LAWS OF DOMINICA
REGISTRATION OF UNITED KINGDOM TRADE MARKS ACT
CHAPTER 78:44
Act 13 of1946
Amended by 27 of 1982' 12 of 1990
(*See Note on page 2)
Current Authorised Pages Pages AuJhorised
(inclusive) hyL.R.O. 1-16 111991
L.R.O.1I1991
2
8
Registration ofUnited Kingdom
Chap. 78:44 TradeMarks
Index of
Subsidiary Legislation
Page
Registration of United Kingdom Trade Marks Rules
Note on
Act No. 27 of 1982
AetNa. 27 of 1982 purported to amend the Second Schedule to the Act. The Act does not contain • Second Schedule. Act No. 27 of 1982 has been omitted.
3 Registration ofUnited Kingdom
TradeMarks Chap. 78:44
REGISTRATION OF UNITED KINGDOM TRADE MARKS ACTS
CHAPTER 78:44
ARRANGEMENT OF SECTIONS
SECTION
1. Short title. 2. Interpretation. 3. Application for registration. 4. Procedure on application. 5. Issue of certificate. 6. Privileges of proprietor. 7. Duration of privileges. 8. Right of action for passing off. 9. Powers of Court.
10. Assignment of privileges. 11. Application by registered user. 12. Entry in register. 13. Powers of Minister. 14. Keeping and inspection of register. 15. Renewal of registration. 16. Powers of Registrar. 17. Repeal and saving.
Saving and fOIm of register.
4 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks
1961 Ed. Cap. 328. 13 of 1946.
Commencement.
Short title.
Interpretation.
Application for registration. 1 & 2Geo. VI. c. 22.
Procedure on application.
Issue of certificate.
CHAPTER 78:44
REGISTRATION OF UNITED KINGDOM TRADE MARKS ACT
AN ACT to provide for the registration of United Kingdom trade marks.
[31st December 1946]
1. This Act may be cited as the
REGISTRATION OF UNITED KINGDOM TRADE MARKS ACT.
2. In this Act
"Court" means the High Court of Justice;
"register" means the register oftrade marks required to be kept under this Act;
"Registrar" means the Registrar of the Court.
3. Any person being the registered proprietorofa trade mark in the United Kingdom byvirtue ofan entry in the registeroftrade marks kept undertheTradeMarks Act 1938 (United Kingdom) orany Act amending or substituted for that Act, or any person deriving title from the registered proprietor by assignment or other mode of transfer, may apply at any time during the existence of the registration in the United Kingdom to have the trade mark registered in the State in respect of some or all ofthe goods comprised in the United Kingdom registration.
4. An application for registration of a trade mark under this Act shall be made to the Registrar and accompanied by a certified represen tation of the trade mark and a certificate of the Comptroller General of the United Kingdom Patent Office (under his title ofRegistrar ofTrade Marks) giving full particulars ofthe registration ofthe trade mark in the United Kingdom, and such other documents as may from time to time be prescribed.
S. Uponthe application being lodged, together with the documents mentioned in section 4 the Registrar shall enter the prescribed particu lars in the register and shall issue a certificate of registration.
5 Registration ofUnited Kingdom
TradeMarks Chap. 78:44
6. Subjecttothis Act, a registered proprietorshall have in the State PriviI~ges of such privileges and rights in the use of the trade mark in respect of the f~po~~~~]. goods entered in the register as mutatismutandis would be conferred on him by the law inforce in the United Kingdom on 2nd November 1978.
7. The privileges and rights conferred by section 6 shall date from Im,~tion of the date of registration in the United Kingdom and shall continue in pnvlleges. force, subject to section IS, or 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 the State; and 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 the State.
8. Nothing in this Act shall be deemed to affect rights of action Right of action . ,. ff ood th f th fo, passing off.agamst any person lor passmg 0 g s as ose 0 ano er person or
any remedy in respect thereof.
9. The Court shall have power upon the application of any person Powe" of Court. who alleges that his interests have been prejudicially affected by the [12 of 1990]. issue of a certificate of registration, to declare on any of the grounds mutatis mutandis on which the United Kingdom registration might be cancelled under the law in force in the United Kingdom on 2nd November 1978 that the exclusive privileges and rights have not been acquired.
10. Subject to the provisions of this Act, where a person becomes A~si.gnment of entitled by assignment, transmission or other operation of law to the pnvdeges. privileges and rights conferred by a certificate of registration issued under this Act, 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 on the register as subsequentproprietorofthe trade mark.
11. Any person entered in the United Kingdom Register of Trade Application by Marks under section 28 ofthe TradeMarks Act 1938 (United Kingdom) ~~s;~!~se,. as a registered user in respect of any goods ofa trade mark in respect of VI. c. 22. which a certificate of registration under this Act is in force may apply to be registered in the State 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.
6 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks
Entry in Register. [12 of 1990[.
Powers of Minister.
Keeping and inspection of register.
Renewal of registration.
Powers of Registrar.
12. Upon the application being lodged, together with a certificate of the United Kingdom Registrar ofTrade Marks giving full particulars of the entry in the United Kingdom register under the said section 28, the Registrar shall cause the applicant to be entered in the register of the State as a registered user of the trade mark, and on the entry the registered user shall be entitled in the State, subject to the aforesaid conditions and restrictions, to such privileges and rights in respectofthe goods for which he is entered as mutatis mutandis would be conferred on him by the law in force in the United Kingdom on 2nd November 1978.
13. The Ministermay make suchRules and do such things as hemay think expedient, subject to this Act, for regulating procedure under this Act, and prescribing the fees to be paid in respect of proceedings under this Act, and generally for prescribing anything which by this Act is to be prescribed.
14. (I) There shall be kept in the Registrar's office a register in which shall be entered in the prescribed form all matters which are by this Act required to be registered.
(2) The register shall be open to inspection at all hours during which the Registrar's office is open.
15. If the registration in the United Kingdom of a trade mark registered under this Act is renewed, the registered proprietor may, within six months after the date of renewal in the United Kingdom, 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 registration in the register is not so renewed it shall be cancelled by the Registrar.
16. The Registrar may, on request in writing made by the registered proprietor, and on payment of the prescribed fee
(a) cancel the registration ofa trade mark orofa 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 Act or in any matter which is entered in the register;
7 Registration ofUnited Kingdom
TradeMarks Chap. 78:44
(c) enter in the register any change in the name, description or address ofthe person who is registered as proprietor oruser of a trade mark.
17. (1) The Registration of United Kingdom Trade Marks Act Repeal and 1930 is hereby repealed without prejudice to anything done or suffered ~~;.'~g~f 1930. thereunder, or any right, privilege, obligation or liability acquired, accrued, or incurred thereunder or any rules made thereunder. Such rules shall be deemed to have been made under this Act and shall continue in force, so far as the same may not be rendered inapplicable by this Act, until otherprovision shall be made underorby virtue ofthis Act
(2) The registerkeptunderthe provisions ofthe Registrationof Saving and fonn UnitedKingdom Trade Marks Act 1930shallcontinue in force and shall of regIster. be deemed to be the register to be kept under this Act.
8 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks [Subsidiary] Registration ofUni.ted Kingdom
Trade Marks Rules
SUBSIDIARY LEGISLAnON
REGISTRATION OF UNITED KINGDOM TRADE MARKS RULES
ARRANGEMENT OF RULES
RULES
1. Short title. 2. Interpretation. 3. Application for registration. 4. Acknowledgment of receipt of application. S. Fonn of certificate of registration. 6. Subsequent registered proprietors. 7. Registered users. 8. Renewal of registration. 9. Application by non-resident.
10. Advertisement. 11. Powers of Registrar. 12. Fees.
FIRST SCHEDULE. SECOND SCHEDULE.
9 Registration ofUnited Kingdom
TradeMarks Chap. 78:44 RegistrationofUnited Kingdom [Subsidiary]
Trade Marks Rules
SUBSIDIARY LEGISLATION
REGISTRATION OF UNITED KINGDOM 3/1947. [27 of 1982TRADE MARKS RULES 1 of 1973 35/1983].
made under section 13
Commencement.[17th March 1947]
Short title.1. These Rules may be cited as the
REGISTRATION OF UNITED KINGDOM TRADE MARKS RULES.
2. In these Rules "Form", identified by a letter, means the Form so Inteq"eta"on. identified as set out in the First Schedule; Fi"t Schedule.
3. Every application for registration of a trade mark shall be in Application for Form A, and shall be accompanied by a certificate ofUnited Kingdom ;:.:tr:.wn. registration. A representation of the trade mark shall be affixed to the said application.
Acknowledgment4. On receipt of the application the Registrar shall send to the of receipt of
applicant an acknowledgment thereof in Form B. application. Fonn B.
5. The form of certificate of registration issued by the Registrar Fonn of • certtflcate of
shall be ill Form C. registration. Fann C.
6. (1) An application under section 10 ofthe Act shall be made in Subsequent Fonn C. registered
proprietors.
(2) Inproofofhis title the applicant shall produce the certificate Fonn C. of registration issued under section 5 of the Act and a certificate of the United Kingdom Registrar ofTrade Marks giving full particulars ofthe registration ofthe applicant as a subsequent registered proprietorofthe registered trade mark.
(3) Upon entry in the register of the applicant as a subsequent registered proprietor of a trade mark the Registrar shall endorse upon the certificate of registration issued under the Act a statement of the alteration in the proprietorship of the trade mark.
10 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks [SubsidiaryI
Registered users. Fonn E.
Renewal of registration.
PonnF.
Application by non-resident.
FonnG.
Advertisement.
Powers of Registrar.
FOJDl H.
Registration ofUniled Kingdom Trade Marks Rules
7. (1) An application under section 11 of the Act shall be made in FormE.
(2) The Registrar may at the request ofa registered user issue a certificate of the registration of that registered user in respect of the goods of a trade marie for which he is entered in the register.
8. (1) Application for renewals of registration shall be in writing accompanied by the relative certificate of renewal in the United King dom.
(2) The form of certificate of renewal issued by the Registrar shall be in Form F.
9. Where the applicant for registration, renewal of registration, or registration ofassignmentofa trade mark does not reside in the State he shall employ, for the purpose of making the application and doing all things necessary for obtaining the registration of the trade mark, an agent resident in the State, who shall be appointed in the manner prescribed in Form G.
10. (1) 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 thereofto 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 purpose of the advertisement the applicant may be required to furnish a wood-block or electrotype of the trade marie of such 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 the Registrar.
11. (1) Applications under section 16 of the Act shall be made in Form H. Every such applicationshall be accompanied by the certificate of registration under the Act and such evidence as the Registrar may consider sufficient.
(2) Upon receipt of the application the Registrar may cause the necessary alterations to be made in the register and in the certifi cate of registration, and in the case of a cancellation of a trade mark wholly he shall cancel the certificate of registration and retain it.
Registration ofUnited Kingdom TradeMarks Chap. 78:44 11
Registration ofUnited Kingdom [SubsidiaryI Trade Marks Rules
12. The fees in the Second Schedule shall be charged in respect of Fees. . . th· d hallbe 'db th Ii hi Second Schedule.the vanous Items erem set out an s pat y e app cant or s
agentto the Registrar who shall pay the same into the Treasury as soon as possible after the receipt thereof.
N.B. -
FlRST SCHEDULE
FORMS
The Registrar is not obliged to supply forms.
FORMA
Rule 2.
Rule 3.
APPUCATION FOR REGISTRATION
Dominica.
The Registration ofUnited Kingdom Trade Marks Act
(Representation of trade mark to be affixed here)
Application is hereby made for the registration, in the register, of the United Kingdom Trade Mark No. ........ registered on the ............ day of ......................................., 19........., and for the issue to me (or to us, or A. B.) of a certificate of registration in Dominica for the said trade mark.
Dated the ......... day of ..................................., 19......
Signature ofApplicant or Agent.
To the Registrar ofTrade Marks, Dominica.
r n". ',Jnnr
12 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks [SubsidiaryI Registration ofUniled Kingdom
Trade Marks Rules Rule 4. FORMB
ACKNOWLEDGMENTOF AFPUCATION
Dominica.
The Registration 0/United Kingdom Trade Marks Act
Ido herebyacknowledge that Ihavereceivedat my officeatRoseau.Dominica. this ........... day of ...............................• 19......• an application by "...........................................of ........................... for the issueofacertificateof registration of United Kingdom Trade Mark No........ in respect of .............................................. under the RegistrationofUnited Kingdom Trade Marks Act accompanied by the following documents. viz.
Dated this ........... day of ..........................• 19 .....
Registrar o/Trade Marks.
RuleS. FORMC
CERTIFICATEOFREGISTRATION
Dominica.
The Registration o/United Kingdom Trade Marks Act
No...............
I•.......................................... Registrar ofTrade Marks for the State of Domi nica herebycertify that the United Kingdom TradeMarkNo............... ofwhich a representation is affixed hereto. was registered in Dominica under date the ................ day of ......................................• 19...........• No............... in Class .................................... inrespectof.(a)............................................................
In pursuance of an application received on the ......... day of ........................• 19........... areregisteredas proprietors of the said trade mark as from the (b) ........... day of ........................• 19........
Registration shallremain in force (in accordance with the provision ofthe Act) for so long as registration in the United Kingdom remains in force. and subject to notification in Dominica of renewals of registration in the United Kingdom as required by section 15 of the Act.
13 Registration ofUnited Kingdom
TradeMarks Chap. 78:44 Registration ofUnited Kingdom
Trade Mark.rRuies [SubsidiaryI
Representation of
In witness whereof I have hereunto set my hand this ......... day of ...................................., 19......
Marl<.
Registrar ofTrade Marks, Dominica
(a) Here state goods. (b) Insert date of registration in the United Kingdom.
FORMD Rule 6.
APPUCATIONTO REGISTER SUBSEQUENT PROPRIETOR
Dominica.
The Registration ofUnited Kingdom Trade Marks Act
I (or we) (a).•....................•....................................... hereby make application to you to enter my (or our) name (ornames) in the Register ofTrade Marks as the proprietor (or proprietors) of the United Kingdom Trade Marks registered in Dominica under No........ in respect of ........................................................
Iam (or we are) entitled to the privilegesand rights conferred by the certificate of registration issued under the above-mentioned Act, in proof whereof I (or we) transmit the said certificate ofregistration and (b)
Dated the ............ day of .............................. , 19........... .
Signed...................................
My (or our) address for service in Dominica is as follows:
To the Registrar, Dominica.
(a) Here insert name, address and description of applicant or applicants. (b) Describe any docwnent on which the applicant bases his title.
14 Registration ofUnited Kingdom
Chap. 78:44 TradeMarks [SubsidiaryI
Rule 7.
Rule 8.
RegistralionofUnited Kingdom Trade Marks Rules
FORME APPUCATION OF REGISTRATION OF REGISTERED USER
Dominica.
The Registration ofUnited Kingdom Trade Marks Act
1(or we. or A. B.) hereby apply for registration as a registered user (or users) in respect of goods of the trade mark registered in the United Kingdom under the Trade Marks Act numbered ................................... and bearing date ............................. and more fully set out and referred to in the accompanying certificate of the Comptroller General of the United Kingdom Patents Office.
Dated the .................. day of ...........................• 19........
(Signed) ...........................................
My (or our) address for service in Dominica is as follows:
To the Registrar ofTrade Marks. Dominica.
FORMF
CERTIFlCATEOF RENEWAL OF REGISTRATION
Dominica.
The Registralion ofUnited Kingdom Trade Marks Act
I DO HEREBY CERTIFY that the registration of the United Kingdom Trade Mark No.....................................................registeredinDominicainthename of ................................................ No .......................... in Class ......... ....................... ..... ...... ........... ........... ... is renewed for the period of ........................................................... years from the ........................... day of ..........................................................• 19.........• until the ..................... day of .............................• 19..........
GIVEN undermy handand sealofoffice this ........ day of......................• 19........
Registrar ofTrade Marks Dominica.
15 Registration ofUnited Kingdom
TradeMarks Chap. 78:44 RegistralionojUnitedKingdom [SubsidiaryI
Trade Marks Rules
FORMG Rule 9.
APPOllfnMENTOFAGENT
Dominica.
The Registration ofUnited Kingdom Trade Marks Act
J(orwe)hereby appoint .........................................of........................................ to act as my (or our) agent in Dominica (a) ...•........•.•..•.........•.•............•.•.... and request that all notices. applications or communications relating thereto may be sent to such agent at the above address.
Dated the .............. day of .........................• 19........
Proprietor.
To the Registrar. Dominica.
(a) Here state the particularpurpose for which the agent is appointed. e.g.• all purposes inCOlUlection with the registration ofthe accompanying trade mark in the register and in connection with any application to the Court under section 9 of the Act and any assignment or renewals thereof. as the case may be.
FORMH Rule 11.
APPUCATION FOR CANCELLATION OR ALTERATIONBY REGISTRAR
Dominica.
The Registration ofUnited Kingdom Trade Marks Act
I (or we) (a)................................................... the registered proprietor(s) ofthe United Kingdom Trade Mark registered under number ...................... on the .................... day of........................• 19..............• hereby makeapplication that (b)........•.•.......•.•.... (that the registration of the said trade mark may be can celled.or that theregistrationofthesaid trade mark may becancelled inrespect of (e)•.•.•.•..........................•....... or that you will enter (e) .................in the
(a) Name. address and description. (b) Use words in brackets as circumstances may require. (e) Name of goods. (d) Set out error or correction required. (e) Insert here new name and/or address.
Registration ofUnited Kingdom 16 Chap. 78:44 TradeMarks [SubsidiaryI RegistrationofUnited Kingdom
Trade Marks Rules
register as the nameandlor address of the proprietor(s) of the said trade mark).
Dated the .............. day of ............................., 19....... .
(Signed) ......•.••.•......•.................... Applicant or Agent.
To the Registrar ofTrade Marks, Dominica
My address for service in Dominica is as follows:
Rule 12. SECOND SCHEDULE [1 of 1973 27 of 1982 35/1983*1. • The following fees shall be payable for the following purposes:
1. On application for registration $20.00 2. Certificate of registration of one trade mark 10.00 3. For each additional trade mark after the
first, granted upon the same application 5.00 4. Where the certificate of registration is for a
trade mark in respect ofgoods in different classes for every class after the first an additional fee of 2.50
5. Forregistering a subsequent proprietor lO.OO 6. For altering an address in the register 2.50 7. For every entry in the register by way of
rectification or alteration, not otherwise charged 5.00
8. For every entry of renewal of registration lO.OO
• These fees came into effect on 14th June 1982 (35/1983)