a series of marks.marks, which, while resembling each other in the material particulars

thereof. yet differ in respect of­

(a) the statement of the goods for which they are respectively used or proposed to be used;

(b) statement ofnumbers;

(c) statement of price;

(d) statement of quality; or

(e) statements of names of places.

seeks to register such trade marks. they may be registered as a series in one registration. A series of trade marks shall be assignable and transmissible only as awhole.but for allotherpurposeseach ofthe trade marks composing a series shall be deemed and treated as registered separately.

8. Atrade mark may be registered in any colourorcolours, and the Trade mades may registration shall (subject to the provisions of this Act) confer on the be regilstered in

any co our or registered owner the exclusive rightto use the same in that or any other coloun. colour or colours.

9. Every application for registration ofatrade mark under this Act Advertisement of shall, as soon as may be after its receipt, be advertised by the Registrar. application. unless the Registrar refuses to entertain the application.

10. (I) Any person may within one month, or such further time. OppositiOR to registration.not exceeding three months, as the Registrar may allow. of the adver­

tisement of the application give notice in duplicate at the trade marks office ofopposition to registration of the trade mark. and the Registrar shall send one copy of the notice to the applicant.

(2) Within one month after receipt ofthe notice. orsuch further time as theRegistrarmay allow. the applicant may sendto the Registrar a counter statement in duplicate of the grounds on which he relies for

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Assignment and transmission of trade mark:.

Conflicting claims to registration.

Restrictions on registration.

his application, and, if he does not do so, shall be deemed to have abandoned his application.

(3) If the applicant sends the counter statement, the Registrar shall furnish a copy thereofto the person who gave notice ofopposition, and shall, after hearing the applicant and the opponent, if so required, decide whether the trade maIk is to be registered, but his decision shall be subject to appeal to the Court, and the Court shall have jurisdiction to hear and determine the appeal, and shall hear the applicant and the opponent and the Registrar, and shall make an order determining whether, and subject to what conditions (if any), registration is to be permitted.

(4) If the applicant abandon his application after notice of opposition in pursuance of this section, he shall be liable to pay to the opponent such costs in respect of the opposition as the Registrar may determine to be reasonable.

(5) When the opponent is out of the State, he shall give the Registrar an address for service in the State.

11. Atrade maIk, when registered, shall be assignedandtransmitted only in connection with the goodwill of the business concerned in the particulargoods orclasses ofgoods for which ithas beenregistered, and shall be determinable with that goodwill.

12. Where each ofseveral persons claims to be registered as propri· etor of the same trade mark, the Registrar may refuse to register any of them until their rights have been determined according to law, and the Registrar may himself submit, or require the claimants to submit, their rights to the Court.

13. (1) Except where the Court has decided that two or more persons are entitled to be registered as proprietors of the same trade mark, the Registrar shall not register in respect of the same goods, or description of goods, a trade mark identical with one already on the register with respect to such goods or description of goods.

(2) Except as mentioned before the Registrar shall not register, with respect to the same goods or description of goods, a trade maIk having such resemblance to a trade maIk already on the register with respect to such goods, or description of goods, as to be calculated to deceive.

9TradeMarks Chap. 78:42

14. It shall not be lawful to register as part of, or in combination Funhe~ restriction with, a trade mark any scandalous design orany words, the use ofwhich on reg,,"aHOn. would, by reason of their being calculated to deceive or otherwise, be deemed disentitled to protection in a Court of justice.

15. (I) Nothing in this Act shall be construed to prevent the Saving for power to provide forRegistrar entering on the register, in the prescribedmanner, and subject entry on register

to the prescribed conditions, as an addition to any trade mark, any of common marks asdistinctive word orcombination ofwords, though the same is common additions to trade

to the trade in the goods with respect to which the application is made. marks.

(2) The applicant for registration of any such addition must, however, state in his application the essential particulars of the trade mark, and must disclaim in his application any right to the exclusive use ofthe added matter, and a copy of the statement and disclaimer shall be entered on the register. A person need not, under this section, disclaim his ownname orthe foreign equivalent thereof, or his place ofbusiness; but no entry ofany such name shall effect the right of any owner of the same name to use that name or the foreign equivalent thereof.

PART II

EFFECTOFREGlS1RATION

16. Application for registration of a trade mark shall be deemed to Effect of be equivalent to public use of the trade mark. application.

17. The registration of a person as proprietor of a trade mark shall Right of first

be prima facie evidence of his right to the exclusive use of the trade ~:f:'~~~;e of mark, and shall, after the expiration of five years from the date of the "ade mark. registration, be conclusive evidence ofhis right to the exclusive use of the trade mark, subject to the provisions of this Act.

18. A person shall not be entitled to institute any proceeding to Re~rictions on

prevent or to recover damages for the infringement of a trade mark, :::;e::nc unless, in the case ofa trade mark capable ofbeing registered under this Act, it has been registered in pursuance of this Act.

19. In an action for infringement of a registered trade mark, the Costs of action for infringementCourt or a Judge may certify that the right to the exclusive use of the of trade mark.

trade mark came in question, and if the Court or a Judge so certifies, then, in any subsequent action for infringement, the plaintiff in that

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Register of trade marks.

Removal of trade mark after fourteen yean unless fee paid.

action, on obtaining a final order or judgment in his favour, shall have his full costs, charges, and expenses as between solicitor and client, unless the Court or Judge trying the subsequent action certifies that he ought not to have the same.

PART III

REGISTER OF TRADE MARKS

20. There shall be kept at the trade marks office a book called the registeroftrademarks, whereinshallbe enteredthenames and addresses of proprietors of registered trade marks, notifications of assignments and transmissions oftrade marks, and such othermatter as may be from time to time prescribed.

21. (1) At a time not being less than two months, nor more than threemonths, before theexpirationoffourteen years from thedateofthe registration of a trade mark, the Registrar shall send notice to the registered proprietor that the trade mark will be removed from the registerunless the proprietor pays to the Registrarbefore the expiration ofthe fourteen years (naming the date at which the same will expire) the prescribed fee; and if the fee is not previously paid, he shall, at the expiration of one month from the date of the giving of the first notice, send a second notice to the same effect.

(2) If the fee is not paid before the expiration of the fourteen years, the Registrar may, after the end of three months from the expiration ofthe fourteen years, remove the mark from the register, and so, from time to time, at the expiration ofevery period offourteenyears.

(3) If, before the expiration of the three months, the registered proprietor pays the fee together with the additional prescribed fee, the Registrar may, without removing the trade mark from the register, accept the fee as ifit had been paid before the expiration ofthe fourteen years.

(4) Where, after the three months, a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, if satisfied that it is just to do so, restore the trade mark to the register on payment of the prescribed additional fee.

(5) Where a trade mark has been removed from the register for non-payment ofthe fee orotherwise, the trademark shall, nevertheless, for the purpose of any application for registration during one year next

11TradeMarks Chap. 78:42

after the date of the removal, be deemed to be a trade made which is already registered, unless it is shown to the satisfaction ofthe Registrar that the non·payment of the fee arises from the death or bankruptcy of the registeredproprietor,orfrom his havingceasedtocarry onbusiness, and that no person claiming under that proprietor or under his bank· ruptcy is using the trade mark.

PARTlY

FEES

22. There shallbepaidin respectofapplicationsfor registration and Feedo,. , other matters under this Act such fees as may be from time to time ~~~.~~~: prescribed by the Minister.

PARTY

GENERAL

23. (I) The Minister may provide for the purposes of this Act an Trade mark. office with all requisite buildings and conveniences, which shall be office. called, and is in this Act referred to as, the trade marks office.

(2) Until anew trade marks office is provided, the office ofthe Registrar of the High Court shall be the trade marks office within the meaning of this Act

(3) The trade marks office shall be under the immediate control ofthe Registrarofthe High Court, who shall act under the superintend· ence and direction of the Minister.

(4) Any act or thing directed to be done by or to the Registrar may, in his absence, be done by or to any officer for the time being in that behalf authorised by the Minister.

24. There shall notbe entered in any registerkept under this Act, or Trust. n~t to be be receivable by the Registrar, any notice of any trust expressed, ;:;:;:rs~ implied or constructive.

25. The Registrar may refuse to register a trade mark of which the Refusal to use, in his opinion, would be contrary to law or morality. ::te;::::in

cases.

'See Gazelle, 1921, p. 266.

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12 Chap. 78:42 TradeMarks

Entry of assignments and transmissions in register.

Seal of trade muks office.

Inspection of and extracts from registers.

Sealed copies to be received in evidence.

Rectification of registers by Court.

26. Where aperson becomes entitled by assignment, transmission, or other operation of law to a registered trade mark, the Registrar shall on request, and on proof of title to bis satisfaction, cause the name of such person to be entered as proprietor of the trade marl<: in the register of trade maIks. The person for the time being entered in the register of trade maIks as proprietor ofatrade mark shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licences as to, or otherwise deal with, the same, and to give effectual receipts for any consideration for the assignment, licence or dealings; and any equities in respectofthe trade mark may be enforced inlike manner as in respect to any other personal property.

27. There shall be a seal for the trade maIks office, and impressions thereof shall be judicially noticed and admitted in evidence.

28. Every registerkept under this Act shall, at all convenient times, be open to the inspection of the public, subjectto the provisions of this Act and to such Regulations as may be prescribed; and certified copies, sealed with the seal of the trade marks office, of any entry in any such register shall be given to any person requiring the same, on payment of the prescribed fee.

29. Printed or written copies or extracts, purporting to be certified by the Registrar and sealed with the seal of the trade maIks office, ofor from the registers and other books kept there shall be admitted in evidence in all Courts of the State, and in all proceedings, without further proof or production of the originals.

30. (1) The Court may, on the application of any person aggrieved by the omission, without sufficient cause, ofthe name ofany person, or ofany otherparticulars, from any registerkept under this Act, orby any entry made, without sufficient cause, in any such register, make such order for making, expunging, or varying the entry, as the Court thinks fit; or the Court may refuse the application; and, in either case, may make such orderwith respect to the costs oftheproceedings as the Court thinks fit.

(2) The Courtmay, in any proceedingunder this section,decide any question that it may be necessary or expedient to decide for the rectification of a register; and may direct an issue to be tried for the decision of any question of fact, and may award damages to the party aggrieved

13TradeMarks Chap. 78:42

(3) Any order of the Court rectifying a register shall direct that due notice of the rectification be given to the Registrar.

31. The Registrar may, on request in writing accompanied by the Power to Prescribed fee _ Registrar to.correct elencal

errors. (a) correct any clerical error in, or in connection with, an

application for registration of a trade mark; or

(b) correct any clerical error in thename, style or address ofthe registered proprietor of the trade mark; or

(c) cancel the entry, or part of the entry, ofa trade mark on the register; or

(d) permit anapplicantfor registrationofatrade mark to amend his application by omitting any particular goods or classes ofgoods, in connection with which he has desired the trade mark to be registered;

Provided that the applicant accompanies his request by a statu­ tory declarationmade by himself, stating his name, address andcalling, and that he is the person whose name appears on the register as the proprietor of the trade mark.

32. (1) The registered proprietorof any registered trade mark may Alt~ration of . . registered trade

apply to the Court for leave to add to or alter the mark In any partIcular, mark. notbeing an essential particular within the meaning ofthis Act; and the Court may refuse or grant leave on such terms as it may think fit.

(2) Notice of any intended application to the Court under this sectionshallbegiven to theRegistrarby the applicant; and the Registrar shall be entitled to be heard on the application.

(3) If the Coun grants leave, the Registrar shall, on proof thereof and on payment of the prescribed fee, cause the register to be altered in conformity with the order of leave.

33. Any person who makes, or causes to be made, a false entry in Falsification of any register kept under this Act, or a writing falsely purporting to be a =;:~~~ copy of an entry in any such register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing, knowing the entry or writing to be false, is guilty of an offence.

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14 Chap. 78:42 TradeMarks

Exercise of discretionary­ power by Registrar.

Registrar may apply to Solicitor General.

Certificate of Registrar to be evidence.

Applications and notices by POSL

Provision as to days for leaving documents at office.

Declaration by infant. IWlatic, etc.

34. Where any discretionary power is by this Act given to the Registrar, he shall not exercise thatpower adversely to the applicant for the registration of the trade mark, without giving the applicant an opportunity ofbeing heard personally or by his agent

35. The Registrar may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the Solicitor General for directions in the matter.

36. Acertificate purporting to be under the hand ofthe Registrar, as to any entry, matter, or thing which he is authorised by this Act, or any general rules made thereunder, to make or do, shall be prima facie evidence ofthe entryhavingbeen made, andofthecontents thereof, and of the matter or thing having been done or left undone.

37. (1) Any application, notice or other document authorised or required to be left, made or given at the trade marks office, or to the Registrar, orto anyotherpersonunder this Act, maybe sentby aprepaid letter through the post; and if so sent shall be deemed to have been left, made or given respectively at the time when the letter containing the same would be delivered in the ordinary course ofpost.

(2) In proving the service or sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.

38. Whenever the last day fixed by this Act, or by any rule for the time being in force, for leaving any document, or paying any fee, at the trade marks office falls on a Saturday or a public holiday or any day observed as aday ofpublic fast or general thanksgiving, herein referred to as excluded days, it shall be lawful to leave the document, or to pay the fee, on the day following the excluded day, or days, if two or more of them occur consecutively.

39. Ifany person is, by reason ofinfancy, lunacy or other inability, incapable of making any declaration or of doing anything required or pennined by this Act, or by any Rules made under the authority ofthis Act, then the guardian orcommittee (if any) ofthe incapable person, or ifthere is none, any person appointed by any Court orJudge possessing jurisdiction in respect to the property of incapable persons, upon the petition ofany person on behalfofthe incapable person, or ofany other person interested in the making of any such declaration or doing any such thing, may make the declaration, or a declaration as nearly

15TradeMarks Chap. 78:42

corresponding thereto as circumstances pennit, and do such thing in the name and on behalf of the incapable person, and all acts done by the substitute shall, for the purposes of this Act, be as effectual as if done by the person for whom he is substituted.

40. (1) The Minister may, from time to time, make such general Powe, of rules anddosuch things as he thinks expedient, subjectto theprovisions Minis.., to mfake

. generaI rules or of this Act - classifying goods

and regulating (a) for regulating the practiceofregistration underthis Act; business of trade

mades office.·(b) for classifying goods for the purposes of trade maIXs; [12 of 1990J.

(c) for making or requiring duplicates of any documents;

(d) forsecuring and regulating the publishing andselling of copies, at such prices and in such manner as the Minis­ ter may think fit, of any documents in the trade maIXs office;

(e) for securing and regulating the making, printing, pub­ lishing and selling of indexes to, and abridgements of, any documents in the trade marks office; and for providing for the inspection of indexes and abridgements, and other documents;

if) generally for regulating the business of the trade maIXs office and all things by this Act placed under the direction orcontrol of the Registrar, orof the Minister.

(2) The fonn in the Schedule may be altered or amended by rules made by the Minister.

"(3) General rules may be made under this section at any time after the passing of this Act, but not so as to take effect before the commencement of this Act; and shall (subject as is hereinafter men­ tioned) be of the same effect as if they were contained in this Act, and shall be judicially noticed.

(4) Rilles made under this section shall be subject to negative resolution of the House of Assembly.

41. Any person authorised by any law in force in the State to take Authority fo, affidavits may take a declaration authorised or required to be made ::':g declara· under this Act "Rules. See Gazettes 1920, p. 99, and 1921, p. 266. "Rules. See Gazelles of 1970, p. 99, and 1921, p..266.

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16 Chap. 78:42 TradeMarks

SCHEDULE

FORMA

R>RM OF APPLICATION R>R REGISTRATION OF TRADE MARK.

(One representation to be fixed within this square, and two others on separate sheets offoolscap ofsame size.)

(Representations ofa larger size may be folded, but must be mounted upon linen, and affixed hereto.)

You are hereby requested to register the accompanying trade mark (in class ...................,iron inbars, sheets,andplates; in class ...................,steam engines and boilers; and in class..............................,warming apparatus) in the name of (a) ...............................................who claims to be the proprietor thereof-

Registration fees enclosed $............

(Signed) ......................................................

To the Registrar, Court House, Roseau, Dominica.

Note -Ifthe trade mark has been in use before, state length ofuser.

(a) Heie insert legibly the name, address and business of the individual or finn.

17TradeMarks Chap. 78:42 Trade Marks Ruk.

SUBSIDIARY LEGISLAnON

TRADE MARKS RULES

ARRANGEMENT OF RULES

RULE

1. Short title. PART I

PRELIMINARY

2. Classification of goods. 3. Detennination of doubts as to classes. 4. Fees. 5. Registration.

PART II

APPLICATION FOR REGISTRATION

6. Statement and declaration on application for registration. 7. Contents of statement. 8. Otherrequisites of statement. 9. Description of trade mark.

10. Requisites of declaration. II. Application by a company. 12. Acknowledgment of application.

PARTllI

ADVERTISEMENT OF APPLICATION AND NOTICE OF OPPOSITION

13. Advertisement of application. 14. Notice of opposition.

PARTIV

REGISTRATION OF TRADE MARK

15. Time for registration. 16. Entries to be made in register. 17. Notice of registration.

[Subsidiaryl

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RULE

PART V

REGISlRATION OF SUBSEQUENT PROPRIETORS

18. Rights of assignee. 19. Evidence of assignment 20. Evidence of transmission. 21. Declaration of assignee or transmittee. 22. Joint proprietors. 23. Separate proprietors.

PART VI

ALTERATION AND RECTIFICATION OF REGISTER

24. Alteration of address. 25. Removal of trade mark from registry. 26. Opposition to alteration of register. 27. Publication of alteration of register.

PART VII

INSPECTION OF REGISTER

28. Inspection of register.

PART VIII

APPLICATION TO THE COURT

29. Application to Court 30. Procedure in contested claims. 31. Settlement of special case.

19TradeMarks Chap. 78:42 TrtMk Marks Rules [Subsidiary]

RULE

PARTIX

DECLARATIONS AND EVIDENCE

32. Fonn of declaration. 33. Substitutory evidence. 34. Service of documents. 35. Fonns.

FIRST SCHEDULE. SECOND SCHEDULE. TIlIRD SCHEDULE.

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18/1937*

Commencement.

Short title.

Classification of goods. First .Schedule.

Detennination of doubts as to classes.

Fees. Second Schedule.

Registration. Second Schedule.

Statement and declaration on application for registration.

Trade Marks Ruks

SUBSIDIARY LEGISLATION

TRADE MARKS RULES

made under section 41

[6th August 1937]

1. These Rules may be cited as the ­

TRADE MARKS RULES.

PART I

PRELIMINARY

2. For the purposes of these Rules goods are classified in the manner appearing in the First Schedule.

3. Ifany doubt arises as to what class any particulardescription of goods belongs to, the doubt shall be determined by the Registrar.

4. The fees to be charged in pursuance of these Rules are the fees specified in the Second Schedule.

5. A trade malic or trade marks may be registered in pursuance of the same application by the same person in respect of all or any goods, subject to payment of the additional fees specified in the Second Schedule in respect of the registration of different trade malics or the extension of the same trade malic to goods in different classes.

PART II

APPLICATION FOR REGISTRATION

6. Any person whether a Commonwealth citizen or an alien, desiring to register a trade mark, shall employ an agent resident in the State for the purpose of making the application. The application shall be accompanied by a statement and a declaration as is hereinafter mentioned.

• These Rules have been amended by 42/1943; 19/1946; 20 of 1977; 12 of 1990.

21Trade Marks Chap. 78:42 rradi! MarksRuJes [Subsidiary)

Contents of7. The statement shall contain the following particulars: statement.

(a) the name and address and calling of the applicant;

(b) the description or reference to a description of the trade mark to be registered;

(c) the class or classes ofgoods, being some one ormore ofthe classes mentioned in the First Schedule, and the particular First Schedule. description ordescriptions ofgoods in such class orclasses, with respect to which he desires the trade mark to be registered; and

(d) in the case of a trade mark already in use, a description of the goods in respect ofwhich it has beenused and the length of time during which it has been so used.

8. The above statement must bear a date and be signed by the Other requisites of statement.applicant. Subject to any other directions that may be given by the

Registrar, the statement sent to the Registrar shall be upon foolscap paper, ofa size ofthirteen inches by eight inches, and shall have on the left·hand part thereof a margin of not less than one inch and a half.

9. Subject to any other directions that may be given by the Description of Registrar, a description of a trade mark shall be given in writing and trade mark. shall be accompanied, when practicable, by a drawing or other repre· sentation in duplicate, not less than three inches square, on foolscap paper of the size aforesaid, or by a specimen of the trade mark, pasted orotherwise fastened on the paper. When a drawing orother represen· tation or specimen cannot be given in the manner aforesaid, a specimen orcopy ofthe trade mark may be sent, either of full size, oron a reduced scale, and in such form as may be thought most convenient.

The Registrar may, if dissatisfied with the representation of a trade mark, require a fresh representation, either before he proceeds with the application, or before he registers the trade mark.

The Registrar may also, in exceptional cases, deposit in such place as the Minister shall direct a specimen or copy of a trade mark which cannot conveniently be placed on his register, and may refer thereto in his register in such manner as he thinks advisable.

10. The declaration must be on foolscap paper of the above· Requisites of dec1aration.mentioned size and must verify the statement and declare that, to the

best of the applicant's knowledge and belief, he is lawfully entitled to

L.R.O.1Il99J

22 Chap. 78:42 TradeMarks [Subsidiary]

Application by a company.

Acknowledg­ ment of application. Fonn F.

Advertisement of application.

Notice of opposition.

Time for registration.

Trad£ Marks Rules

use the trade mark, and must be made and subscribed as hereinafter mentioned.

11. Where an applicationfor the registrationofatrade markis made by or on behalf of a corporate or quasi-corporate body of persons, the statement and declaration shall be made by the secretary or other principal officer of the body of persons; and the Registrar may require such proof as he thinks fit that the application made is duly authorised by such body of persons.

12. On receipt of the application the Registrar shall send to the applicant an acknowledgment thereof which shall be in Form F in the Third Schedule.

PART III

ADVERTISEMENT OF APPLICATION AND NOTICE OF OPPOSITION

13. (\) As soon as may be after the receipt of an application made as provided by these Rules, the Registrar shall forward the same or a copy thereof to the Minister for advertisement in as many issues of the Gazette (not exceeding three issues) as the Registrar shall think neces­ sary.

(2) For the purposes ofthe advertisement the applicant may be requiredto furnish awood-blockorelectrotype ofthe trademarkofsuch dimensions as may from time to time be directed by the Registrar, or such other information or means of advertising the trade mark as may be allowed by the Registrar.

14. Anotice ofoppositionmay begivenby sendingto the Registrar, together with the prescribed fee, a written notice in duplicate, on foolscap paper of the size as aforesaid, stating the grounds of the opposition. The applicant's counter-statement in duplicate shall alsobe written on foolscap paper of the size as aforesaid.

PARTIV

REGISTRATION OF TRADE MARK

15. On the expiration of three months from the date of the first appearance of the advertisement in the Gazette the Registrarmay,ifhe is satisfied that the applicant is entitled to registration, register the trade

23TradeMarks Chap. 78:42 Trade Marks Rules [Subsidiary)

mark in respect ofthe description ofgoods for which he may be entitled to be registered, and the applicant as the proprietor thereof, on payment of the prescribed fee.

16. Upon registering any trade mark the Registrar shall enter in the register the date on which the statement re)ating to the application for registration was received by the Registrar (which day shall be deemed to be the date of the registration) and such other particulars as he may think necessary including the name and address of the proprietor.

Enlries to be

made in regisler.

17. TheRegistrarshall sendnotice to the applicantofthe registration of his trade mark.

Notice of

registration.

PARTY

REGISTRATION OF SUBSEQUENT PROPRIETORS

18. The person to whom any registered trade mark has been Rights of assignedortransmittedmay apply to be registered as proprietorthereof. assignee.

19. When the trade mark has been assigned, the person claiming as Evidence of assignee to be registered shall sendto theRegistrar, withhis application, assigmnenL an assignmentby deed, executed by both the assignorand the assignee, and a declaration verifying the aSSignment.

20. Where a trade mark has been transmitted, the person applying Evidence of as the transmittee to be registered shall send to the Registrar, together ~a;:7~s;~~: withhis application, a statement of the manner in which the trade mark has been transmitted, and a declaration verifying the statement.

Any transmittee may assign his interests in the mark, notwith· standing that he has not been registered as proprietor thereof.

When the person applying to be registered claims as the transmitteeofany registeredproprietor,oras the assigneeofatransmittee, there shall be produced to the Registrar the following evidence:

(a) ifthe business concernedin the goods with respectto which the trade mark is registered is carried on in the State or in a Commonwealth territory, then ­

(i) if the transmission has taken place by the death of any person, there shall be produced the probate of the will of the deceased person, or the letters of

L.R.O.1Il99J

24 Chap. 78:42 TradeMarks (Subsidiary)

Declaration of assignee or transmittee.

Joint proprietors.

Separate proprietors.

Trtuk MarkJRuJes

administration to his estate, or an official extract therefrom; and

(ii) if the transmission has taken place by the marriage of a female proprietor, there shall be produced a certified copy of the register of the marriage, or other legal evidence of the celebration thereof, and a declaration of the identity of the female proprie· tor; and

(iii) if the transmission has taken place by the bank­ ruptcy of the registered proprietor, orothelWise by operation of law, there shall be produced to the Registrar such evidence as may for the time being be receivable as proof of the title of the applicant;

(b) where the business is not carried on in the State or in a Commonwealth territory there shall be produced similar evidence to that herein before prescribed, or such evidence as would be received as sufficient evidence in the courts of justicein the country orplace at which the proprietorcarried on business.

21. Every declarationmade by an assignee ortransmittee shall state his name and address, and that he is entitled to the goodwill of the business concerned in the goods with respect to which the trade mark is registered, or to some part of the goodwill.

22. Where two ormore persons are registered as jointproprietors of the same registered trade mark, those proprietors, or the survivors or survivor of them, or their or his assignee or transmittee, shall alone be recognised by the Registrar as having any title to the trade mark.

23. Where divers persons claim to be severally entitled to the goodwill of a business concerned in the goods with respect to which a trade mark has been registered, such persons, or any of them, may, if they all consent thereto, and on the production of the proper evidence, and on payment of the prescribed fee, be registered separately as separate proprietors of the trade mark.

If all such persons so entitled do not so consent, the Registrar shall not, without leave of the Court, register any of them as separate proprietors of the trade mark.

25TradeMarks Chap. 78:42 Tradi! Marks Rules [Subsidiary]

PART VI

ALTERATION AND RECTIFICATION OF REGISTER

24. If the registered proprietor of a trade mark sends to the Regis- Alteration of trar. through an agent resident in the State together with the prescribed address. fee. notice of an alteration in his address. the Registrar shall alter the register accordingly.

25. The Court may. on the application of any person aggrieved. Removal of trade remove any trade mark from the register on the ground. after the :~':;m expirationoffive years from the date ofthe registration thereof. that the registered proprietor is not engaged in any business concerned in the goods with respect to which the trade mark is registered.

26. Any person may send. with the prescribed fee. notice to the Oppo'.ition to Registrar through an agent resident in the State of his desire to oppose ~~;,~~n of the registration of any assignee or transmittee. or any alteration of the register; and in every such case the proceedings shall be the same as in the case of a notice of opposition to the original registration of a trade mark.

27. Whenever the register is rectified or altered in any particular in Publi,:,tion of respect of any trade mark. the Registrar shall. if he thinks that the ~~;,~~n of rectification or alteration should be made public. at the expense of any person interested. published. by advertisement or otherwise and in such manner as he thinks fit. the circumstances attending the rectifica­ tion.

PART VII

INSPECTION OF REGISTER

28. On such days and during such hours as the Registrar may from Inspection of time to time determine. notbeing less than three hours onthree separate ~~':7~9901. days in a week. any person may. on paying the prescribed fee. inspect the register of trade marks.

PART VIII

APPLICATION TO THE COURT

29. An application to the Court under the Act and these Rules may. Application to subject to Rules of Court under the Supreme Court (Dominica) Act, be Court.

L.R.D. JtJ991

26 Chap. 78:42 TradeMarks [Subsidiary)

Procedure in contested claims.

Settlement of special case.

Fonn of declaration. [12 of 19901.

Trade Marks Rules

made by motion orby application in Chambers, or in such othermanner as the Court may direct

30. When the Registrar refuses to comply with the claims of any persons, until their rights have been determined by the Court, the manner in which the rights of such claimants may be submitted by the Registrar or, if the Registrar so require, by the claimants, to the Court shall, unless the Court otherwise orders, be by a special case; and the specialcaseshallbefiled and proceeded within like manneras anyother special case submitted to the Court orin such other manneras the Court may direct.

31. The special casemaybe agreed to by the parties or, ifthey differ, may be settled by the Registrar.

PART IX

DECLARATIONS AND EVIDENCE

32. (1) The declarations required by these Rules shall be made and subscribedin the United Kingdom under the Statutory Declarations Act 1835 and may be made and subscribed before any Justice of the Peace, or any commissioner or other officer authorised by law in any part of the United Kingdom to administer an oath for the purpose of any legal proceeding.

(2) The declaration, when taken outside the United Kingdom, shall­

(a) if made in any other part of the Commonwealth, be made and subscribedbefore any Court, Judge, Justice of thePeace, orany officerauthorisedbylawtoadminister an oath there for the purpose of a legal proceeding; and

(b) ifmade outside the Commonwealth, be made and sub­ scribed before a Dominica diplomatic agent or a Domi­ nica consular officer, or a notary public, or before a Judge or Magistrate.

(3) Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature ofany person hereby authorisedto take thedeclaration, in testimony ofthe declarationhaving beenmade and subscribedbefore him, may be admitted by the Registrar without proofofthe genuineness of any such seal or signature or of the official character of the person or his authority to take the declaration.

27TradeMarks Chap. 78:42 Trade Marks Rules [SubsidiaryI

33. In any case in which any person is required under the Act or Sub.ti'u,ory these Rules to make a declaration on behalf of himselfor of any body evidence. corporate, or any evidence is required to be produced to the Registrar, the Registrar, if satisfied that from any reasonable cause the person is unable to make the declaration or that the evidence may be dispensed with, may, upon the production of such other declaration or evidence, and subject to such tenns as he may think fit, dispense with the declaration or evidence.

34. Any application, statement, notice and document to be served Service of or sent on or to the Registrar shall be deemed to be properly addressed, documents. ifaddressedtotheRegistrarofTradeMarks athisoffice; and, ifrequired to be served on or sent to the proprietor of any trade mark shall be deemed to be properly addressed, if addressed to the registered propri­ etor at his registered address.

35. The fonns in the lbird Schedule or such other fonns as the Fonn•. Registrar may direct may be used in all cases to which they are Third Schedule. applicable.

Rule 2.FIRST SCHEDULE

CLASSES OF GOODS

Class I

Chemical substances used in manufactures, photography or philo­ sophical research, and anti-corrosives.

Class II

Chemical substances used for agricultural, horticultural, veterinary and sanitary purposes.

Class III

Chemical substances prepared for use in medicine and pharmacy.

ClasslV

Raworpartlypreparedvegetable, animal and mineral substancesused in manufactures, not included in other classes.

Class V

Unwrought and partly wrought metals used in manufacture. L.R.O.111991

28 Chap. 78:42 TradeMarks [Subsidiary) Trade Marks Rides

Class VI

Machinery ofall kinds and parts ofmachinery, except agricultural and horticultural machines included in Class VII.

Class VII

Agriculturaland horticulturalmachineryandpartsofsuchmachinery.

Class VIlI

Philosophical instruments, scientific instruments and apparatus for useful purposes. Instruments and apparatus for teaching.

Class IX

Musical instruments.

Class X Horological instruments.

Class XI

Instruments, apparatus and contrivances, not medicated, for surgical or curative purposes or in relation to the health of men or animals.

Class XII

Cutlery and edged tools.

Class XIII

Metal goods not included in other classes.

Class XlV

Goods of precious metals (including aluminium, nickel, Britannia metal, etc.), and jewellery and imitations of such goods and jewellery.

Class XV

Glass.

Class XVI

Porcelain and earthenware.

Class XVII

Manufactures from mineral and other substances for building or decoration.

ClassXVIlI

Engineering, architectural and building contrivances.

Class XIX

Arms, ammunition and stores not included in Class XX.

29TradeMarks Chap. 78:42 Tratk Marks Rules [Subsidiary)

Class XX

Explosive substances.

Class XXI

Naval architectural contrivances and naval equipments not included in Classes XIX and XX.

Class XXII

Carriages.

Class XXIII

(a) Cotton yam and sewing cotton not on spools or reels. (b) Sewing cotton on spools or reels.

Class XXIV

Cotton piece goods of all kinds.

XXV

Cotton goods not included in Classes XXIII, XIV or XXXVIII.

Class XXVI

Linen and hemp yam and thread.

Class XXVII

Linen and hemp piece goods.

Class XXVIII

Linen and hemp goods not included in Classes XXVI, XXVII and L.

Class XXIX

Jute yams and tissues and otherarticles made ofjute, not included in ClassL.

Class XXX

Silk, spun, thrown or sewing.

Class XXXI

Silk piece goods.

Class XXXII

Other silk goods, not included in Classes XXX and XXXI.

Class XXXIII

Yams of wool, worsted or hair.

L.R.O.1Il99J

30 Chap. 78:42 TradeMarks [Subsidiary] Trade Marks Rules

ClassXXXlV

Cloths and stuffs of wool, worsted or hair.

Class XXXV

Woollen, worsted and hairgoods notincluded inClassesXXXIII and XXXIV.

Class XXXVI

Carpets, floor cloth and oilcloth.

Class XXXVII

Leather, skins unwroughtand wrought, and articles made ofieather, not included in other classes.

Class XXXVIIl

Articles ofclothing.

Class XXXIX

Paper (except paper hangings), stationery, bookbinding.

Class XL

Goods manufactured from india-rubber and gutta-percha, not in­ cluded in other classes.

Class XU

Furniture and upholstery.

ClassXUl

Substances used as food or as ingredients in food.

ClassXUII

Fermented liquors and spirits.

ClassXUV

Mineral and aerated waters, natural and artificial, including ginger beer.

Class XLV

Tobacco, whether manufactured or unmanufactured.

31TradeMarks Chap. 78:42 Trll<k Mar'" Rules [Subsidiary]

Class XLVI

Seeds for agricultural and horticultural purposes.

Class XLVI/

Candles,common soap,detergents; illuminating,heatingorlubricating oils; matches and starch, blue and other preparations for laundry purposes.

Class XLVIII

Perfumery (including toiletarticles, preparations for the teeth and hair and perfumed soap).

ClassXUX

Games ofall kinds and sporting articles not included in other classes.

ClassL

(1) Goods manufactured from ivory,bone orwood, not included in other classes.

(2) Goods manufactured from straw or grass, not included in other classes.

(3) Goods manufactured from animal and vegetable substances, not included in other classes.

(4) Tobacco pipes.

(5) Umbrellas, walking-sticks, brushes and combs.

(6) Furniture cream, plate powder.

(7) Tarpaulins, tents, rick-cloths, rope, twine.

(8) Buttons of all kinds other than of precious metal or imita­ tions thereof.

(9) Packing and hose of all kinds.

(10) Goods not included in the foregoing classes.

Rule 4.SECOND SCHEDULE [20 of 19771.

The following fees shall be payable for the following purposes:

1. On application for registration .......................................................$75.00

2. Certificate of registration ofone trade mark ..................................... 37.50

3. For each additional trade mark after the first granted upon the same application ................................................. 15.00

L.R.O.li1991

32 Chap. 78:42 TradeMarks [Subsidiary] Trark Marks Ruks

Section 35.

4. Where Ihe certificate of registration is for a trade mark in respect of goods in different classes, for every class after Ihe first an additional fee of ................................................ 7.50

5. Registeringsubsequentproprietor ................................................37.50

6. For altering address in register ...................................................7.50

7. For every entry in the register of a rectification Ihereof or an alteration Iherein, not olherwise charged........................... 15.00

8. For every entry of renewal of registration of trade mark .................................................................................37.50

9. For altering address on Ihe register.............................................24.00

10. For every entry in the register of a rectification Ihereof or an alteration Iherein, not olherwise charged ...........................48.00

11. For continuance of mark at expiration of fourteen years .......... 192.00

12. Additional fee where fee is paid wilhin. three monlhs after expiration of fourteen years ...............................................96.00

13. Additional fee for Ihe restoration of trade mark, when removed for non-payment of fee ............................................. 192.00

14. Forcertiflcate ............................................................................96.00

15. For inspecting register, for every quarter ofan hour ................... 4.80

16. For office copy of document, eight cents per folio, but never less Ihan .............................................................................4.80

17. Settling a special case of Registrar .......................................... 192.00

Note. - Ifa copy ofa trade mark is requiredfor any purpoose, such copy will be supplied by or at the expense ofthe applicant.

THIRD SCHEDULE

FORMA

FORM OF STATEMENT ON APPLICATION FOR REGISTRATION OF ONE TRADE MARK

I, ,of apply to be registered as proprietor of trade mark and which is represented in the paper annexed hereto.

I desire Ihat Ihe said trade mark may be registered in respect of Ihe description of goods following, contained in Class ,lhat is to say,

33TradeMarks Chap. 78:42 Trade Marks Rules

I have used the said trade mark in respect of the said goods for years before the date of this statement

The day of 19

(Signature)

FORMB

FORM OF STAlEMENT ON APPLICAnON FOR REGISTRAnON OF MORE THAN ONE TRADE MARK

I, , of , apply to be registered as proprietor of the following trade marks, numbered from "I" to

The trade marks numbered are described as follows, that is to say,

No.1 is and is represented on Paper I annexed hereto.

. No.2is and is represented on Paper 2 annexed hereto.

I desire that the said trade marks may be registered in respectofthe descriptions of goods following, that is to say,

As to No.1, in respect of the following goods contained in Class viz.­

As to No.2, in respect of the following goods contained in Class viz.­

I have used the trade marks numbered respectively and in respect of the goods for which I desire them to be registered for years before the date of this statement

The day of ,19

(Signature)

[Subsidiary)

L.R.O.1Il99J

34 Chap. 78:42 TradeMarks [Subsidiary) Trade Marks Rules

FORMC

FORM OF DECLARATION TO ACCOMPANY STATEMENT ON APPLICATION FOR REGISTRATION OF TRADE MARK

I, ,of do hereby solemnly and sincerely declare, to the best of my knowledge and belief, as follows:

(I) The statement signed by me and dated the day of and marked with the letter "An and shown to me at the time of making this declaration is true.

(2) The description of the trade mark in such statement is a true description of the trade mark for the registration of which I apply.

(3) I am lawfully entitled to the use of the trade mark of which the said description is a true description.

(Signature)

Declared before me [etc.]

FORMD

FORM OF ASSIGNMENT OF TRADE MARK

Trade mark, Class No.

Name

Place of business I, , of being registered proprietor ofthe trade mark aboveparticularlydescribed, in considerationof dollars paid to me by carrying on business at in under the fIrm of , hereby assign the said trade mark to the said together with the goodwill of the business concerned in the goods with respect to which the trade mark is registered.

In witness whereof! have hereunto subscribed my name and affIxed my seal, this day of ,19 .

(Signature and Sean( �/i>