Division 3
Interest in, and rights in respect of, unregistered trade marks
- Application to have claims to interest etc. recorded
- Record of claims to interest etc.
- Amendment and cancellation
PART 12
INFRINGEMENT OF TRADE MARK
Infringement of trade mark
Infringement of trade mark by breach of certain restrictions Goods etc. to which registered trade mark has been applied by or with consent of registered owner Prior use of identical trade mark etc. What courts may hear action for infringement of registered trade mark What relief can be obtained from court Special case-plaintiff not entitled to damages etc. Circumstances in which action may not be brought Groundless threats of legal proceedings Counterclaim by defendant in action on groundless threats
PART 13
IMPORTATION OF GOODS INFRINGING SAINT LUCIAN TRADE MARKS
Object of Part
Notice of objection to importation Comptroller may seize goods infringing trade mark Notice of seizure Forfeiture of goods Release of goods to owner-no action for infringement Action for infringement of trade mark Action for infringement by authorised user Disposal of forfeited goods Power of Comptroller to retain control of goods Insufficient security Government not liable for loss etc. suffered because of seizure Power to require information
PART 14
OFFENCES
Falsifying etc. a registered trade mark
Falsely applying a registered trade mark Manufacture and possession of die etc. for use in commission of offence Selling etc. goods with false marks Penalty for offence under section 127, 128, 129 or 130 False representations regarding trade marks False entries in Register etc. Disobeying summons etc. Refusing to give evidence etc. Unauthorised persons not to act in trade mark matters False representation about Registry of Companies and Intellectual Property Employee not to prepare documents etc. Conduct of directors, servants and agents
PART 15
COLLECTIVE TRADE MARKS
Object of Part
Collective trade mark Application of Act Application for registration Limitation on rights given by registered collective trade mark Assignment etc. of collective trade mark Infringement of collective trade mark
PART 16
CERTIFICATION TRADE MARKS
Object of Part
Certification trade mark Application of Act Rights given by registration of a certification trade mark Rights of persons allowed to use certification trade mark Rules governing the use of certification trade marks Grant of application to register Refusal to register Variation of rules Rules to be available for inspection Assignment of registered certification trade mark Rectification of the Register by order of court Variation of rules by order of court Copy of order and rules
PART 17
DEFENSIVE TRADE MARKS
Object of Part
Defensive trade mark Application of Act Additional grounds for rejecting application for registration or opposing registration Amendment or cancellation of registration by order of court Cancellation of registration by Registrar
PART 18
JURISDICTION AND POWERS OF COURTS
Jurisdiction of High Court
Transfer of proceedings Appeals Registrar may appear in appeals Powers of High Court.
PART 19
ADMINISTRATION
Registrar of Companies and Intellectual Property
Registrar’s powers Exercise of power by Registrar Registrar to act as soon as practicable Deputy Registrar Delegation of Registrar’s powers and functions
PART 20
THE REGISTER AND OFFICIAL DOCUMENTS
The Register
Register may be kept on computer Inspection of Register Register Certified copies of documents PART 21 |
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MISCELLANEOUS |
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Division 1 |
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Applications and other documents |
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183. | Making and signing applications etc. |
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184. | Filing of documents |
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185. | Withdrawal of application etc. |
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186. | Address for service |
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187. | Change of name |
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| Division 2 |
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| Proceedings before the Registrar or a court |
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188. | Death of applicant etc. |
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189. | Description of registered trade mark |
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190. | Evidence of trade usage |
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191. | Death of party to proceeding before Registrar |
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192. | Costs awarded by Registrar |
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193. | Security for costs |
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| Division 3 |
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| General |
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194. | Fees |
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195. | Extension of time |
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196. | Publication of documents |
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197. | Use of trade mark for export trade |
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198. | Passing off actions |
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199. | Expenses |
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200. | Regulations |
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201. | Repeal |
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202. | Transitional |
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I ASSENT
[L.S.] PEARLETTE LOUISY,
Governor-General.
26th October, 2001.
SAINT LUCIA
AN ACT to provide for the promotion and protection of trade marks and for related matters.
[ 3rd November, 2001 ]
BE IT ENACTED by the Queen’s Most Excellent Majesty, by and with the advice and consent of the House of Assembly and the Senate of Saint Lucia, and by the authority of the same, as follows:
PART 1
PRELIMINARY
Short title and commencement
1
.—(1) This Act may be cited, as the Trade Marks Act, 2001.
(2) This Act shall come into force on a day to be prescribed by the Minister by Order published in the Gazette.
PART 2
INTERPRETATION
(1) In this Act —
“applicant” in relation to an application, means the person in whose name the application is for the time being proceeding; “applied to” has the meaning given to it in subsection (11); “applied in relation to” has the meaning given to it in subsection (11); “approved form” means a form approved by the Registrar for the purposes of the provision in which the expression appears; “assignment” in relation to a trade mark, means an assignment by act of the parties concerned; “association” does not include a body corporate; “attorney-at-law” means an attorney-at-law as defined by the Legal Professions Act 2000; “authorized use of a trade mark” has the meaning given to it by subsection (7); “authorized user of a trade mark” has the meaning given to it by subsection (6) ; “certification trade mark” has the meaning given to it by section 148; “collective trade mark” has the meaning given to it by section 141 ;
“Companies and Intellectual Property (Registry) Act” means the Companies and Intellectual Property (Registry) Act 2000, No. 12;
“Comptroller” means the Comptroller of Customs appointed under the Customs (Control and Management Act 1990), No. 23;
“Convention country” means a country which is a party to the Paris Convention for the Protection of Industrial Property 1883 ;
“date of registration”, in relation to the registration of a trade mark in respect of particular goods and services, means the day from which the registration of a trade mark in respect of those goods or services is taken to have had effect under section 56(1) or (2);
“deceptively similar” has the meaning given to it by sub-section (13); “defensive trade mark” has the meaning given to it by section 162;
“Deputy Registrar” means the Deputy Registrar appointed under the Companies and Intellectual Property (Registry) Act;
“designated owner” in relation to goods imported into Saint Lucia means the person identified as the owner of the goods on the entry made pursuant to the Customs (Control and Management) Act 1990;
“divisional application” has the meaning given to it by section 29;
“examine”, in relation to an application for the registration of a trade mark, means to carry out an examination under section 15 in relation to the application;
“existing registered mark” means a mark that was registered under the repealed Acts and whose registration was due to expire after the coming into force of this Act;
“file” means to file at the Registry of Companies and Intellectual Property; “filing date” means —
- (a)
- in relation to an application for the registration of a trade mark other than an application referred to in paragraph
(b) of this definition, the day on which the application is filed;
- (b)
- in relation to a divisional application for the registration of a trade mark, the day on which the initial application, within the meaning of Division 3 of Part 4 , was filed;
“geographical indication”, has the meaning given to it in the Geographical Indications Act 2000, No. 4; “goods of a person” means goods dealt with or provided in the course of trade by the person; “limitations” means limitations of the exclusive right to use a trade mark, including limitations of that right as to —
- (a)
- mode of use;
- (b)
- use in Saint Lucia; or
- (c)
- use in relation to goods or services to be exported;
“Minister” means Minister with responsibility for Intellectual Property;
“notified trade mark” means a trade mark in respect of which notice under section 115 is in force; “objector”, in relation to seized goods, means any person who has given a notice under section 115 that is in force;
“old register” means the Register of Patents, Trademarks and Designs kept under the repealed Acts;
“opponent” in relation to the registration of a trade mark, means —
- (a)
- the person who has filed ,under section 36, a notice of opposition to the registration of the trade mark; or
- (b)
- if section 37 applies, a person in whose name the notice of the opposition is taken to have been filed;
“originate” in relation to wine, has the meaning given to it by subsection (19);
“pending” in relation to an application for the registration of a trade mark under this Act has the meaning given to it by subsection (14);
“pending” in relation to an application for the registration of a trade mark under the repealed Acts has the meaning given to it by subsection ( 15);
“person” includes a body corporate or unincorporated body;
“predecessor in title” in relation to a person who claims to be the owner of a trade mark means —
- (a)
- if the trade mark was assigned or transmitted to one or more than one person before it was assigned or transmitted to the first mentioned person, that other person or anyone of those other persons; or
- (b)
- if paragraph (a) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first mentioned person;
“prescribed” means prescribed in Regulations made under this Act;
“priority date” has the meaning given to it by subsection (16);
“Register” means the Register of Trade Marks kept under section 178; “registered owner” in relation to a registered trade mark, means the person in whose name the trade mark is registered; “registered trade mark” means a trade mark whose particulars are registered in the Register under this Act;
“Registrar” means the Registrar of Companies and Intellectual Property appointed pursuant to the Companies and Intellectual Property (Registry) Act 2000;
“registration number” , in relation to a registered trade mark, means the number given to it Under section 52 (2);
“Registry of Companies and Intellectual Property” means the Registry of Companies and Intellectual Property established under Companies and Intellectual Property (Registry) Act;
“Regulations” means Regulations made pursuant to section 200; “remove from the Register”, in relation to a trade mark, has the meaning given to it by subsection (17); “repealed Acts” means the Acts repealed pursuant to section 201;
“represented graphically” has the meaning given to it in subsection (3); “seized goods” means goods seized under section 116; “services of a person” means services dealt with or provided in the course of trade by the person;
“sign” includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, color, and any combination thereof;
“similar goods” has the meaning given to it by subsection (18)(a); “similar services" has the meaning given to it by subsection (18)(b);
“trade mark” means a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
“transmission” means —
- (a)
- transmission by operation of law;
- (b)
- devolution on the personal representative of a deceased person; or
- (c)
- any other kind of transfer except assignment;
“use of trade mark” has the meaning effected by subsections (2), (3), and (4);
“use of trade mark in relation to goods” has the meaning given to it pursuant to subsection (5)(a);
“use of trade mark in relation to services” has the meaning given to it pursuant to subsection (5)(b);
“word” includes an abbreviation of a word.
- (2)
- If the Registrar or the High Court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the High Court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
- (3)
- A trade mark is capable of being represented graphically if it can be represented on paper.
- (4)
- An authorised use of a trade mark by a person is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
- (5)
- In this Act —
“use of a trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods, including second-hand goods;
“use of a trade mark in relation to services” means use of the trade mark in physical or other relation to the services.
- (6)
- A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services Under the control of the owner of the trade mark.
- (7)
- The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
- (8)
- If the owner of a trade mark exercises quality control over goods or services —
- (a)
- dealt with or provided in the course of trade by another person; and —
- (b)
- in relation to which the trade mark is used;
the other person is taken, for the purposes of subsections (6) and (7), to use the trade mark in relation to the goods or services under the control of the owner.
- (9)
- If —
- (a)
- a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
- (b)
- the owner of the trade mark exercises financial control over the other person's relevant trading activities;
the other person is taken, for the purposes of subsection (6) and (7), to use the trade mark in relation to the goods or services under the control of the owner.
- (10)
- Subsections (8) and (9) do not limit the meaning of the expression “under the control of” in subsections (6) and (7).
- (11)
- For the purposes of this Act —
- (a)
- a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
- (b)
- a trade mark is taken to be applied in relation to goods or services if it is —
- (i)
- applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
- (ii)
- used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
- (c)
- in addition to paragraphs (a) and (b), a trade mark is taken to be applied in relation to goods or services if it is used —
- (i)
- on a signboard or in an advertisement, including a televised advertisement; or
- (ii)
- in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided, as the case may be, to a person following a request or order made by referring to the trade mark as so used.
(12) In subsection (11) (b)(i)— “covering” includes packaging, frame, wrapper, container, stopper,
lid or cap; “label” includes a band or ticket.
- (13)
- For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
- (14)
- An application for the registration of a trade mark under this Act is pending from the time it is filed until —
- (a)
- it lapses pursuant to section 21, is withdrawn pursuant to section 185 or is rejected under section 17;
- (b)
- if the Registrar refuses, under section 39, to register the trade mark and there is no appeal against the decision, the end of the period allowed for the appeal;
- (c)
- if the Registrar refuses, under section 39, to register the trade mark and —
(i) there is an appeal against the decision; and
- (ii)
- the decision is confirmed on appeal; the day on which the decision is confirmed on appeal; or
- (d)
- the trade mark is registered under section 52;
- (15)
- An application for the registration of a trade mark under the repealed Acts was pending immediately before the commencement date of this Act if, before that date —
- (a)
- the application had not lapsed, been withdrawn, or refused; or
- (b)
- had been refused but —
- (i)
- the period allowed for appealing against the decision to refuse had not yet ended; or
- (ii)
- an appeal had been made against the decision but had not been decided;
under the repealed Acts.
- (16)
- The priority date of the registration of a trade mark in respect of particular goods or services is —
- (a)
- if the trade mark is registered, the date of the registration of trade mark in respect of those goods or services;
- (b)
- if the registration of the trade mark is being sought, the day that would be the date of the registration of the trade mark in respect of those goods or services if the trade mark was registered.
- (17)
- A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register.
- (18)
- For the purposes of this Act —
- (a)
- goods are similar to other goods if —
- (i)
- they are the same as the other goods; or
- (ii)
- they are of the same description as that of the other goods; or
- (b)
- services are similar to other services if —
- (i)
- if they are the same as the other services; or
- (ii)
- if they are of the same description as that of the other services.
- (19)
- For the purposes of this Act —
- (a)
- a wine is taken to have originated in a foreign country or Saint Lucia only if the wine is made within the territory of that country or of Saint Lucia, as the case may be; and
- (b)
- a wine is taken to have originated in a particular region or locality of a foreign country or of Saint Lucia only if the wine is made from grapes grown in that region or locality.
PART 3 TRADE MARKS AND TRADE MARK RIGHTS
Categories of trade marks
3.—
(1) A trade mark may be registered in accordance with this Act in respect of — - (a)
- goods;
- (b)
- services; or
- (c)
- both goods and services.
- (2)
- The registration of a trade mark may be in respect of goods or services of more than one class.
Rights given by registration of trade marks
4
.—(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Act, the exclusive rights —
- (a)
- to use the trade mark;
- (b)
- to authorise other persons to use the trade mark in relation to goods or services or both in respect of which the trade mark is registered; and
- (c)
- to obtain relief under this Act if the trade mark has been infringed.
- (2)
- The rights pursuant to subsection (I) are deemed to have accrued to the registered owner as from the date of the registration of the trade mark.
- (3)
- If a trade mark is registered under this Act subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.
- (4)
- If a trade mark is registered in the name of two or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person.
Nature of registered trade mark as property
5.—(1) A registered trade mark is personal property.
(2) A right in respect of a registered trade mark is enforceable in the same way as rights in respect of any other personal property.
Power of registered owner to deal with trade mark
6.—(1) The registered owner of a trade mark may, subject only to any rights vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing. - (2)
- This section does not protect a person who deals with the registered owner otherwise than —
- (a)
- as a purchaser in good faith for value; and
- (b)
- without notice of any fraud on the part of the owner.
Limitation on rights for similar trade marks
7. If trade marks that are substantially identical or deceptively similar have been registered by more than one person whether in respect of the same or different goods or services, the registered owner of anyone of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first mentioned owner is authorised to do so under the registration of his or her trade mark.
Trade mark as sign describing article
8.—(1) This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service. - (2)
- If a trade mark consists of the sign referred to in subsection (1), the registered owner —
- (a)
- does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to —
- (i)
- the article or substance or other goods of the same description; or
- (ii)
- the service or other services of the same description; and
- (b)
- is taken to have ceased to have those exclusive rights from and including the day determined by the High Court under subsection (4).
- (3)
- If a trade mark contains the sign referred to in subsection (1), the registered owner —
- (a)
- does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to —
- (i)
- the article or substance or other goods of the same description; or
- (ii)
- the service or other services of the same description; and
- (b)
- is taken to have ceased to have those exclusive rights from the day determined by the High Court under subsection (4).
- (4)
- For the purposes of subsections (2) and (3), the High Court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.
Trade mark relating to article etc. formerly manufactured under patent
9.
—(1) This section applies if — - (a)
- a registered trade mark consists of, or contains, a sign that describes or is the name of —
- (i)
- an article or substance that was formerly exploited under a patent; or
- (ii)
- a service that was formerly provided as a patented process; and
- (b)
- it is at least two years since the patent has expired or ceased; and
- (c)
- the sign is the only commonly known way to describe or identify the article, substance or service.
- (2)
- If a trade mark consists of the sign referred to in subsection (1), the registered owner —
- (a)
- does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to —
- (i)
- the article or substance or other goods of the same description; or
- (ii)
- the service or other services of the same description; and
- (b)
- is taken to have ceased to have those exclusive rights from the end of the period of two years after the patent expired or ceased.
- (3)
- If a trade mark contains the sign referred to in subsection (1), the registered owner —
- (a)
- does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to —
- (i)
- the article or substance or other goods of the same description; or
- (ii)
- the service or other services of the same description; and
- (b)
- is taken to have ceased to have those exclusive rights from the end of the period of two years after the patent expired or ceased.
Powers of authorised user of registered trade mark
10.—(1) Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may —
(a) use the trade mark in relation to the goods or services or both, in respect of which the trade mark is registered, subject to any condition or limitation subject to which the trade mark is registered;
- (b)
- subject to subsection (2), bring an action for infringement of the trade mark if the registered owner refuses or neglects to do so within the prescribed period;
- (c)
- cause to be displayed on goods in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice prohibiting any act that is under section 105(2) a prohibited act in relation to the goods;
- (d)
- either —
- (i)
- give to the Comptroller a notice under section 115 objecting to the importation of goods that infringe the trade mark; or
- (ii)
- revoke a notice given under subparagraph (i);
- (e)
- give permission to any person —
(ii) to make any addition to; or
(iii) to remove, erase or obliterate, wholly or partly;
a registered trade mark that is applied to any goods, or in relation to any goods or services, in respect of which the trade mark is registered;
- (f)
- give permission to any person to apply the trade mark to goods, or in relation to goods or services, in respect of which the trade mark is registered.
- (2)
- Subject to subsection (3), if the authorised user of a trade mark brings an action for infringement of the trade mark, the authorised user shall make the registered owner of the trade mark a defendant in the action.
- (3)
- The registered owner is not liable for costs if he or she does not take part in the proceedings for an action brought pursuant to subsection (2).
PART 4
APPLICATION FOR REGISTRATION
General
Making of application
11.
—(1) A person may apply, in the prescribed form, for the registration of a trade mark in respect of goods or services or both if — - (a)
- the person claims to be the owner of the trade mark; and
- (b)
- one of the following applies —
- (i)
- the person is using or intends to use the trade mark in relation to the goods or services or both;
- (ii)
- the person has authorised or intends to authorise another person to use the trade mark in relation to the goods or services or both;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods or services or both.
- (2)
- Without limiting the particulars that may be included in an application made under subsection (1), the application shall —
- (a)
- include six (6) representations of the trade mark; and
- (b)
- specify, in accordance with the Regulations, the goods or services or both, in respect of which it is sought to register the trade mark.
- (3)
- An application, other than an application under section 35 for the registration of two or more trade marks as a series, may be made in respect of goods and services of one or more of the classes prescribed in the Regulations.
Application by joint owners
12. If the relations between two or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except — - (a)
- on behalf of all of them; or
- (b)
- in relation to goods or services or both with which all of them
are connected in the course of trade; the persons may together apply for its registration under section 11 (1).
Claim for priority
13.—(1) If — - (a)
- a person has made an application for the registration of a trade mark in one or more than one Convention country; and
- (b)
- within six months after the day on which that application, or the first of those applications, was made, that person or that person's predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods or services or both in respect of which registration was sought in that country or those countries;
that person or that person's successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods or services or both in accordance with the Regulations.
- (2)
- The priority claimed pursuant to subsection (1) is for the registration of the trade mark in respect of the goods or services —
- (a)
- if an application to register the trade mark was made in only one Convention country from and including the day on which the application was made in that country; or
- (b)
- if applications to register the trade mark were made in more than one Convention country from and including the day on which the earliest of those applications was made.
Notice of application to be published
14. The Registrar shall publish notice, in the prescribed form , of an application to register a trade mark.
Registrar to examine, and report on, application
15. The Registrar shall, in accordance with the Regulations, examine and report on — - (a)
- whether an application made pursuant to section 11 has been made in accordance with this Act; and
- (b)
- whether there are grounds under Division 2 for rejecting it.
Registrar to decide on disputed classification of goods etc.
16. If a question arises as to the class in which goods or services are comprised — - (a)
- that question is to be decided by the Registrar; and .
- (b)
- the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under this Act.
Application accepted or rejected
17.—(1) The Registrar shall, after the examination made pursuant to section 15, accept an application made pursuant to section 11 unless he or she is satisfied that — - (a)
- the application has not been made in accordance with this Act; or
- (b)
- there are grounds for rejecting it.
- (2)
- The Registrar may accept an application made pursuant to section 11 subject to conditions or limitations.
- (3)
- If the Registrar is satisfied that —
- (a)
- an application has not been made in accordance with this Act; or
- (b)
- there are grounds for rejecting it; the Registrar shall, subject to subsection (4), reject an application.
- (4)
- The Registrar may not reject an application made pursuant to section 11 without giving the applicant an opportunity of being heard.
Notice etc. of decision
18. The Registrar shall — - (a)
- notify an applicant in writing of his or her decision to accept or reject an application under section 17; and
- (b)
- publish notice of the decision in the Gazette.
Appeal
19. An applicant may appeal to the High Court against a decision of the Registrar — - (a)
- to accept an application subject to conditions or limitations; or
- (b)
- to reject an application.
Deferment of acceptance
20. The Registrar may defer the acceptance of an application made pursuant to section 11 in the circumstances provided for, and for the period prescribed in the Regulations.
Lapsing of application
21.—(1) Subject to subsection (2), an application lapses if — - (a)
- it is not accepted; or
- (b)
- no further action is taken on the application by the applicant;
- (c)
- the applicant fails to submit information requested by the Registrar;
within the prescribed period or within the period as extended by the Registrar in accordance with section 195.
- (2)
- If, after the prescribed period or the prescribed period as extended has expired, the Registrar extends under section 195 the period within which an application may be accepted, the application —
- (a)
- is taken not to have lapsed when the prescribed period expired; and
- (b)
- lapses if it is not accepted within the extended period.
Revocation of acceptance
22.—(1) If, before a trade mark is registered, the Registrar is satisfied — - (a)
- that an application for registration of the trade mark was accepted because of an error or omission in the course of the examination; or
- (b)
- that, in the special circumstances of the case, the trade mark should not be registered, or should be registered subject to conditions or limitations, or to additional or different conditions or limitations;
the Registrar may revoke the acceptance of the application
- (2)
- If the Registrar revokes the acceptance of an application —
- (a)
- the application is taken to have never been accepted; and
- (b)
- the Registrar shall examine, and report on, the application as necessary under section 15; and
- (c)
- sections 17 and 18 again apply in relation to the application.
Division 2
Grounds for rejecting an application
Trade mark containing certain signs
23.—(1) An application for the registration of a trade mark shall be rejected if the trade mark contains or consists of a sign that is prescribed not to be used as a trade mark. - (2)
- An application for the registration of a trade mark may be rejected if the trade mark contains or consists of —
- (a)
- a sign that is prescribed for the purposes of subsection (1); or
- (b)
- a sign so nearly resembling —
- (i)
- a sign referred to in paragraph (a) ; or
- (ii)
- a sign referred to in subsection (1) ; as to be likely to be taken for it.
Trade mark that cannot be represented graphically
24. An application for the registration of a trade mark shall be rejected if the trade mark cannot be represented graphically.
Trade mark not distinguishing applicant's goods or services
25.—(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. - (2)
- An application for the registration of a trade mark shall be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons.
- (3)
- In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar shall first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
- (4)
- If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services —
- (a)
- the Registrar is to consider whether, because of the combined effect of the following —
- (i)
- the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
- (ii)
- the use, or intended use, of the trade mark by the applicant; and
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
- (b)
- If —
- (i)
- the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; or
- (ii)
- the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services, the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
- (5)
- If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply —
- (a)
- if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant, the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
- (b)
- in a case other than in paragraph (a), the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Trade mark scandalous or its use contrary to law
26. An application for the registration of a trade mark shall be rejected if — - (a)
- the trade mark contains or consists of scandalous matter; or
- (b)
- its use would be contrary to law.
Trade mark likely to deceive or cause confusion
27. An application for the registration of a trade mark in respect of particular goods or services shall be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be, likely to deceive or cause confusion.
Identical etc. trade marks
28.—(1) Subject to subsections (3) and (4), an application for the registration of a trade mark in respect of goods shall be rejected if — - (a)
- the applicant's trade mark is substantially identical with, or deceptively similar to —
- (i)
- a trade mark registered by another person in respect of similar goods or closely related services; or
- (ii)
- a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
- (b)
- the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
- (2)
- Subject to subsections (3) and ( 4), an application for the registration of a trade mark in respect of services shall be rejected if —
- (a)
- it is substantially identical with, or deceptively similar to —
- (i)
- a trade mark registered by another person in respect of similar services or closely related goods; or
- (ii)
- a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
- (b)
- the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
- (3)
- If the Registrar, in either case mentioned in subsection (1) or (2), is satisfied —
- (a)
- that there has been honest concurrent use of the two trade marks; or
- (b)
- that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose and if the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
- (4)
- If the Registrar in either case mentioned in subsection (1) or
- (2)
- is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period —
- (a)
- beginning before the priority date for the registration of the other trade mark in respect of —
- (i)
- the similar goods or closely related services; or
- (ii)
- the similar services or closely related goods; and
- (b)
- ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Division 3
Divisional applications
Definition of divisional application
29.—(1) A person who has made an application for the registration of a trade mark in respect of certain goods or services or both may, in accordance with this Division, make another application — - (a)
- for the registration of a part only of the trade mark in respect of any or all those goods or services or both;
- (b)
- for the registration of the trade mark in respect of some only of the goods or services or both in respect of which registration is sought under the initial application; or
- (c)
- if the initial application has been amended to exclude some of the goods and services or both in respect of which registration was sought in the first place or the registration of the trade mark in respect of any or all of the goods or services or both that have been so excluded.
- (2)
- For the purposes of this Division —
- (a)
- the initial application is taken to be the application for which notice has been published by the Registrar under section 14; and
- (b)
- a divisional application is an application made under this Division.
Divisional application possible only if initial application is pending
30. A divisional application for the registration of a trade mark or a part of a trade mark may be made only if the initial application for the registration of the trade mark is pending.
Divisional application for registration of part of trade mark
31.—(1) This section provides for the making of a divisional application for the registration of a part only of the trade mark that is the subject of the initial application. - (2)
- If a part of a trade mark, by itself, may be registered as a trade mark, the applicant for the registration of the trade mark may, within the prescribed period but subject to subsection (3), make a divisional application for the registration of that part as a trade mark in respect of any or all of the goods or services or both specified in the initial application.
- (3)
- If the initial application has been accepted, notice of the divisional application shall not be made after the acceptance is published in the Gazette pursuant to section 18.
Divisional application for registration of trade mark in respect of some of goods etc.
32.
—(1) This section provides for the making of a divisional application for the registration of a trade mark in respect of some of the goods or services or both in respect of which registration of the trade mark is being sought by the initial application. - (2)
- The applicant for the registration of a trade mark may, subject to subsection (3), make a divisional application for the registration of the trade mark in respect of any, but not all, of —
- (a)
- the goods or services or both specified in the initial application; or —
- (b)
- if the initial application has been amended to exclude some of the goods or services or both specified in that application
before its amendment the goods or services or both specified in the initial application as amended.
(3) If the initial application has been accepted, the divisional application may not be made after the notice of acceptance is published in the Gazette pursuant to section 18.
Divisional application for registration of trade mark in respect of goods etc. excluded from the initial application
33.
—(1) This section — - (a)
- applies if the initial application for the registration of a trade mark is amended to exclude some of the goods or services or both specified in that application before its amendment; and (b) it provides for the making of a divisional application in respect of any or all of the excluded goods or services or both.
- (2)
- If the initial application is amended —
- (a)
- before a decision is made about it under section 17; or
- (b)
- if the initial application is accepted, before notice of its acceptance is published in the Gazette pursuant to section 18;
the applicant may, within the prescribed period but subject to subsection (3), make a divisional application for the registration of the trade mark in respect of any or all of the goods or services or both that have been excluded from the initial application.
- (3)
- If the initial application has been accepted, the divisional application may not be made after the notice of the acceptance is published in the Gazette pursuant to section 18.
- (4)
- If the initial application, whether it has already been amended or not, is amended after notice of its acceptance has been in the Gazette pursuant to section 18, the applicant may, within the prescribed period, make a divisional application for the registration of the trade mark in respect of any or all of the goods or services or both have been excluded from the application whose notice of acceptance was so published.
A divisional application is taken to have been filed on the day on which the initial application concerned was filed.
Division 4
Application for registration of series of trade marks
Application—series of trade marks
35.—(1) A person may make a single application under section 11 - (1)
- for the registration of two or more trade marks in respect of similar goods or similar services within a single class if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters —
- (a)
- statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;
- (b)
- statements or representations as to number, price, quality or names of places;
- (c)
- the colour of any part of the trade mark;
- (d)
- any matter that is not inherently adapted to distinguish the goods or services and does not substantially affect the identity of the trade marks.
- (2)
- If—
- (a)
- the application meets all the requirements of this Act; and
- (b)
- the Registrar is required, under section 52, to register the trade marks;
he or she shall register them as a series in one registration.
PART 5
OPPOSITION TO REGISTRATION
Division 1
General
Opposition
36.
—(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition. - (2)
- A notice of opposition filed pursuant to subsection (1) shall be in an approved form and shall be filed within the prescribed period or within that period as extended in accordance with the Regulations.
- (3)
- The opponent shall serve a copy of the notice of opposition filed pursuant to subsection (1) on the applicant.
- (4)
- The registration of a trade mark may be opposed on any of the grounds specified in Division 2 and on no other grounds.
Proceedings in name of a person other than the person who filed the notice 37.—If — - (a)
- after a person has filed a notice of opposition, the right or interest on which the person relied to file the notice of opposition becomes vested in another person; and
- (b)
- the other person —
- (i)
- notifies the Registrar in writing that the right or interest is vested in him or her; and
- (ii)
- does not withdraw the opposition;
the opposition is to proceed as if the notice of opposition had been filed in that other person’s name.
Opposition proceedings
38.—(1) The Registrar shall give to the opponent and to the applicant an opportunity of being heard on the opposition.
(2) Subject to subsection (1), the proceedings for dealing with the opposition shall be in accordance with the Regulations.
Decision
39. Unless the proceedings are discontinued or dismissed, the Registrar shall, at the end, decide — - (a)
- to refuse to register the trade mark; or
- (b)
- to register the trade mark, with or without conditions or limitations, in respect of the goods or services or both then specified in the application;
having regard to the extent, if any, to which any ground on which the application was opposed has been established.
Appeal
40. An applicant or opponent may appeal to the High Court against a decision of the Registrar under section 39.
Division 2
Grounds for opposing registration
Registration may be opposed on same grounds as for rejection
41. The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented graphically.
Applicant not owner of trade mark
42. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Applicant not intending to use trade mark
43. The registration of a trade mark may be opposed on the ground that the applicant does not intend — - (a)
- to use, or authorise the use of, the trade mark in Saint Lucia; or
- (b)
- to assign the trade mark to a body corporate for use by the body corporate in Saint Lucia;
in relation to the goods or services or both specified in the application.
Trade mark similar to trade mark that has acquired a reputation
44. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that — - (a)
- it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Saint Lucia; and
- (b)
- because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Trade mark containing or consisting of a false geographical indication
45.—(1) The registration of a trade mark in respect of particular goods may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for other goods originating in — - (a)
- a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or
- (b)
- a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated.
- (2)
- An opposition on a ground referred to in subsection (1) fails if the applicant establishes that —
- (a)
- the relevant goods originated in the country, region or locality identified by the geographical indication;
- (b)
- the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or
- (c)
- the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before —
- (i)
- the commencement of this Act; or
- (ii)
- the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;
whichever is the later; or
- (d)
- if the registration of the trade mark is being sought in respect of wine or spirits and the sign is identical with the name that, on the date of commencement of this Act, was, in the country in which the wine or spirits originated, the customary name of a variety of grapes used in the production of the other wine or spirits.
- (3)
- In addition to subsection (2), an opposition on a ground referred to in subsection (1) fails if the applicant establishes that —
- (a)
- although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and
- (b)
- the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.
- (4)
- In this section —
“relevant goods” means the particular goods for which registration is opposed pursuant to subsection (1);
“designated goods” means the other goods referred to in subsection (1).
Application etc. defective etc.
46. The registration of a trade mark may be opposed on any of the following grounds — - (a)
- that the application, or a document filed in support of the application, was amended contrary to this Act;
- (b)
- that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
PART 6
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND OTHER DOCUMENTS
Amendment of application for registration of trade mark
47.—
(1) The Registrar may, at the written request of the applicant or of his or her agent, amend an application for the registration of a trade mark in accordance with section 48 or 49.
- (2)
- If —
- (a)
- an application for the registration of a trade mark may be amended under section 49; and
- (b)
- the applicant has not asked in writing that the application be amended;
the Registrar may, on his or her own initiative but in accordance with the Regulations, amend the application as necessary to remove any ground on which the application could be rejected.
Amendment before notice of application are published
48. If — - (a)
- the notice of an application has not yet been published under section 14; and
- (b)
- the request for the amendment is made within the prescribed
period; an amendment may be made to correct a clerical error or an obvious mistake.
Amendment after notice of application has been published
49.—(1) If the notice of an application has been published under section 14, the application may be amended as provided in this section. - (2)
- An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the notice of the application was published.
- (3)
- An amendment may be made to correct a mistake of fact or an error in the classification of any goods or services specified in the application.
- (4)
- An amendment may be made to change the type of registration sought in the application.
- (5)
- An amendment may be made to any particular specified in the application other than that referred to in subsection (4), unless the amendment would have the effect of extending the rights that, apart from the amendment, the applicant would have under the registration if it were granted.
Amendment of other documents
50. The Registrar may, at the written request of the person who has filed an application other than an application for the registration of a trade mark, a notice or other document for the purposes of this Act ,or at the written request of the person's agent, amend the application, notice or document — - (a)
- to correct a clerical error or an obvious mistake; or
- (b)
- if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Appeal
51. An appeal lies to the High Court from a decision of the Registrar under this Part.
PART 7
REGISTRATION OF TRADE MARKS
Division 1
Initial registration
Obligation to register
52.—(1) The Registrar shall, within the period prescribed, register a trade mark that has been accepted for registration — - (a)
- if there has been no opposition to the registration; or
- (b)
- if there has been an opposition, and if the Registrar’s decision, or in the case of an appeal against the Registrar's decision, the decision on appeal, is that the trade mark should be registered;
- (2)
- On registering a trade mark pursuant to subsection (1), the Registrar shall give it a number by which it may be identified.
Registration—how effected
53.—(1) The trade mark shall be registered — - (a)
- in the name of the applicant for registration;
- (b)
- in respect of the goods or services or both specified in the application at the time of registration; and
- (c)
- subject to the conditions, if any, and the limitations, if any, imposed by the Registrar in accepting the application for registration or deciding to register the trade mark.
- (2)
- The Registrar shall, in addition to subsection (1), enter in the Register —
- (a)
- a graphical representation of the trade mark;
- (b)
- its registration number; and
- (c)
- any other particulars that are required by this Act to be entered in the Register.
- (3)
- If two or more persons applied together for the registration of the trade mark, the applicants shall be registered as joint owners of the trade mark.
Colours in registered trade marks
54.—(1) A trade mark may be registered with limitations as to colour. - (2)
- The limitations pursuant to subsection (1) may be in respect of the whole, or a part, of the trade mark.
- (3)
- To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.
Notification of registration
55. When a trade mark has been registered, the Registrar shall — - (a)
- publish notice of the registration in the Gazette; and
- (b)
- give to the registered owner of the trade mark a certificate of registration in an prescribed form.
Date and term of registration
56.—(1) Subject to subsection (2 ), the registration of a trade mark in respect of the goods or services or both in respect of which the trade mark is registered is taken to have had effect from and including the filing date in respect of the application for registration. - (2)
- If —
- (a)
- an application for registration was in respect of a trade mark whose registration had also been sought in one or more than one Convention country;
- (b)
- the applicant claimed a right of priority under section 13 for the registration of the trade mark in respect of particular goods or services; and
- (c)
- the trade mark is registered under this Act;
the registration of the trade mark in respect of those goods or services is taken to have had effect if, an application to register the trade mark was made in only one Convention country from and including the day on which the application was made in that country, or if applications to register the trade mark were made in more than one Convention country from and including the day on which the earliest of those applications were made.
(3) Unless it is earlier cancelled, or the trade mark is earlier removed from the Register, the registration of a trade mark expires ten years after the filing date in respect of the application for its registration.
Ceasing of registration
57. The registration of a trade mark ceases if — - (a)
- the trade mark is removed from the Register under section 62 or Part 9; or
- (b)
- the registration of the trade mark is cancelled.
Disclaimers
58.—( 1) An applicant for the registration of a trade mark, or the registered owner of a registered trade mark, may, by notice in writing given to the Registrar, disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark. - (2)
- A disclaimer under subsection (1) affects only the rights given by this Act to the registered owner of the trade mark on registration of the trade mark.
- (3)
- The Registrar shall, on registering the trade mark or on receiving notice of the disclaimer whichever is later, enter the particulars of the disclaimer in the Register.
- (4)
- A disclaimer made in accordance with subsection (1) shall not be revoked.
Division 2
Renewal of registration Request for renewal
59. Any person may, within the prescribed period before the registration of a trade mark expires, make a request in the prescribed form to the Registrar for the renewal of the registration.
Notice of renewal date
60. If, at the beginning of the prescribed period, the Registrar has not received a request for the renewal of the registration of the trade mark, the Registrar shall, in accordance with the Regulations, notify the registered owner of the trade mark that the renewal is due.
Renewal before registration expires
61.—(1) If a request for the renewal of the registration of a trade mark is made in accordance with section 59, the Registrar shall renew the registration for a period of ten years from the day on which the registration of the trade mark would expire if it were not renewed.
(2) The Registrar shall give notice, in the prescribed form, of a renewal granted pursuant to subsection (1) to the registered owner of the trade mark.
Failure to renew
62. If the registration of a trade mark is not renewed, then — - (a)
- subject to sections 63 and 64, the registration ceases to have effect when it expires; and
- (b)
- unless the registration is renewed under section 63, the Registrar shall remove the trade mark from the Register twelve months after the day on which the registration expired.
Renewal within 12 months after registration expires
63. If, within twelve months after the registration of a trade mark has expired, a person makes a request to the Registrar, in accordance with section 59, for the renewal of the registration of the trade mark, the Registrar shall renew the registration of the trade mark for ten years from the day on which the registration expired.
Status of unrenewed trade mark
64.
If — - (a)
- the registration of a trade mark has not been renewed; and
- (b)
- within twelve months after the registration expired, an application for the registration of a trade mark is made by a person other than the person who was registered as the owner of the unrenewed trade mark;
the unrenewed trade mark is taken to be a registered trade mark for the purposes of the application.
PART 8
AMENDMENT AND CANCELLATION OF REGISTRATION
Division 1
Action by Registrar
Correction of Register
65.
The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.
Adaptation of classification
66. The Registrar may, in accordance with the Regulations, amend the Register, whether by making, removing or altering entries, for the purpose of adapting the designation of the goods or services in respect of which trade marks are registered to reflect any change that has occurred in the classification of goods or services for the purposes of this Act.
Amendment of particulars of trade mark entered in Register
67.—(1) Subject to Part II, the Registrar may, at the written request of the registered owner of a registered trade mark —
(a) amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the notice of the acceptance of the application for the registration of the trade mark was published under section 18;
- (b)
- amend any particulars entered in the Register relating to any goods or services in respect of which the trade mark is registered if the amendment does not have the effect of extending the rights that apart from the amendment the owner has under the registration; or
- (c)
- amend, or enter in the Register, any other particular in respect of the trademark if the amendment or entry does not have the effect of extending the rights that, apart from the amendment or entry, the owner has under the registration.
- (2)
- An appeal lies to the High Court from a decision of the Registrar under subsection (1).
Cancellation of registration
68.—(1) The Registrar shall cancel the registration of a trade mark in accordance with the Regulations if the registered owner asks in writing that the registration be cancelled. - (2)
- Before cancelling the registration of the trade mark, the Registrar shall notify in accordance with the Regulations —
- (a)
- any person recorded under Part 11 as claiming a right in
respect of, or an interest in, the trade mark; and (b)if— - (i)
- an application has been made to the Registrar for a record of the assignment or transmission of the trade mark to a person to be entered in the Register under section 93; and
- (ii)
- the assignment has not yet been recorded; the person to whom the trade mark has been assigned or transmitted.
Division 2
Action by court
Amendment to correct error or omission
69. The High Court may, on the application of an aggrieved person, order that the Register be rectified by — - (a)
- entering in the Register particulars that were wrongly omitted from it; or
- (b)
- correcting any error in an entry in the Register.
Amendment or cancellation on ground of contravention of condition etc.
70. The High Court may, on the application of an aggrieved person, order that the Register be rectified by — - (a)
- cancelling the registration of a trade mark; or
- (b)
- removing or amending any entry in the Register relating to the
trade mark; on the ground that a condition or limitation entered in the Register inrelation to the trade mark has been contravened.
Amendment or cancellation—loss or exclusive rights to use trade mark
71.—(1) If section 8 or 9 applies in relation to a registered trade mark, the High Court may, on the application of an aggrieved person, but subject to subsection (2) and section 73, order that the Register be rectified by — - (a)
- cancelling the registration of the trade mark; or
- (b)
- removing or amending any entry in the Register relating to the
trademark; having regard to the effect of section 8 or 9, on the right of the registered owner of the trade mark to use the trade mark, or any sign that is part of the trade mark, in relation to particular goods or services.
- (2)
- If section 8 or 9 applies in relation to a trade mark because the trade mark contains a sign that —
- (a)
- has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service; or
- (b)
- describes or is the name of —
- (i)
- an article or substance that was formerly exploited under a patent; or
- (ii)
- a service that was formerly provided as a patented
process; the High Court may decide not to make an order under subsection (1)and allow the trade mark to remain on the Register in respect of thearticle or substance or goods of the same description, or the service orservices of the same description, or subject to any condition or limitationthat the High Court may impose.
Amendment or cancellation—Other specified grounds
72.—(1) Subject to subsection (2) and section 73, the High Court may, on the application of an aggrieved person, order that the Register be rectified by — - (a)
- cancelling the registration of a trade mark;
- (b)
- removing or amending an entry wrongly made or remaining on the Register; or
- (c)
- entering any condition or limitation affecting the registration of a trade mark that ought to be entered.
- (2)
- An application, referred to in subsection (1), may be made on any of the following grounds —
- (a)
- any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5;
- (b)
- an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;
- (c)
- because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion for a reason other than one for which —
- (i)
- the application for the registration of the trade mark could have been rejected under section 27 or 28; or
- (ii)
- the registration of the trade mark could have been opposed under section 44;
- (d)
- the following circumstances apply —
- (i)
- the Registrar accepted the application for the registrationof the trade mark because he or she was satisfied, havingregard to the extent to which the trade mark wasinherently adapted to distinguish the goods or services ofthe applicant for registration from the goods or servicesof any other person and the intended use of the trademark, that the trade mark would distinguish those goods or services as being those of the applicant;
- (ii)
- the application for rectification is made at least ten years after the filing date; or
(iii) in the intervening period, the trade mark has not been used to an extent sufficient for it to distinguish, in fact, the goods or services of the registered owner from the goods or services of any other person;
- (e)
- the application is in respect of an entry in the Register and the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.
Rectification may not be granted in certain cases if registered owner not at fault etc.
73.—
(1) The High Court may decide not to grant an application for rectification made — - (a)
- under section 71 ; or
- (b)
- on the ground that the trade mark is liable to deceive or confuse; or
- (c)
- on the ground referred to in paragraph 72(2)(c);
if the registered owner of the trade mark satisfies the High Court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.
- (2)
- In making a decision under subsection (1), the High Court —
- (a)
- shall also take into account any matter that is prescribed; and
- (b)
- may take into account any other matter that it considers relevant.
Duties and powers of Registrar
74.—(1) A person applying to the High Court under this Division shall give notice of the application to the Registrar. - (2)
- Except for cases where the High Court directs the Registrar to appear, the Registrar may appear before the High Court and be heard at his or her discretion.
- (3)
- A person applying under this division shall give to the Registrar a copy of any order made by the High Court under this Division and the Registrar shall comply with the order.
Division 3
Amendment of certificate of registration
Amendment of certificate of registration
75. If the Registrar amends any particular entered in the Register .in respect of a trade mark, the Registrar may also amend the certificate of registration if he or she thinks it appropriate to do so.
PART 9
REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE
Application for removal of trade mark from Register etc.
76.—(1) A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register. - (2)
- An application pursuant to subsection (1) —
- (a)
- shall be as prescribed in the Regulations; and
- (b)
- may be made in respect of any or all of the goods or services or both in respect of which the trade mark may be, or is, registered,
- (3)
- An application shall not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in the High Court, but the person aggrieved may apply to the High Court for an order directing the Registrar to remove the trade mark from the Register.
- (4)
- An application under subsection (1) or (3) may be made if —
- (a)
- on the day on which the application for the registration of thetrade mark was filed, the applicant for registration had no intention in good faith —
- (i)
- to use the trade mark in Saint Lucia;
- (ii)
- to authorise the use of the trade mark in Saint Lucia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Saint Lucia;
in relation to the goods or services or both to which theapplication relates and the registered owner has not used thetrade mark in Saint Lucia or has not used the trade mark in good faith in Saint Lucia in relation to those goods or servicesor both at any time before the period of one month ending onthe day on which the application is filed; or
(b) the trade mark has remained registered for a continuous periodof three years ending one month before the day on which thenon-use application is filed, and, at no time during that period,the person who was then the registered owner —
- (i)
- used the trade mark in Saint Lucia; or
- (ii)
- used the trade mark in good faith in Saint Lucia;
in relation to the goods or services or both to which the application relates.
(5) If the right or interest on which a person relied to make an application under Subsection (1) or (3) to obtain the removal of a trade mark from the Register becomes vested in another person, the other person may, on giving notice of the relevant facts to the Registrar or the High Court as the case requires, be substituted for the first-mentioned person as the applicant.
Time for making application
77.—(1) Subject to subsection (2), an application for the removal of a trade mark from the Register may be made at any time after the filing date in respect of the application for the registration of the trade mark.
(2) An application on the ground referred to in section 76(4)(b) may not be made before a period of five years has passed from the filing date in respect of the application for the registration of the trade mark.
Referral to court
78. If —