CHAPTER 13.14
GEOGRAPHICAL INDICATIONS ACT
Revised Edition
Showing the law as at 31 December 2015
This is a revised edition of the law, prepared by the Law Revision Commissioner under the authority of the Revised Edition of the Laws Act.
• Act • Subsidiary Legislation •
ACT
(Act 4 of 2000)
Act 4 of 2000 in force 1 May 2000 (S.I.86/2000)
ARRANGEMENT OF SECTIONS
PART 1
PRELIMINARY
1. Short title
2. Interpretation
PART 2
REGISTRATION OF GEOGRAPHICAL INDICATIONS
3. Application for Registration and Contents of Application
4. Rights to File application and representation
5. Examination, opposition and registration
6. Right to use
7. Cancellation and rectification of registration and publication
8. Register and publication
9. Correction of errors and extension of time
10. Exercise of discretionary powers
11. Competence of Court and appeals
PART 3
PROTECTION OF GEOGRAPHICAL INDICATIONS
12. Civil proceedings
13. Availability of protection regardless of registration and presumption
14. Homonymous geographical indications for wines
15. Exclusion from protection
16. Offences and penalties
PART 4
SPECIAL PROVISIONS CONCERNING MARKS; EXCEPTIONS
17. Misleading marks
18. Marks conflicting with a geographical indication for wines and spirits
19. Exceptions regarding prior users
PART 5
REGULATIONS
20. Regulations
Schedule
CHAPTER 13.14
GEOGRAPHICAL INDICATIONS ACT
AN ACT to provide for the registration and protection of geographical indications and related matters.
Commencement [1 May 2000]
PART 1
PRELIMINARY
1. Short title
This Act may be cited as the Geographical Indications Act.
2. Interpretation
In this Act—
“applicant” means a person applying under section 3;
“competent authority” means an authority described under section 4(1)(c);
“Court” means the High Court;
“geographical indication” means an indication which identifies a good as originating in the territory of a country, or a region or locality in this territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin;
“good” means any natural or agricultural product or any product of handicraft or industry;
“Minister” means the Minister to whom responsibility for intellectual property has been assigned;
“Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as last revised;
“person” means a body corporate or an unincorporated body;
“producer” means—
(a) any producer of agricultural products or any other person exploiting natural products;
(b) any manufacturer of products of handicraft, or industry; and
(c) any trader dealing in the said products;
“Register” means the Register of Geographical Indications;
“Registrar” means the Registrar of Companies and Intellectual Property.
PART 2
REGISTRATION OF GEOGRAPHICAL INDICATIONS
3. Application for Registration and Contents of Application
(1) An application for the registration of a geographical indication shall be filed with the Registrar and shall specify—
(a) the name, address and nationality of the natural person or legal entity filing the application, and the capacity in which the applicant is applying for registration;
(b) the geographical indication for which registration is sought;
(c) the geographical areas to which the geographical indication applies;
(d) the goods for which the geographical indication applies;
(e) the quality, reputation or other characteristic of the goods for which the geographical indication is used.
(2) An application for the registration of a geographical indication shall be subject to the payment of a prescribed fee.
4. Rights to File application and representation
(1) The following shall have the right to file an application—
(a) persons carrying on an activity as a producer in the geographical area specified in the application, with respect to the goods specified in the application, as well as a group of such persons;
(b) a group of consumers; and
(c) any authority competent to represent persons under paragraph (a).
(2) Where an applicant’s ordinary residence or principal place of business is outside Saint Lucia he or she shall be represented by an attorney-at-law resident and practising in Saint Lucia.
5. Examination, opposition and registration
(1) The Registrar shall examine an application to ascertain whether it complies with the requirements of sections 3, 4 and 15 and the regulations.
(2) Any interested person or competent authority may, within the prescribed period and in the prescribed manner, give notice to the Registrar of opposition to the registration of a geographical indication on the grounds that one or more of the requirements of sections 3 and 4 are not fulfilled.
(3) The Registrar shall send a copy of such notice to the applicant, and, within the prescribed period and in the prescribed manner, the applicant shall send to the Registrar a counter-statement of the grounds on which he or she relies for his or her application and where the applicant fails to do so the application shall be deemed to be abandoned.
(4) If the applicant sends a counter-statement, the Registrar shall furnish a copy to the person giving notice of opposition and, after hearing the parties, if either or both wish to be heard, and considering the merits of the case, shall decide whether the geographical indication should be registered.
(5) Where the Registrar finds that the conditions referred to in subsection (1) are fulfilled, and either—
(a) the registration of the geographical indication has not been opposed within the prescribed time limit; or
(b) the registration of the geographical indication has been opposed and the opposition has been decided in the applicant’s favour,
the Registrar shall register the geographical indication, publish a reference to the registration and issue to the applicant a certificate of registration.
(6) An application that does not comply with the requirements of subsection (1) shall be refused by the Registrar.
6. Right to use
Only producers carrying on their activity in the geographical area specified in the Register shall have the right to use in the course of trade a registered geographical indication, with respect to the products specified in the Register, if such products possess the quality, reputation or other characteristic specified in the Register.
7. Cancellation and rectification of registration and publication
(1) An interested person or a competent authority may apply to the Court for—
(a) the cancellation of the registration of a geographical indication on the ground that it does not qualify for protection as such having regard to section 15; or
(b) the rectification of the registration of geographical indication on the ground that the registration does not correspond to the geographical indication, or that the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.
(2) In any proceedings under this section, notice of the request for cancellation or rectification—
(a) shall be served on the person who filed the application for registration of the geographical indication or his or her successor in title; and
(b) shall, by a publication in the prescribed manner, be given to all persons having the right to use the geographical indication under section 6.
(3) The persons referred to in subsection (2) and any other interested person may, within a period which shall be specified by the Court in the said notice, apply to join in the proceedings.
(4) The Registrar of the Court shall notify the Registrar of the decision of the Court or the decision on any appeal therefrom and the Registrar shall record it and publish a reference thereto as soon as possible.
8. Register and publication
(1) The Registrar shall maintain a Register in which he or she shall record all matters required by this Act to be recorded and the Register may be consulted by any person, who may obtain an extract therefrom, under the conditions prescribed in the regulations.
(2) The Registrar shall publish in the prescribed manner all the publications provided for in this Act.
9. Correction of errors and extension of time
(1) The Registrar may, subject to regulations made under this Act, correct any error of translation or transcription, clerical error or mistake in any application or document filed with the Registrar or in any matter recorded under this Act or the regulations.
(2) If the Registrar is satisfied that the circumstances justify it, although the time has expired, he or she may, upon receiving a written request, extend the time for doing any act or taking any proceeding under this Act and the regulations, upon notice to parties concerned and upon such terms as he or she may direct.
10. Exercise of discretionary powers
Where the exercise of a discretionary power by the Registrar under this Act is likely to adversely affect a party to a proceeding before the Registrar, the party shall be given an opportunity to be heard before the power is exercised.
11. Competence of Court and appeals
(1) The Court shall have jurisdiction in cases of dispute relating to the application of this Act and in matters which under this Act are to be referred to the Court.
(2) Any decision taken by the Registrar under this Act may be the subject of an appeal by any interested party before the Court and such appeal shall be filed within 2 months of the date of the decision.
PART 3
PROTECTION OF GEOGRAPHICAL INDICATIONS
12. Civil proceedings
(1) Any interested person or any interested group of producers or consumers may institute proceedings in the Court to prevent, in respect of geographical indication—
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin, in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention contained in the Schedule;
(c) the use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translating or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like.
(2) In proceedings under this section the Court may issue an injunction, award damages or grant any other remedy or relief as it may deem fit.
13. Availability of protection regardless of registration and presumption
(1) Protection under this Act shall be available regardless of whether the geographical indication has been registered. However, registration of a geographical indication under Part 2 of this Act shall, in any proceedings under this Act, raise a presumption that such indication is a geographical indication within the meaning of section 2.
(2) Protection under this Act shall be available against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.
14. Homonymous geographical indications for wines
(1) In the case of homonymous geographical indications of wines, protection shall be accorded to each indication, subject to section 13(2).
(2) The Registrar in cases of permitted concurrent use of such indications shall determine the practical condition under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
15. Exclusion from protection
The following shall not be protected as geographical indications—
(a) indications which do not correspond to the definition in section 2;
(b) indications which are contrary to public order or morality;
(c) geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country.
16. Offences and penalties
A person who knowingly and with intent to deceive performs any of the acts referred to in section 12 commits an offence and is liable on summary conviction to a fine of $10,000 and to imprisonment for 2 years.
PART 4
SPECIAL PROVISIONS CONCERNING MARKS; EXCEPTIONS
17. Misleading marks
The Registrar shall, on his or her own motion or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in Saint Lucia is of such a nature as to mislead the public as to the true place of origin.
18. Marks conflicting with a geographical indication for wines and spirits
The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or of a trademark for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated by the Registrar on his or her own motion or at the request of an interested party, with respect to such wines or spirits not having this origin.
19. Exceptions regarding prior users
(1) This Act shall not prevent continued and similar use of a particular geographical indication of another country identifying wines or spirits, in connection with goods or services, by any of its nationals or domiciliaries who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that country either—
(a) for at least 10 years preceding 15 April 1994; or
(b) in good faith preceding that date.
(2) Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either—
(a) before the date of entry into force of this Act; or
(b) before the geographical indication is protected in its country of origin,
this Act shall not prejudice the registrability of or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.
(3) This Act shall not apply—
(a) in respect of a geographical indication of any country with respect to goods or services for which the relevant indications is identical with the term customary in common language as the common name of such goods or services in Saint Lucia; or
(b) in respect of a geographical indication of any other country with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in Saint Lucia as of 1 January 1995.
(4) Any request for relief made under Part 3 in connection with the use or registration of a trademark must be presented within 5 years after the adverse use of the protected indication has become generally known in Saint Lucia or after the date of registration of the trademark in Saint Lucia. However, the trademark has been published by that date, if such date is earlier than the date on which the adverse use became generally known in Saint Lucia and although the geographical indication is not used or registered in bad faith.
(5) This Act shall in no way prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where the name is used in such a manner as to mislead the public.
PART 5
REGULATIONS
20. Regulations
The Minister may make regulations prescribing all matters that are required or permitted by this Act to be prescribed, or are necessary or convenient to give effect to this Act.
Schedule
(Section 12)
PARIS CONVENTION 1967
ARTICLES 10bis
[Unfair Competition]
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited—
1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.
CHAPTER 13.14
GEOGRAPHICAL INDICATIONS ACT
SUBSIDIARY LEGISLATION
List of Subsidiary Legislation
1. Geographical Indications Regulations – Section 20
Geographical Indications Regulations – Section 20
(Statutory Instrument 54/2003)
Statutory Instrument 54/2003 in force 16 June 2003
ARRANGEMENT OF REGULATIONS
1. Citation
2. Interpretation
3. Fees
4. Forms
5. Applications – language of
6. Indication of name, address, nationality
7. Signature by Partnerships, Companies and Associations
8. Authorisation of agent
9. Applications – paper requirements
10. Application for registration of geographical indication
11. Withdrawal of application
12. Marking application
13. Objection to conditional acceptance of application
14. Refusal of application or conditional acceptance to which applicant objects
15. Acceptance of application
16. Opposition
17. Issuance of certificate
18. Publication of request for cancellation or rectification
19. Publication
20. Refusal or invalidation of registration of misleading marks
21. Refusal or invalidation of registration
22. Publication of invalidation of registration of mark
23. Address for service
24. Excluded days
25. Search of Register, files; request for extracts there from and for copies of documents
26. Entry of changes in the Register
27. Correction of errors
28. Extension of time
29. Hearing
30. Service by mail
31. Directions as to furnishing of documents
32. Correction of irregularities
33. Dispensation by the Registrar
34. Hours of business
35. Evidence
36. Statutory declarations and affidavits
37. General
Schedule 1
Schedule 2
GEOGRAPHICAL INDICATIONS REGULATIONS – SECTION 20
Commencement [16 June 2003]
1. Citation
These Regulations may be cited as the Geographical Indications Regulations.
2. Interpretation
In these Regulations—
“Act” means the Geographical Indications Act;
“International Classification” means the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification);
“office” means The Registry of Companies and Intellectual Property;
“section” means the specified section of the Act.
3. Fees
The fees to be paid in respect of matters arising under the Act and these Regulations shall be those set out in Schedule 1.
4. Forms
(1) The forms referred to are those in Schedule 2.
(2) A requirement to use a form set out in Schedule 2 is satisfied by the use either of a replica of the form, or of a form which is acceptable to the Registrar and contains the information required by the corresponding form set out in Schedule 2.
(3) If a document that is submitted to the Office differs significantly from the form in Schedule 2 intended to be used for the purpose of submission, the Registrar may require that the document be replaced within a time fixed by the Registrar, by one that conforms with the document required by Schedule 2 to be used for the purpose.
5. Applications – language of
(1) Applications shall be in English.
(2) Any document forming part of an application submitted to the Registrar under the Act or these Regulations which is in a language other than English shall be accompanied by an English translation verified by the translator that the translation is, to the best of his or her knowledge complete and faithful.
6. Indication of name, address, nationality
(1) Names of natural persons shall be indicated by the person’s family name and given name or names, the family name being indicated before the given names, and the names of legal entities shall be indicated by their full, official designation.
(2) Addresses shall be in such a manner as to satisfy customary requirements for prompt postal delivery at the indicated address.
(3) Nationality shall be indicated by the name of the State of which a person is a national and legal entities shall indicate the name of the State under whose laws they are constituted.
(4) Residence shall be indicated by the name of the State of which a person is resident.
7. Signature by Partnerships, Companies and Associations
(1) A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any partner qualified to sign, stating that he or she signs on behalf of the partnership, or by any other person who satisfies the Registrar that he or she is authorised to sign the document.
(2) A document purporting to be signed for or on behalf of a body corporate shall be signed by a director, or by the Secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he or she is authorised to sign the document and shall bear the seal or stamp of the body corporate.
(3) A document purporting to be signed for or on behalf of an association of persons may be signed by any person who satisfies the Registrar that he or she is duly authorised.
(4) The Registrar may, whenever he or she deems it necessary, request evidence of authorisation to sign.
8. Authorisation of agent
(1) The appointment of an attorney-at-law shall be by an authorisation of agent as set out in Form 1 of Schedule 2 and shall be signed by the applicant or, if there are more than one, each applicant.
(2) The authorisation of agent may be filed together with the application or within 2 months from its filing date and if the appointment is not made in accordance with section 4(2) and subregulation (1), any procedural steps taken by the agent, other than the filing of the application, shall be deemed not to have been taken.
9. Applications – paper requirements
(1) All applications, notices, statements, and papers having representations affixed, or other documents authorised or required by the Act or these Regulations to be made, must be on strong, durable white paper and except in the case of the declarations and the affidavits, must be written on one side of the paper only.
(2) Each sheet must be of the same size and be 8½ x 11 or A4 size paper or such other size as the Registrar may permit.
(3) All applications, notices, statements or other documents required by this Act or these Regulations shall be filed in duplicate.
10. Application for registration of geographical indication
(1) The application for the registration of a geographical indication shall be made in the form set out in Form 2 of Schedule 2 and shall be signed by each applicant or authorised agent.
(2) The application shall indicate each applicant’s name, address, nationality and residence.
11. Withdrawal of application
(1) The application may be withdrawn in writing to the Registrar and signed by each applicant or authorised agent.
(2) The application fee shall not be refunded if the application is withdrawn.
12. Marking application
(1) Upon receipt, the Registrar shall mark on each document making up the application the actual date of receipt and the application number.
(2) Where any correction or other later filed documents are received on different dates, the Registrar shall also mark their actual date of receipt in the appropriate place of the request for registration of the geographical indication.
(3) The application number allotted under subregulation (1) shall be quoted in all subsequent communications concerning the application.
13. Objection to conditional acceptance of application
(1) If, upon examination in accordance with section 5(1) the Registrar objects to the application for registration of a geographical indication, he or she shall notify the applicant in writing of his or her objection with all relevant details and invite the applicant to amend the application, to submit his or her observations in writing or to apply for a hearing within 2 months from the date of the notification and if the applicant does not comply with the invitation within the set period, he or she shall be deemed to have withdrawn his or her application.
(2) If, upon examination in accordance with section 5(1), the Registrar decides to accept the application subject to amendments, modifications, conditions or limitations, the Registrar shall communicate the decision to the applicant in writing.
(3) If the applicant objects to the amendments, modifications, conditions or limitations, the applicant shall, within 2 months from the date of the communication, request a hearing or submit his or her observations in writing.
(4) If the applicant does not object to such amendments, modifications, conditions, or limitations, the applicant shall notify the Registrar in writing and amend his or her application accordingly.
(5) If the applicant does not respond in one way or the other within the set period, the applicant shall be deemed to have withdrawn his or her application.
(6) The request for a hearing, which shall be accompanied by the prescribed fee, shall be made in writing to the Registrar who, upon receiving the fee, shall give the applicant at least one month’s notice in writing of the date and time when the applicant may be heard.
14. Refusal of application or conditional acceptance to which applicant objects
(1) If, after a hearing or after consideration of the applicant’s amendments or observations in writing, the Registrar refuses the application or accepts it subject to any amendments, modifications, conditions or limitations to which the applicant objects, the Registrar shall communicate his or her decision to the applicant in writing.
(2) The applicant may, within one month from the date of such communication, and upon payment of the prescribed fee, request the Registrar to state in writing the grounds of the Registrar’s decision and the material used by the Registrar in arriving at the decision.
15. Acceptance of application
(1) If the Registrar accepts the application unconditionally or accepts it subject to any limitations to which the applicant does not object, the Registrar shall so notify the applicant, requesting the applicant to pay the publication fee within one month from the date of the notification.
(2) If the publication fee referred to in subregulation (1) is paid within the time limit prescribed the Registrar shall proceed to publish the application setting out—
(a) the geographical indication for which registration is sought;
(b) the name, address and nationality of the natural person or legal entity filing the application, or the name and address of the agent, if any;
(c) the address for service if an agent has not been appointed in accordance with section 4(2) and regulation 8;
(d) the demarcation of the geographical area to which the geographical indication applies;
(e) the goods for which the geographical indication is used;
(f) the quality, reputation or other characteristic of the goods for which the geographical indication is used, and any conditions under which the indication is used;
(g) the filing date and number of the application.
(3) If the publication fee referred to in subregulation (1) is not paid within the time limit prescribed, the application shall be considered withdrawn.
16. Opposition
(1) The notice of opposition under section 5(2) shall be given within 3 months of the date of the publication referred to in subregulation 15(2), in Form 3 of Schedule 2, together with payment of the prescribed fee and accompanied by supporting evidence, if any.
(2) The counter-statement referred to in section 5(3) shall be subject to payment of the prescribed fee and shall be given within 3 months of the date when the notice of opposition is sent to the applicant and shall be in writing, stating the grounds upon which the applicant relies for his or her application and accompanied by supporting evidence, if any.
(3) A request for a hearing under section 5(4) shall be made to the Registrar in writing at any time after the filing of the notice of opposition but not later than one month after the expiry of the prescribed period for filing the counter-statement, and the Registrar shall give the parties at least one month’s written notice of the date set for the hearing, and each party shall, within that period pay the prescribed fee for the hearing.
(4) Where the opponent or the applicant does not reside or carry on business in Saint Lucia, the Registrar may require the applicant to give security for the costs of the opposition proceedings for such amount as the Registrar thinks fit.
(5) Where the Registrar decides to register the geographical indication, as provided in section 5(5), he or she shall notify the opponent, if any, and the applicant in writing stating the reasons for his or her decision and, in the case of the applicant, requesting him or her to pay the registration fee within one month from the date of the notification.
(6) Where the Registrar decides to refuse to register the geographical indication, as provided in section 5(6), he or she shall notify the opponent and the applicant in writing, stating the reasons for his or her decision.
17. Issuance of certificate
(1) Subject to the payment of the registration fee within the period prescribed in regulation 16(5) the Registrar shall register the geographical indication in accordance with section 5(5) of the Act and this regulation.
(2) The registration of the geographical indication shall include—
(a) the geographical indication;
(b) the demarcation of the geographical area to which the geographical indication applies;
(c) the name and address of the natural person or legal entity in which name the indication is registered;
(d) the name and address of the agent, if any;
(e) the address for service if an agent has not been appointed in accordance with section 4(2) and regulation 8;
(f) the goods for which the geographical indication is used;
(g) the quality, reputation or other characteristic of the goods for which the geographical indication is used and any conditions under which the indication may be used; and
(h) the filing date and number of the application as well as the date of registration.
(3) The publication of the reference to the registration of a geographical indication shall contain the particulars specified in subregulation (2).
(4) The certificate of registration of the geographical indication shall be issued in Form 4 of Schedule 2.
18. Publication of request for cancellation or rectification
(1) The publication referred to in section 7(2)(b) shall—
(a) identify the geographical indication by setting out the particulars referred to in regulation 17(2);
(b) identify the person who or authority which has applied for the cancellation or the rectification of the registration of the geographical indication by setting out the name and address of the person or authority and of the representative or agent, if any; and
(c) specify the period within which the persons having the right to use the geographical indication under section 6 may apply to join in the proceedings.
(2) The period to be specified by the Court under section 7(3) of the Act shall not be less than one month from the date of the notice or publication, as the case may be.
(3) Where the Court notifies the Registrar under section 7(4) of the Act, that a decision has been taken to cancel or rectify the registration of the geographical indication, the Registrar shall, as the case may be, cancel the registration or rectify it in accordance with and in the manner specified in the Court’s decision.
(4) The publication of the reference to the cancellation or rectification or the registration of a geographical indication, under section 7(4), shall—
(a) identify the geographical indication by setting out the particulars;
(b) indicate that the registration of the geographical indication has been cancelled or rectified, as the case may be, and, if rectified, specify the manner in which the registration has been so rectified; and
(c) cite the court decision by which the registration of the geographical indication has been cancelled or rectified.
19. Publication
Particulars of geographical indications and other proceedings under the Act and any other information required to be published under the Act or these Regulations shall be published, in accordance with the direction of the Registrar, in at least one publication of the Gazette or in any other manner which the Registrar deems fit.
20. Refusal or invalidation of registration of misleading marks
(1) The request, under section 17 of the Act, to refuse or to invalidate the registration of a misleading mark shall be made in Form 5 of Schedule 2 and shall be subject to the payment of the prescribed fee and the procedure set out in regulation 16 shall apply with the necessary modifications.
(2) Where the Registrar on his or her own motion decides to refuse or invalidate the registration of a mark under section 17, he or her shall, in writing, so notify the registered proprietor of the mark, stating the reasons for his or her decisions and giving the registered proprietor at least one month to submit a counter-statement and to request a hearing.
(3) If a hearing is requested, the Registrar shall give the registered proprietor at least one month’s written notice of the date set for the hearing, and the registered proprietor shall, within that period pay the prescribed fee for the hearing.
(4) The Registrar shall notify the registered proprietor in writing of his or her final decision, stating the reasons therefore.
21. Refusal or invalidation of registration
(1) The request, under section 18 of the Act, to refuse or to invalidate the registration of a mark which conflicts with a geographical indication for wines and spirits shall be made in Form 6 of Schedule 2 and shall be subject to the payment of a prescribed fee and the procedure set out in regulation 16 shall apply with the necessary modifications.
(2) Where the Registrar on his or her own motion decides to refuse or invalidate the registration of a mark under section 18, he or she shall, in writing, so notify the registered proprietor of the mark stating the reasons for his or her decision and giving the registered proprietor at least one month to submit a counter-statement and to request a hearing.
(3) If a hearing is requested the Registrar shall give the registered proprietor at least one month’s written notice of the date set for the hearing and the registered proprietor shall within that period pay the prescribed fee for the hearing.
(4) The Registrar shall notify the registered proprietor in writing of the Registrar’s final decision stating the reasons therefore.
22. Publication of invalidation of registration of mark
(1) The Registrar shall record and publish a reference to the invalidation of the registration of a mark under section 17 or 18.
(2) The publication of the reference to the invalidation of the registration of the mark under section 17 or 18 shall include—
(a) the representation of the mark;
(b) the registration number of the mark;
(c) the name and address of the registered proprietor;
(d) the date of registration;
(e) the list of goods and services in respect of which the mark was registered, with an indication of the corresponding class or classes of the International Classification; and
(f) an indication of the grounds on which the registration of the mark has been invalidated.
23. Address for service
(1) There shall be furnished to the Registrar—
(a) by every applicant for the registration of a geographical indication, an address for service in Saint Lucia for the purpose of his or her application; and
(b) by every person including the applicant for, or the owner of, a geographical indication, as the case may be concerned in any proceedings to which any of these Regulations relate, an address for service in Saint Lucia,
and the address so furnished or, where another address being an address in Saint Lucia has been furnished in place thereof, that address shall be treated for the purpose of that application or those proceedings, as the address of that applicant or, as the case may be, of that person.
(2) Where an agent has been appointed in accordance with section 4(2) and regulation 8, the address of the agent shall, for all purposes connected with the Act and these Regulations, be treated as the address to which communications to the person or persons who appointed the agent shall be transmitted.
24. Excluded days
When the last day of doing any act or taking any proceeding falls on a day when the office is not open to the public for business, it shall be lawful to do the act or to take the proceeding on the day when the office is next open for business.
25. Search of Register, files; request for extracts there from and for copies of documents
A search of the Register or files shall be subject to payment of the prescribed fee and requests for certified copies of extracts from the Register or for copies of documents shall be made to the Registrar in a manner authorised by the Registrar and shall be subject to payment of the prescribed fee.
26. Entry of changes in the Register
(1) The Registrar shall cause to be entered in the Register in respect of every geographical indication in addition to the information indicated in regulation 17(2), any change, with respect to such information in particular in the name, or address, or address for service indicated therein.
(2) Where there has been a change in any of the particulars required by regulation 17 (2) (c), (d) or (e), the Registrar shall be notified in writing by the registered proprietor of the geographical indication and the Registrar shall record that change in the Register.
(3) Where there has been a change in agent, in addition to the requirements of subregulation (1), Form 1 of Schedule 2 must be filed.
27. Correction of errors
Correction of errors, referred to in section 9(1), may be made by the Registrar either upon receipt of a request in writing and subject to such terms as the Registrar may consider appropriate and any correction shall be communicated in writing to all interested persons and where considered necessary shall be published by the Registrar.
28. Extension of time
The request for an extension of time, referred to in section 9(2), shall be subject to the payment of the prescribed fee.
29. Hearing
(1) Before exercising, adversely to any person, any discretionary power given to the Registrar by the Act or these Regulations, the Registrar shall notify such person, in writing, of the opportunity to be heard, and indicate a time limit, which shall not be less than one month, for filing a request for a hearing.
(2) The request for a hearing shall be in writing and shall be subject to payment of the prescribed fee.
(3) Upon receiving such request, the Registrar shall give the person applying, and any other interested persons at least one month’s notice, in writing, of the date and time of the hearing.
(4) After hearing the party or parties desiring to be heard, the Registrar shall decide the matter and shall notify all parties of his or her decision and if any party so desires shall give reasons for the decision.
30. Service by mail
Any notice, application or other document sent to the Registrar by mail shall be deemed to have been given, made or filed at the time when it would be delivered in the ordinary course of the mail and in proving such sending, it shall be sufficient to prove that the letter containing such notice, application or other document was properly addressed and sent by registered mail.
31. Directions as to furnishing of documents
At any stage of any proceedings before the Registrar he or she may direct that such documents, information or evidence as he or she may require be furnished within such period of time as he or she may fix.
32. Correction of irregularities
Any irregularity in any procedure before the Registrar may be rectified on such terms as he or she may direct.
33. Dispensation by the Registrar
Where, under these Regulations, any person is to do any act or thing or any document or evidence is required to be produced or filed and it is shown to the satisfaction of the Registrar—
(a) that for any reasonable cause that person is unable to do that act or thing; or
(b) that the document or evidence cannot be produced or filed,
the Registrar may, upon the production of such evidence and subject to such terms as he or she thinks fit, dispense with the doing of any such act or thing, or the production or filing of such document or evidence.
34. Hours of business
The Registry of Companies and Intellectual Property shall be open to the public from Monday to Thursday inclusive each week, between the hours of 9:00 a.m. and 2:00 p.m. and on Fridays between the hours of 9:00 a.m. and 3:00 p.m. or such other time as the Companies and Intellectual Property (Registry) Act provides.
35. Evidence
(1) Where under these Regulations evidence may be filed, it shall be by statutory declaration or affidavit.
(2) The Registrar may, if he or she thinks fit in any particular case, take oral evidence in lieu of or in addition to such evidence and shall allow any witness to be cross examined on his or her affidavit or declaration.
36. Statutory declarations and affidavits
(1) Any statutory declaration or affidavit filed under the Act or these Regulations shall be made before any officer authorised by law in any part of Saint Lucia to administer an oath for the purpose of any legal proceedings.
(2) Statutory declarations or affidavits made outside Saint Lucia shall be made before a consul or notary public.
37. General
The Registrar may acknowledge inquiries made to the office, but the Registrar need not furnish any applicant or other person with information that would require a search of the public records of the office, or provide advice on matters concerning the interpretation of the Act or Regulations or concerning other questions of law.
Schedule 1
FEES
| MATTER | AMOUNT | |
| 1. | Application for registration of geographical indication | $250.00 |
| 2. | Request for hearing | $50.00 |
| 3. | Request to the Registrar to state in writing grounds of decision to refuse application or to accept it subject to conditions | $25.00 |
| 4. | Publication fee | $60.00 |
| 5. | Notice of opposition to a registration of a geographical indication | $50.00 |
| 6. | Filing of counter-statement to notice of opposition | $50.00 |
| 7. | Registration fee | $1,250.00 |
| 8. | Request for refusal or invalidation of misleading mark | $125.00 |
| 9. | Request for geographical indication for wines and spirits | $125.00 |
| 10. | Search | $10.00 for up to 2 files or Registers; $2.00 for each additional file or Register |
| 11. | Certified copy of Certificate of Registration | $1.00 per printed page; $20.00 to certify |
| 12. | Certified copy of a document not being a Certificate of Registration | $1.00 per printed page; $10.00 to certify |
| 13. | Uncertified copy of any document | $1.00 per page |
| 14. | Request for correction of errors | $10.00 |
| 15. | Request for extension of time | $75.00 |