SAINT VINCENT AND THE GRENADINES TRADE MARKS REGULATIONS, 2004 ARRANGEMENT OF REGULATIONS
PART 5
AMENDMENT OF APPLICATTON FOR REGISTRATION OF A TRADE MARK AND
OTHER DOCUMENTS
73. Evidence in support of applications
Division I
Applications and other documents
6. Change of address for service: notice to interested persons Division 2 Proceedings before the Registrar
Division 3 General
2004 NO. 13
(Gazetted 18th May, 2004)
IN EXERCISE of the powers conferred by section 190 of the Trade Marks Act, No.46 of 2003, the Minister makes the following Regulations:
1. These Regulations may be cited as the Trade Marks Regulations
Citation
2004.
2. These Regulations shall come into operation on the 18th day of
Commencement May 2004.
Interpretation 3. In these Regulations: “certificate of verification” means a statement:
“earlier application”, in relation to an application for the registration of a trade mark for which a right of priority is claimed, means an application for the registration of that trade mark in a Convention Country
“Nice Classification” means the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks , 1957 as revised and amended or such subsequent version as may be made available for inspection by the public at the Commerce and Intellectual Property Office;
“principal Act” means the Trade Marks Act, No. 46 of 2003;
“working day” means a day other than a Saturday, a Sunday or a public holiday.
PART 2 TRADE MARKS AND TRADE MARK RIGHTS
Classification of goods and 4. (1) For the purposes of section 13(3) and section 13(4) of the services
principal Act, in an application for registration of a trade mark the goods or services in respect of which the trade mark is sought to be registered shall be classified in accordance with the Nice Classification.
5. For the purposes of section 12(1)(b) of the principal Act, the
Period in which action for
prescribed period shall be 2 months from the day on which the
infringement may be brought authorised user of a trade mark asks the registered owner of the trade mark to bring an action for infringement of the trade mark.
PART 3 APPLICATION FOR REGISTRATION
Application for registration: 6. (1) For the purposes of section 13(2) and Parts 18,19 and 20 of prescribed form the principal Act, an application for the registration of a trade mark shall be in the form prescribed in Form 1 of Schedule 6.
(2) Any material that is intended by the applicant to form part of the application for registration of a trade mark:
Applications: requirements 7. (1) In order for an application for registration of a trade mark to for filing be taken to be filed, the application shall:
Representation of trade marks
8. (1) If practicable, the representation of a trade mark included in an application for registration of the trade mark shall not exceed 8 centimetres by 8 centimetres (3 inches by 3 inches) in size.
(a) a transliteration of the characters into roman letters, using the recognised system of romanisation of the
Specification of goods or services or both
characters, if any; and
(b) a translation of the words into English.
to permit proper examination of the trade mark, the Registrar may require the applicant to give to the Registrar a description, or further description, of the trade mark and a specimen of the trade mark.
9. (1) For the purposes of section 13 (3) of the principal Act, in specifying in an application for registration of a trade mark the goods or services or both in respect of which registration is sought:
Period for claiming priority for an application
Publication of particulars of application
Mode of publication
be specified in terms appearing in the listing of goods and services published by the World Intellectual Property Organisation in the Nice Classification and made available for inspection by the public at the Commerce and Intellectual Property Office.
(2) If any of the goods or services or both cannot be specified using terms referred to in sub-regulation (1)(e), the applicant shall provide sufficient information to enable the Registrar to decide the classification of the goods or services or both.
10. (1) For the purposes of section 15(1) of the principal Act, an applicant shall claim a right of priority for an application by filing notice of the claim.
11. For the purposes of section 16 (1)(a) of the principal Act, the Registrar shall publish the following particulars of the application:
12. Any matter required to be advertised or published pursuant to a provision of the principal Act shall be advertised or published by one or more of the following means:
Examination of application: report to applicant
Examination: applicant’s response to report
Examination: further report to applicant
13. (1) For the purposes of section 16(1)(b) of the principal Act, if in the course of an examination of an application the Registrar reasonably believes that:
(a) the application has not been made in accordance with the principal Act or these Regulations; or
14. (1) An applicant may respond in writing to the Registrar’s report under regulation 13.
(2) The response may:
15. (1) On receipt of a response under regulation 14, the Registrar shall consider the response.
(2) If the Registrar continues to believe that:
the Registrar shall report that belief in writing to the applicant.
(3) Unless acceptance of an application is deferred, a report under sub-regulation (2) in relation to that application shall include
Examination: additional requirements
Periods after which application lapse
under sub-regulation (2) in relation to that application shall include notice of the date on which the application will lapse if it is not accepted earlier.
16. (1) In the course of an examination of an application for which a right of priority is claimed, the Registrar may, in writing, require the applicant to file:
(2) If the applicant is the successor in title to the person who made the earlier application, the Registrar may, in writing, require the applicant to file documentary evidence that is sufficient to establish the passing of title to the applicant.
17. (1) For the purposes of section 19 of the principal Act, the prescribed period for an application in respect of which a report is made under regulation 13 is:
would be extended for more than 6 months after the end of the relevant period prescribed in sub-regulation (1).
Deferment of acceptance
18. (1) The Registrar may, at the request of the applicant in writing, defer acceptance of an application for registration of a trade mark, if:
(iii)has filed an application under section 72 of the principal Act, in respect of the other trade mark and is awaiting the finalisation of proceedings in respect of that application,
(iv)has begun proceedings to have the Register rectified in respect of the other trade mark and the proceedings have not been determined or otherwise disposed of, or
(v) is awaiting renewal of the registration of the other trade mark in the period of 12 months after registration of the other trade mark has expired, or removal of the other trade mark from the Register.
(2) The Registrar may, on his own initiative, defer acceptance of the application within a period that is prescribed in regulation 17(1) or that is extended under section 185 of the principal Act or regulation 17 (4), if:
Period for which acceptance is deferred
(3) The Registrar shall notify an applicant in writing:
19. (1) The period for which acceptance of an application is deferred (in this regulation called “the deferment period”) begins immediately after the date of the notice of deferment issued under regulation 18 (3).
(2) The deferment period ends:
(3) For the purposes of sub-regulation (2) (c), the deferment period ends:
(i) proceedings mentioned in regulation 18 (2) (b) may be begun, or
Trade marks containing certain signs
Divisional application: prescribed forms
Period for filing divisional application
Request for expedited examination ofapplication
(ii) an application mentioned in regulation 18 (2) (c) may be made;
(g) if acceptance is deferred because of regulation 18 (2) (b), at the end of:
(iii)if acceptance is deferred because of regulation 18 (2) (c), at the end of a period after the death of the applicant that the Registrar reasonably regards as sufficient in the circumstances.
(4) If acceptance of an application is deferred as a result of the operation of more than one of the provisions of regulation 18(1) (c) and regulation 18 (2), the deferment period ends in accordance with the relevant provision of sub-regulation (3) under which the deferment period ends later or last, as the case requires.
(5) The Registrar shall notify the applicant in writing of:
(a) or (b).
20. (1) For the purposes of section 21 (1) of the principal Act, the signs in Schedule I are prescribed.
(2) A list of the marks mentioned in Schedule I shall be available at the Commerce and Intellectual Property Office.
(2) For the purposes of section 30 (2) and (4) of the principal Act, the period in relation to a divisional application for the registration of the trade mark in respect of goods or services or both excluded from the initial application is 1 month from the date of the notice of the amendment of the initial application for the registration of the trade mark given under regulation 45.
23. (1) A person who applies, or has applied, for the registration of a trade mark:
(a) may request in writing expedited examination of the application; and
Expedited examinations
Time for filing notice of opposition
Extension of time for filing: grounds
(b) shall include with the request a declaration stating the reasons for the request.
(2) As soon as practicable after making a decision in relation to a request, the Registrar shall give written notice of the decision to the person who made the request.
24. (1) The Registrar shall, to the extent that is practicable, examine applications for the registration of trade marks in relation to which requests under regulation 23 are granted:
PART 4
OPPOSITION TO REGISTRATION
25. (1) For the purposes of subsection 33 (2) of the principal Act, the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised.
26. (1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 25 on one, or more than one, of the following grounds, and on no other ground:
Extension of time for filing: application
Extension of time for filing: grant of extension
extension of time, or by the person’s agent;
(3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on one or more than one, of the grounds set out in sub-regulation (2) (a), (b) or (c), and on no other ground.
27. An application for an extension of time in which to file a notice of opposition shall:
28. (1) Subject to sub-regulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar shall grant the extension of time:
Copy of earlier application to be available to opponent
Opposition proceedings
Evidence in support
grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time shall be for such period:
29. (1) In opposition proceedings relating to an application in respect of which the applicant claims a right of priority, an opponent may in writing ask the Registrar for a copy of an earlier application to be made available.
(2) Within 2 days after the opponent serves a copy of the evidence in support on the applicant, the opponent shall file with the Registrar:
Notice that opponent will not rely on evidence in support
Failure to file
Evidence in answer
Period for service of a copy of the evidence in answer
Notice that applicants will not rely on evidence in answer
32. (1)If the opponent does not intend to rely on evidence in support of the opposition, the opponent shall, within 3 months from the day on which the notice of opposition is filed, serve on the applicant a copy of a notice stating that the opponent does not intend to rely on evidence in support of the opposition.
(2) As soon as practicable after the opponent serves a copy of the notice on the applicant, the opponent shall file with the Registrar:
(2) Within 2 days after the applicant serves a copy of the evidence in answer on the opponent, the applicant shall file with the Registrar:
35. If the opponent complies with regulations 31 and 32, the period for service of a copy of the evidence in answer to the opposition is 3 months from the day on which the opponent serves on the applicant:
36. (1) If an applicant does not intend to rely on evidence in answer to the opposition, the applicant shall serve on the opponent, within the period for service of a copy of the evidence in answer, a copy of a notice stating that the applicant does not intend to rely on evidence in answer to the opposition.
(2) Within 2 days after the applicant serves a copy of the notice on the opponent, the applicant shall file with the Registrar:
(a) the original notice; and
Failure to file
Evidence in reply to evidence in answer
Notice that opponents will not rely on evidence in reply to evidence in answer and failure to file
Hearing of opposition
(b) a statement setting out the date, place and manner of service of the copy of the notice on the opponent.
39. ( 1) If an opponent does not intend to rely on evidence in reply to the original evidence in answer to the opposition, the opponent shall serve on the applicant, within 3 months after the service on the opponent of a copy of the evidence in answer, a copy of a notice stating that the opponent does not intend to rely on evidence in reply in answer to the opposition.
40. (1) Upon completion of the evidence, the applicant or opponent may ask the Registrar to hear the parties to the opposition proceedings.
(4) The Registrar shall give notice to the parties of a date when
Extension of period to serve evidence and service of further evidence
he will hear arguments in the opposition proceedings.
41. (1) A party to the opposition proceedings may apply to the Registrar:
is appropriate.
Conduct of opposition proceedings generally
Registrar to give notice of dismissal of proceedings
Amendment of applications by Registrar
Request to amend before publication of details
(6) Sub-regulations (2), (3) and (4) apply to an application under sub-regulation (5).
42. (1) The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
43. If opposition proceedings are dismissed under section 183 of the principal Act, or discontinued, the Registrar shall notify the parties in writing that the opposition proceedings have been dismissed or discontinued.
PART 5
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND OTHER DOCUMENTS
44. (1) For the purposes of section 43 (2) of the principal Act, if the Registrar proposes to amend an application for the registration of a trade mark, the Registrar shall give notice in writing to the applicant:
(2) If an applicant objects to an amendment proposed by the Registrar within the period mentioned in sub-regulation (1) (b), the Registrar shall not make the amendment unless the objection is withdrawn.
45. For the purposes of section 44 (b) of the principal Act, the period for requesting an amendment is 14 days after filing the application for the registration of the trade mark.
Filing of declarations
Notification of amendments
Period in which a trade mark can be registered
46. If a person requests an amendment under section 44 or 46 (a) of the principal Act, the Registrar may require the applicant to file a declaration stating:
47. If the Registrar amends an application, notice or document under Part 8 of the principal Act, the Registrar shall give notice in writing of the amendment to:
PART 6
REGISTRATION OF TRADE MARKS
48. (1) For the purposes of section 48(1) of the principal Act , the period for the registration of a trade mark that has been accepted for registration is:
(2) If:
the High Court may specify for the purposes of sub-regulation (i) (a) (ii) a day that is later than the first-mentioned day in sub-regulation (1) (a) (i).
(3) If :
(a) proceedings in relation to the registration of the trade mark are before the Registrar; and
Particulars to be entered in the Register
Period for request for renewal
Notice of renewal due: when and how given
(b) the Registrar is reasonably satisfied that
the Registrar may specify, for the purposes of sub-regulation (1) (a) (ii), a day that is later than the first-mentioned day in sub-regulation (1) (a) (i).
49. For the purposes of section 49 (2) (c) of the principal Act , the following other particulars of a trade mark shall be entered in the Register:
(/) any other particulars relating to the trade mark that the Registrar reasonably believes to be appropriate.
50. (1) For the purposes of section 55 of the principal Act, the period within which a person may request the Registrar to renew the registration of a trade mark is 6 months ending on the day on which the registration of the trade mark expires.
(2) A request for renewal pursuant to section 55 shall be as prescribed in Form 7 of Schedule 6.
51. (1) For the purposes of section 56 of the Act, the period in relation to notifying a registered owner that renewal of the registration of a trade mark is due is within 3 months ending on the day on which the registration of the trade mark expires.
Notice of renewal
Notice of cancellation
Amendment or cancellation: matters for the court
(2) A notice that the renewal is due shall include:
52. For the purposes of section 57 (2) of the principal Act, a notice of the renewal of the registration of a trade mark shall include:
PART 7
AMENDMENT AND CANCELLATION OF REGISTRATION
53. (1) The Registrar shall, after receiving a request from the owner of a registered trade mark under section 64 (1) of the principal Act, cancel registration of the trade mark if the Registrar is not obliged under section 64 (2) of the principal Act to notify a person.
(2) If the Registrar is required to notify a person under section 64 (2) of the principal Act, the notice shall state that unless:
the Registrar will cancel the trade mark at the end of a period of 2 months from the date of the notice.
(3) If :
unless the request from the owner is withdrawn or a court determines otherwise.
54. For the purposes of section 69 (2) (a) of the principal Act , the High Court, in making a decision under section 69 (1) of the principal Act on an application for rectification of the Register, shall take into account the following matters, so far as they are relevant:
Applications for removal
Notification of applications
Notice of opposition to removal
Opposition proceedings before the Registrar
PART 8
REMOVAL OF TRADE MARK FROM REGISTER FOR NONUSE
55. For the purposes of section 72 (2) (a) of the principal Act, an application for the removal of a trade mark from the Register :
56. (1) For the purposes of section 75 (1) of the principal Act, the Registrar shall give notice of an application under section 72 of the principal Act within 1 month after the application is filed in accordance with these Regulations.
(2) The notice shall be given by sending a copy of the application, and the accompanying declaration to each person who, in the opinion of the Registrar, needs to know that the application has been filed.
57. (1) For the purposes of section 76 (2) of the principal Act, a notice of opposition to an application under section 72 of the principal Act shall be in the form prescribed in Form 4 of Schedule 6 and shall be filed with the Registrar within 3 months from the day on which the application is advertised.
(2) The opponent shall serve a copy of the notice of opposition on the applicant as soon as practicable after the notice is filed.
58. (1) For the purposes of section 79 of the principal Act, regulations 31 to 41 inclusive apply, subject to sub-regulations (2) and (3), to an opposition to an application under section 72 of the principal Act.
(2) The Registrar shall, if asked to do so by the opponent within the period for serving:
Applications for assignment to be recorded or entered
Recording of assignment: trade marks not registered
(a) a copy of the evidence in support under regulation 31(1); or
(b) a copy of the notice under regulation 32(1); hear the parties to the opposition proceedings.
(3) If the opponent:
and the opponent does not request a hearing under sub-regulation (2), the opposition proceedings are taken to have ended, but are not taken to have been discontinued or dismissed.
(4) If:
the Registrar shall determine the application in accordance with section 81 of the principal Act.
PART 9
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
59. For the purposes of sections 87 and 89 of the principal Act, the following documents are prescribed:
60. (1) For the purposes of section 88 (1) (a) of the principal Act, the Registrar shall record particulars of the assignment or transmission of a trade mark in accordance with this regulation unless:
(2) If there is no record made under Part 14 of the principal Act of a person claiming an interest in, or a right in respect of, the trade mark, the Registrar shall record the particulars after ascertaining that a claim has not been recorded.
(3) If:
the Registrar shall record the particulars after the Registrar has received the last notice consenting to the assignment or transmission.
(4) If:
the Registrar shall record the particulars as soon as practicable after the end of that period.
Particulars of recorded 61. For the purposes of section 88 (1) (b) of the principal Act: assignment or transmission to
be published (a) the following particulars of an assignment or transmission of a trade mark for which registration is sought shall be published
(iii)the day on which the particulars of the assignment or transmission were recorded; and
(b) if details of an application for registration of the trade mark have been published in a way described in regulation 12, the particular of the assignment or transmission mentioned in paragraph (a) shall be
Recording of assignment of registered trade marks
Notice to persons recorded as claiming right or interest in trade marks
published in the same way.
62. (1) For the purposes of section 90 (1) (a) of the principal Act, the Registrar shall record particulars of the assignment or transmission of a trade mark in accordance with this regulation, unless:
(2) If there is no record made under Part 14 of the principal
Act of a person claiming an interest in, or a right in respect of, the trade mark, the Registrar shall record the particulars in the Register after ascertaining that a claim has not been recorded.
(3) If:
the Registrar shall record the particulars in the Register after the Registrar has received the last notice consenting to the assignment or transmission.
(4) If:
the Registrar shall record the particulars in the Register as soon as practicable after the end of that period.
63. (1) For the purposes of section 91 of the principal Act, the Registrar shall give notice in writing to a person recorded under part 14 of the principal Act as claiming an interest in, or a right in respect of, a trade mark stating that the Registrar will record the assignment or transmission of the trade mark at the end of a period of 2 months from the date of the notice, unless:
(a) the application to assign or transmit the trade mark is withdrawn;
Amendment of particulars: claimed interests or rights
Amendment of name, address and address for service: claims not in Register
Cancellation of particulars: claimed interests or rights
(2) Each notice under sub-regulation (1) in respect of a particular trade mark shall be given on the same day.
PART 10
VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN
AND
RIGHTS IN RESPECT OF TRADE MARKS
64. (1)For the purposes of sections 95 and 99 of the principal Act, particulars of a claim to an interest in, or to a right in respect of, a trade mark other than the name, address or address for service of a person whose claim is recorded or entered in the Register or recorded under Part 14 of the principal Act may be amended in accordance with this regulation.
65. If a person:
gives notice in writing of the new name or address to the Registrar, the Registrar shall amend the record accordingly.
66. (1)For the purposes of sections 95 and 99 of the principal Act, particulars of a claim to an interest in or to a right in respect of a trade mark entered in the Register or recorded under Part 14 of the principal Act may be cancelled in accordance with this regulation.
(2) A request to cancel particulars of a claim to an interest in, or to right in respect of, a trade mark shall be made in writing:
Notice of objection to importation: accompanying documents
Notice of objection to importation: authorised users
(d)if the request has with it the written consent to the cancellation of one of the persons mentioned in paragraph (c) by the other person mentioned in that paragraph.
PART 11
IMPORTATION OF GOODS INFRINGING VINCENTIAN
TRADE MARKS
67. For the purposes of section 111 (1) of the principal Act, the document prescribed in relation to a notice given under that subsection, is Form 12 of Schedule 6.
68. (1)For the purposes of section 111 (3) of the principal Act, the period in relation to a request by an authorised user under section 111
(2) of the principal Act is 2 months from the day on which the request is
Period for compliance with Comptroller’s request for information etc.
Copy of rules to be filed
Applications to vary rules
Assignment of registered certification trade marks
made.
(2) For the purposes of section 111 (3) of the principal Act, the following documents are prescribed, namely documents that establish that:
(iii) since the request mentioned in section 111 (2) of the principal Act was made, the period prescribed by sub-regulation ( 1 ) in relation to the request has ended.
69. For the purposes of section 122 of the principal Act, the period for complying with a request under section 122 (1) of the principal Act is 10 working days from the day on which the request is made.
PART 12
CERTIFICATION TRADE MARKS
(2) An application to approve the variation of the rules governing the use of a registered certification trade mark shall:
72. (1)An application to the Registrar for his consent to the assignment of a registered certification trade mark shall:
Evidence in support of applications
Office business hours
Delegates of the Registrar
prospective assignee;
(2) In considering an application, the Registrar shall have regard to the following matters:
PART 13
DEFENSIVE TRADE MARKS
73. An applicant for registration of a defensive trade mark shall file evidence in support of the application at, or as soon as practicable after, the time of filing of the application.
PART 14
Compliance with instructions on approved forms
Filing of documents: requirements as to form
Filing of documents: common requirements
PART 15
MISCELLANEOUS
Division I
Applications and other documents
76. If an application, notice or request under the principal Act or these Regulations is required to be in a prescribed form and a blank form that may be used in making such application or request or giving such notice
(a) is made available by the Registrar together with instructions for completion, the person who completes the form shall comply with those instructions;
(b)is not available from the Registrar, the form used shall conform as closely as possible to the prescribed form.
77. (1)A document to be filed at the Commerce and Intellectual Property Office shall comply with the requirements set out in Schedule
3.
78. (1)A person who files an application, notice or request shall include in the application, notice or request:
Filing of documents: treatment of non-complying documents
Filing of documents: date of receipt to be marked
Declarations
79. If a document received for filing at the Commerce and Intellectual Property Office fails to comply with the principal Act or these Regulations, the Registrar may:
80. (1)A document that is received for filing shall be marked by the Registrar with the date on which it is received.
(2) Except as otherwise provided by the principal Act or these Regulations, a document is taken to be filed at the Commerce and Intellectual Property Office on the date on which it is received by the Commerce and Intellectual Property Office.
81. (1) A declaration required by the principal Act or these Regulations shall:
Declarations: additional material
Notification of service
Notice of withdrawal of applications
confined to one subject.
(2) A declaration may be made before:
83. A person who is required by the principal Act or these Regulations to serve a document on another person shall, as soon as practicable after the document is served, notify the Registrar in writing of the date, place and manner of service.
84. (1) For the purposes of section 175 of the principal Act:
may withdraw the application, notice or request by giving notice in writing of the withdrawal to the Registrar.
(2) If:
(a) the application, notice or request was filed by, or on behalf of, more than one person; or
Withdrawal of application: Registrar’s notice to applicant
Change of address for service: notice to interested persons
Applications for costs
(b) the right or interest mentioned in sub-regulation (1) (b) has become vested in more than one person;
the notice of withdrawal shall be signed by an agent on behalf of, each of those persons.
(3) If a person mentioned in sub-regulation (1) (b) withdraws an application, notice or request, the Registrar may require in writing that person to file documentary evidence that is sufficient to establish that the right or interest mentioned in that sub-regulation is vested in the person.
85. If an application, notice or request is withdrawn in accordance with regulation 84, the Registrar shall notify in writing each person or his attorney-at-law of the withdrawal and record the fact of the withdrawal in a manner deemed appropriate.
86. (1) A person:
shall give a copy of the notification to any party to proceedings relating to the application, notice or request and to any other person as directed by the Registrar.
(2) For the purposes of section 176 of the principal Act a request for a change of address of service shall be in the form prescribed in Form 21 of Schedule 6.
Division 2
Proceedings before the Registrar
87. (1) For the purposes of section 182 of the principal Act, a party to proceedings before the Registrar may apply to the Registrar in the form prescribed in Form 25 of Schedule 6 for an award of costs in relation to the proceedings.
(2) An application shall be made:
as the case requires.
(3) Before awarding costs in respect of the proceedings, the
Determination of costs
Conduct of proceedings generally
Hearings by Registrar
Registrar shall give each party to the proceedings a reasonable opportunity to be heard in relation to the award of costs.
(4) If a bill of costs is filed in relation to the proceedings, the bill of cost shall be filed within three months from the day on which the costs are awarded.
88. (1) In this regulation, “costs” does not include the costs referred to in section 85 (2) (b) of the principal Act.
89. (1)The Registrar may, at the request of a party to proceedings before the Registrar, other than opposition proceedings, give directions in relation to the procedure in the proceedings.
90. ( 1)This regulation applies if the principal Act or these Regulations provide for a person to be heard by the Registrar.
(2) A request for a hearing by the Registrar shall be in the form
Dispensing with hearings
prescribed in Form 26 of Schedule 6.
(3) On request, or on his own initiative, the Registrar may:
91. (1) The Registrar is not required to proceed to hear a matter if:
(iii)the party does not attend the hearing.
(2) The Registrar may decide a matter to which sub-regulation
(1) refers:
Evidence in proceedings
Documents not in English
Registrar may use information available
Statements of reasons for decision
What fees are payable
92. (1) Evidence that is given in writing in any proceedings before the Registrar shall be in the form of a declaration.
93. If a document that is filed as evidence in proceedings before the Registrar is not in English, the party who files the document shall file with it:
94. (1)If:
before making the decision the Registrar shall:
(2) For the purposes of sub-regulation (1) (c)(ii), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
95. (1) If:
the Registrar shall comply with the request.
(2) A request for reasons pursuant to sub-regulation (1) shall be in the form prescribed in Form 24 of Schedule 6.
Division 3
General
96. For the purposes of section 184 (1) of the principal Act, the fees
How fees are to be paid
Notice of non-payment fee
Refund of fees
Extension of time: application
Extension of time: notice of opposition
specified in column 3 of an item in Schedule 5 are payable in respect of a matter specified in column 2 of that item.
97. (1) For the purposes of section 184 (2) of the principal Act, a fee, other than a fee payable under Part 16 of the principal Act, shall be paid to the Registrar at the Commerce and Intellectual Property Office.
(2) A fee payable under Part 16 of the principal Act shall be paid to the Comptroller.
(3) A fee shall be paid in accordance with a direction given:
(a) in the case of a fee that is paid to the Registrar, by the Registrar;
(b)in the case of a fee that is paid to the Comptroller, by the Comptroller;
as to the way in which it is to be paid.
(2) A notice of opposition:
(3) The opponent shall serve a copy of the notice on the applicant.
Extension of time: opposition 102. For the purposes of section 185 (6) of the principal Act, proceedings regulations 31 to 39 inclusive apply to an opposition to an application for an extension of time.
103. (1) For the purposes of paragraph (a) of the definition of
Extension of time: prescribed acts and documents “relevant act” in section 185 (8) of the principal Act, the following acts
are prescribed:
(2) For the purposes of paragraph (b) of the definition of “relevant act” in section 185 (8) of the principal Act, the following documents are prescribed:
(a) a notice of opposition to the registration of a trade mark
Incapacity of certain persons
Destruction of documents
Directions not otherwise presented
Requirements cannot be complied with for reasonable cause
Forms generally
under section 33 of the principal Act;
(b) a notice of opposition to which regulation 101 (1) applies.
104. (1) If a person is incapable of doing any thing required or permitted by the Act or these Regulations to be done because of infancy or physical or mental disability, a court may, on the application of a person acting on behalf of the incapable person or of another person interested in the thing being done:
(2) A thing done in the name of, and on behalf of, an incapable person is taken to have been done by that person as if the person had not been incapable when the thing was done.
105. (1)The Registrar may order the destruction of documents relating to trade marks the registration of which ceased not less than 10 years before the date of the order.
(2) Sub-regulation (1) does not authorise the destruction of the Register.
106. If the Registrar reasonably believes that it is necessary for the proper conduct of proceedings for a person to perform an act, file a document or produce evidence that the person is not required by the Act or these Regulations to perform, file or produce, the Registrar may give notice in writing to the person requiring him:
107. If:
subject to any condition that the Registrar may reasonably impose, the Registrar may dispense with the requirement.
108. (1) An authorisation of an attorney at law as an agent pursuant to section 174 of the principal Act shall be in the form prescribed in Form 2 of Schedule 6.
General
109. 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 principal Act or Regulations or concerning other questions of law.
SCHEDULE 1
(regulation 20)
The following shall not be registered as trade marks:
(regulation 75)
DELEGATES OF THE REGISTRAR
Deputy Registrar
Executive Officer
Clerk
Any person appointed to or holding or performing the duties of an office or post in the Commerce and Intellectual Property Office.
(regulations 77; 109)
SCHEDULE 4
COSTS, EXPENSES AND ALLOWANCE
PART 1
COSTS
Column 1
Column 3
Matter
Amount
1
Notice of opposition
$180
2
Evidence in support
$480
3
Receiving and perusing notice of opposition
$100
4
Receiving and perusing evidence in support
$100
5
Evidence in answer
$300
6
Receiving and perusing evidence in answer
$150
7
Evidence in reply
$150
8
Receiving and perusing evidence in reply
$100
9
Preparation of cases for hearing
$300
10
Attendance at hearing by attorney-at-law
$200 per hour
PART2
1. A person who, because of his or her professional, scientific or other special skill or knowledge, is summoned to appear as a witness before the Registrar shall be paid—
2. A person summoned to appear as a witness, other than a witness referred to in clause 3, before the Registrar shall be paid —
(a) if the person is remunerated in his or her occupation by wages, salary or fees-an amount equal to the amount of wages, salary or fees not paid to the person because of his or her attendance for that purpose; and
(b) in any other case-an amount of not less than $60, or more than $100, for each day on which he or she so attends.
(regulation 96)
FEES
1 Filing an application to register a trade mark / certification / defensive or collective trade mark in respect of:
2 Filing of divisional application
3 Filing of an application to register 2 or more trade marks as a series under section 32
4 Additional fee for filing application under item 1,2, or 3 if a
representation of the mark exceeds 8cm x 8cm or 3” x 3” 5 Request for deferment of acceptance of an application 6 Request for expedited examination of application for
registration of a trade mark 7 Filing of any notice of opposition 8 Filing of application for extension of period or time:
end of the period or time to extend 9 Filing of notice or evidence in opposition proceedings 10 Certificate of registration of trade mark 11 Publication/Gazette fee
FEES
$100.00
$100.00 for the first class and $50.00 for each additional class
$100.00 for each class $200.00 in respect of 2 trade marks plus $50.00 for each additional mark of the series $65.00 per application $50.00 $40.00
$200.00
$50.00
$100.00
$60.00 $100.00
$100.00 $100.00
$125.00 $100.00
$200.00 $100.00
12 | Renewal of registration of trade mark in respect of: | ||
---|---|---|---|
(a) | goods or services in a single prescribed class | $100.00 | |
(b) | goods and/or services in more than 1 prescribed class | $100.00 plus $20.00 for each additional class | |
13 | Additional fee on renewal of registration of trade mark where request is made within 12 months after the expiry date | in addition to fees in 12(a) and 12(b), $25.00 for each class and for each month or part of a month after the expiry date | |
14 | Application for amendment of trade mark application before or after publication of notice of application | $50.00 | |
15 | Application for amendment of Register | $80.00 per mark | |
16 17 | Application for amendment of documents other than application for registration of trade mark Filing authorisation of agent | $40.00 | |
(a) first filing | $5.00 | ||
18 | (b) if already filed Application for cancellation of a mark | $2.00 $50.00 | |
19 20 21 22 23 24 25 | Filing an application for recording of assignment or transmission of trade mark Application to record a claim to an interest in or a right in respect of a trade mark Request for an amendment or cancellation of recorded particulars of a claim to an interest in, or a right in respect of a trade mark Filing a copy of rules governing use of a certification trade mark Filing evidence supporting an application for registration of a defensive trade mark Request for hearing Attendance at hearing | $100.00 per mark $100.00 $80.00 $80.00 $80.00 $200.00 $50.00 | |
26 | Withdrawal of an application, notice or request | $20.00 | |
27 | Request for change of address of registered owner | $50.00 per mark | |
28 | Request for change of name of registered owner | $50.00 per mark | |
29 | Filing of application for costs | $25.00 | |
30 | Taxation of costs | $60.00 | |
31 | Certified copy of a certificate of registration | $20.00 |
32 | Certified copy of a document other than a certificate of | $10.00 |
registration | ||
33 | Uncertified photographic copy of document | $1.00 per page |
34 | Filing of any document for which a fee is not provided | $20.00 |
35 | Search | $2.00 for each file |
36 | Request for Certificate in relation to an entry or matter under | $30.00 |
regulation 108(18) and (19) |
(regulations 6;109)
FORMS
FORM 1
Please refer to the notes for the completion of this form.
Trade Marks Act 2003: Section 13 and Parts 18, 19 & 20
1. Indicate if this application is for (i) a trade mark (ii) a collective trade mark (iii) a certification trade mark (iv) a defensive trade mark | |
---|---|
2. The applicant claims to be the owner of the trade mark and (i) is using or intends to use the trade mark (ii) has authorised or intends to authorise another person to use the trade mark (iii) intends to assign the trade mark to a body corporate | |
3. Representation of trade mark | |
4. State “Yes” here if the trade mark is a word or words without any particular form of presentation | |
5. If the mark contains or consists of a sign that is a colour, shape, an aspect of packaging, sound or any combination of those elements, give concise and accurate description of trade mark | |
6. If the application is for a series of marks indicate how many in the series |
7. | If this application claims priorityindicate the priority date(s) claimed, the country and the number | Date of filing Country Number |
8. | Certified copy of application of which priority is claimed Is attached Will be furnished within 6 months | |
9. | Translation of certified copy Is attached Will be furnished within 1 month of the filing date |
10. Specification of goods or services
List the classes in consecutive order and list alongside each class the goods or services appropriate to that class
Class number | List of goods / services | ||
---|---|---|---|
11. | If colour(s) claimed, as feature of the mark, indicate and state colour(s) claimed | ||
12. | Indicate any limitation or disclaimers | ||
13. | Full name and address of applicant | ||
14. | Full name and address of agent | ||
15. Authorisation of Agent is attached | Yes | No |
16. The mark is 3 dimensional Reproduction of the mark in black and white is attached Reproduction of the mark in colour is attached | ||
17. State the number of sheets attached to this application | ||
Dated this | day of | 20 | ||
---|---|---|---|---|
Signature: | ________ | _________ | __________ | |
Agent |
Notes: 1. If your answer to any item of this form is too lengthy to fit in the space provided, the information may be given on annexed sheets, numbered consecutively and incorporated by reference using the words “The annexed schedule to item (insert item number) is incorporated in this form” or words to such effect. The number of additional sheets used is to be noted at item 17 of the form.
2. Applications must be accompanied by 6 representations of the mark for which registration is sought.
For Official Use only: Mark type:
Word only
Word and device Device only
(regulation 108(1))
I/We1 2 have appointed3 of 4 to act as my/our1 agent in relation to5
1. Application for registration and post registration matters relating to the following trade mark(s):
I/We1 request that all notices, requisitions and communications relating thereto be sent to the agent at the above address.
I/We1 hereby revoke all previous authorisations, if any, in respect of the same matter or proceeding.
I/We1 hereby declare that I am/we are1 6
Dated this day of 20 .
Signature7:………...……………………………………………..
Name:
Address:
N.B.: Where the applicant is a company, the authorisation must bear the seal or stamp of the company. The
authorisation must be signed before a Notary Public or other person before whom a statutory declaration may be
made under the law of the State where it is executed.
(regulation 22)
REQUEST TO DIVIDE AN APPLICATION ((Trade Marks Act 2003: Part 4)
1. Give details of application to be divided | |
2. Is this request to divide the specification of goods or services? | |
3. If this request is to divide an application into more than two parts, indicate how many parts you want it divided into. | |
4. Full name and address of applicant | |
5. Full name and address of agent | |
6. Signature Date | / / Day Month Year |
7. State number of sheets attached to this form |
NOTE: List on a separate sheet (a) the goods or services by class number to be removed to a divisional application and (b) representation of the marks which will form part of a divisional application.
You cannot divide a registered trademark.
(regulations 24 (2); 57)
NOTICE OF OPPOSITION TO REGISTRATION/REMOVAL OF TRADE MARK
Publication Details
/ /
day month year
Publication Name, Vol. No., Issue No.
(Name) (Address)
(Name) (Address) (Contact No.)
Signature of agent Dated this day of , 20 .
(regulation 40(6))
NOTICE OF ATTENDANCE (Trade Marks Act 2003: Section 35)
OPPOSITION HEARING
To: Registrar, Commerce & Intellectual Property
Take notice that _________________________________________ 1 acting by his agent
2
intends to appear in opposition proceedings relating to trade mark application (number).
Dated this day of , 20 .
Signature of Agent
1 State name of opponent or applicant as applicable 2 State name and address of agent
(regulation 108(2))
REQUEST FOR CORRECTION OF CLERICAL ERROR, OR AMENDMENT OF APPLICATION OF REGISTRATION OF TRADEMARK AND OTHER DOCUMENTS
Agent day month year
(regulation 50(2))
day month year
Signature:
Agent
(regulation 108 (3))
APPLICATION FOR THE CANCELLATION OR AMENDMENT OF REGISTRATION OF A TRADE MARK ON THE REGISTER
5. | Agent’s details Name Address | |||
---|---|---|---|---|
Signature | Date | |||
Agent | Day | Month | Year |
1 Tick the appropriate box
(regulation 55)
Signature: Date Agent Day Month Year
(regulation 59)
APPLICATION FOR RECORDING OF ASSIGNMENT OR TRANSMISSION OF TRADE MARK
Registration number(s), Application number(s) and Class number(s) of the trade marks
concerned and the goods and services for which the trade mark(s) have been used:
Registration No./Application No. Class No.
Goods or services for which the trade mark has been used and is assigned.
/ /
Agent Day Month Year
(regulation 108 (4))
(Trade Marks Act 2003: Section 111(1))
(Name)
(Address)
(Agent)
3. Registered Owner
(Name)
(Agent)
4. | Particulars of claims to interest in, or to right on respect of trademark | |||
---|---|---|---|---|
5. | Signature | Date | ||
DayDay | Month Month | Year Year |
(regulations 67; 108 (5))
TO: Comptroller of Customs & Excise I/We1
of 2
being the registered owner/authorised user3 of the trademark(s) mentioned in the schedule to this Notice under the Trade Marks Act 2003 object to the importation into Saint Vincent and the Grenadines of any goods made outside of Saint Vincent and the Grenadines being goods which section 112 of the Trade Marks Act 2003 applies and which infringe the trademark.
I/We hereby give to the Comptroller of Customs and Excise, and his agents, for the purposes of section 112(3) of the Trade Marks Act 2003 security in the amount of4 in respect of any liability or expenses that may be incurred by the Comptroller and his agents as a result of seizure under section 112 of the Trade Marks Act 2003 of any goods to which this notice relates.
Dated:
Day Month Year
Signature: ____________________________________
Name of Agent:
Address:
Contact No.:
(regulation 108 (6))
To: Comptroller of Customs & Excise
Re: Notified trade mark(s)1
Pursuant to notice dated:
Day Month Year
I/We2
of3
being the registered owner/authorised user4 named in the above notice hereby revokes the said notice in relation to the above mentioned trade mark(s)
Dated: day month year
Signature: ____________________________________ Name of Agent:
Address:
Contact No.:
1 State registration number(s) and names of trade mark(s) 2 Delete as appropriate and state full name of company or individual 3 State address 4 Delete as appropriate
(regulation 108 (7))
To: The Comptroller of Customs and Excise
Re: Notified Trade Mark
Pursuant to notice of objection to importation dated DD MM YY I/We1
of2
being the objector(s) in relation to goods seized pursuant to notice of the Comptroller of Customs and Excise dated DD MMYY
hereby request an extension of time for a period days in which to bring the action with respect to the infringement of the notified trademark(s). The reason for this request is stated hereunder:3
Dated: Day Month Year Signature: _______________________________ Name of Agent:
Address:
Contact No.:
(regulations 108(8))
To:
of
(Designated owner)
Notice is hereby given that the undermentioned goods have been seized under Section 116 of the Trade Marks Act 2003.
Dated: / / Day Month Year
Signature:
Comptroller of Customs and Excise
(regulation 108(9))
To:
(Objector)
Notice is hereby given that the undermentioned goods have been seized under Section 112 of the
Trade Marks Act 2003.
The designated owner(s) of the goods is/are
of
Take notice that the said goods will be released to the designated owner unless you or one of the objectors bring an action for infringement of the notified trade mark and give notice under section 116(1)(a) of the Trade Marks Act 2003 within 1 month from the date of this notice or if the period of notice has been extended under section 116 (1)(b) the extended period.
Dated: ____________/__________/_____________ Day Month Year
Signature:
Comptroller of Customs and Excise
(regulation 108(10))
To: The Comptroller of Customs and Excise I/We8
of 9
the designated owner(s) of goods seized pursuant to notice of the Comptroller of Customs and Excise dated
dd mm yy
hereby consent to the goods mentioned in the above notice being forfeited to the Crown.
Dated: ____________/__________/_____________ Day Month Year
Signature: _______________________________
Name of Agent: Address:
Contact No.:
8Delete as appropriate and state full name of company or individual 9State address
(regulation 108 (11))
NOTICE OF CONSENT TO THE GOODS BEING
RELEASED TO THE DESIGNATED OWNER
To: The Comptroller of Customs and Excise
I/We1
of2
being the objector(s) in relation to goods seized pursuant to notice of the Comptroller of Customs and Excise dated / /
DDMM YY
hereby consent to the goods mentioned in the above notice /the goods listed hereunder3 to be released to the designated owner
Dated: ____________/__________/_____________ Day Month Year
Signature: _______________________________
Name of Agent:
Address:
Contact No.:
FORM 19
To: The Comptroller of Customs and Excise Re: Notified trade mark(s)1 Pursuant to notice dated / /
DDMM YY I/We2
of3
being the objector(s) in relation to goods seized pursuant to notice of the Comptroller of Customs and Excise dated / / hereby give DD MM YY
notice that action no. has been commenced on / / in4 with respect to the infringement of the notified mark.
Dated: / / Day Month Year
Signature: _______________________________
Name of Agent:
Address:
Contact No.:
Insert registration number(s) and names
Delete as appropriate and state full name of company or individual
State address
Insert the full name and jurisdiction in which the action has been commenced
(Regulation 108 (13))
To: Commerce & Intellectual Property Office
(Name)
(Address)
(Name)
(Name)
(Address)
5. The assignee proposes to continue after assignment to apply the same rules governing use of the registered certification trademark that the registered owner applies: Yes
No
No
Dated: / / Day Month Year
Signature:
Agent
(regulation 86)
Agent Day Month Year
FORM 22
(regulation 108(4))
REQUEST TO ENTER CHANGE OF NAME OF REGISTERED OWNER OR AUTHORISED USER OF A TRADE MARK IN THE REGISTER
5. 6. | Certified copy of evidence of change of name is attached2 Yes No Agent’s details Name: | ||||
---|---|---|---|---|---|
Address: | |||||
Signature: | Date | ||||
Agent | Day | Month | Year |
1 Additional marks may be listed as necessary. 2 Tick appropriate box
(regulation 100)
To: Registrar, Commerce and Intellectual Property Office
Application number: | Date: | |
---|---|---|
Class(es): | ||
Dear Sir/Madam | ||
An extension of time is requested for months from the above application in order to deal with outstanding matters. is/are as follows: | to in respect of The reason(s) for the request |
Yours faithfully
Agent
To:
Application number: Class(es):
Applicant’s name:
Dear Sirs
Your request for an extension of time has been granted from to .
Yours faithfully
......................................... Registrar Commerce and Intellectual Property Office
(Regulation 95)
(Name)
/ / dd mm yy
Signature
(regulation 87(1))
1. Applicant:
(Name)
(Address)
(Registration number) | ||||||
---|---|---|---|---|---|---|
4. | Signature | |||||
Dated: | Day | / | / Month | Year |
Signature:
(Agent)
(Regulation 90)
I/We1 hereby request a hearing by the Registrar in relation to (the following proceedings)2 in respect of Registration number
Agent’s Details
(Name)
(Address)
Dated:
DD MMYY
Signature:
Agent
To: Registrar, Commerce and Intellectual Property Office
1 Delete the appropriate one 2 Identify proceeding specifically
(Regulation 108 (15))
Trade mark no:
Date filed:
Registration renewal date:
To:
I, Registrar of the Commerce and Intellectual Property Office of Saint Vincent and the Grenadines hereby certify that the above trade mark/certification trade mark/collective trade mark/defensive trade mark has been registered in your name in respect of the following class(es) of goods and/or services for a period of 10 years from the day of , 20 and may be renewed at the expiration of that period and each succeeding period of 10 years.
Class: Goods/services:
WITNESS my hand this day of 20 .
…………....………………………………………… Registrar Commerce and Intellectual Property Office
(regulation 108 (16))
NOTIFICATION OF AMENDMENT
To:
TAKE NOTICE that the following amendment has been made to Application No./Trade mark No.
[Details of Amendment Made]
Dated this day of 20 .
…………………………………………… Registrar Commerce & Intellectual Property Office
(regulation 108 (17))
To:
I, , Registrar of the Commerce and Intellectual
Property Office of Saint Vincent and the Grenadines, do hereby CERTIFY that by virtue
of an application filed on the | day of | 20 | Registered | Trade | ||||
---|---|---|---|---|---|---|---|---|
Mark No. | of | has been renewed for a period | of 10 years f | rom the | day of | |||
20 | . |
Next renewal date:
Class(es)
WITNESS my hand this day of 20 .
..…………………….…………………………..… Registrar Commerce and Intellectual Property Office
(Regulation 108(19))
IN THE MATTER OF1 (e.g. an application for change of name)
I/We hereby (insert name and address)
request the Registrar to furnish me/us with 2
Dated this day of 20
3
Signature
4
Address
To: The Registrar Commerce and Intellectual Property Office Saint Vincent and The Grenadines
Made this 5th day of May, 2004
DR. HON. RALPH E.GONSALVES Prime Minister, Minister of Finance, Planning, Legal Affairs, Labour, Information, Grenadines Affairs, Crown Lands, Surveys and Postal Services