World Intellectual Property Organization

Barbados

Intellectual Property (Miscellaneous Provisions) Act, 2006-2 (adopted on 15-02-2006)

 

 


Supplement to Official Gazette No. 16 dated 23rd February, 2006

INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT, 2006 -2

Arrangement of Sections Section

  1. Short title.
  2. Amendment of enactments Stt out in the Schedule.
  3. Validation.
  4. Savings and transitional provisions.
    SCHEDULE

2 INTELLECTUAL PROPERTY (MlSCELLANEOUS PROVISIONS) ACT,2006-2

Amendment 2. The enactments set out in Column 1 of the Schedule are amended of enact

in the respects specified opposite thereto in Column 2 of the Schedule.

ments set out in the Schedule.

Validation. 3. (I) All functions performed if. pursuance of section 8 of the

Cap. 319. Trade Marks' Act by the Registrar during the period 6th August, 2001 to the date·ofthe commencement of this Act, both dates inclusive, and all matters done in relation thereto shall be deemed to have been lawfully and validly performed as if the amendment made to that section by this Act had been effected during that period.

(2) All opposition notices that were filed on the basis of section Act 2001· 8(1)(c) of the Ti'ade Marks Act prior to 6th August 200 1, shall be deemed

16. to have been lawfully and validly filed and unaffected by the Trade Marks (Amendment) Act, 2001.

Savings and transitional

4. (1) Notwithstanding paragraph 1 of the Schedule in relation

prOVISions.
Cap. 309A. to the Industrial Designs Act, where

Schedule.

(a) an application for the registration of an industrial design was

Act 2006-2. made prior to the commencement ofthe Intellectual Property (Miscellaneous Provisions) Act, 2006, the duration period that was applicable in respect of the registration and renewal of industrial designs before the commencement of the Intellectual Property (Miscellaneous Provisions) Act, 2006 shall apply to that industrial design; or

an industrial design was registered prior to the commencement

(b)

of the Intellectual Property (Miscellaneous Provisions) Act, 2006, the duration period in respect of the registration and renewal of that industrial design that was applicable before the commencement of the Intellectual Property (Miscellaneous Provisions) Act, 2006, shall continue to apply in relation to that design.

INTELLEeruAL PROPERTY (MISCELLANEOUS PROVISIONS)
Acr,2006-2

(2) Where an industrial design was registered prior to the commencement of the Intellectual Property (Miscellaneous Provisions) Act 2006-2. Act, 2006, the registration of that design may be renewed for the duration periods that were applicabk at the time of the registration.

(3)
The fees in respect of
(a)
an application for the registration of an industrial design;
(b)
the registration of an industrial design; or
(c)
the renewal of the registration of an industrial design,

where the application, registration or renewal was filed prior to the commencement of the Intellectual Property (Miscellaneous Provisions) Act, 2006, shall be those that were in force immediately before the commencement of the Intellectual Property (Miscellaneous Provisions) Act, 2006.

4 INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT, 2006-2

SCHEDULE

(Section 2)

Column 1 Column 2

AmendmentsEnactments

In section 26, delete subsection

L Industrial Designs Act,

(l ) and substitute tbe following: Cap.309A

"(1) Subject to sections 36, 40 and 41, the registration of an industrial design is valid for a period of 10 years from the date of the application for its registration; and a registration rnay be renewed for a period of 5 years upon payment of the prescribed fee.l1•

Insert the following new section

2. Patents Act, Cap. 314 immediately after section 55:

"Burden 55A. (1) Where the in of proof invention for which a patent is granted is a process for obtaining

tain

a new product, the same product

cases.

produced by a person other than the owner of the patent or a licensee shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.

(2) In detennining whether a party has discharged the burden imposed upon himby this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to tbe court that it would be unreasonable to do SQ, ",

5

INTEUEcruAL PROPERTY (MISCELLANEOUS PROVISIONS)

ACT,2006-2

SCHEDULE

Column 1 Column 2

Enactments Amendments

3. Trade Marks Act, Cap. 3 I 9 1. In section 2 in the definition of IImarku, insert the words "or certification mark" immediately after the words "collectivemarktl.

2 In section 4,

(a)
delete the marginal note and substitnte the following:
"Trade, service, collective and. certification !l1arks,lI;
(b)
insert the following new subsection immediately after subsection (3):

"(3A) A certification mark is a visible sign used or to be used in connection with goods or services for the purpose of distinguishing in the conrse of trade or business, goods or services which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so

certified. II; and

(c) in subsection (4) delete the word "(3)" appearing in the first line and snbstitute the word"(3A)".

6 lNTELLECTIJAL PROPERlY (MISCELLANEOUS PROVISIONS) ACT, 2006-2

SCHEDULE -Cont 'd

Column I Column 2

Enactments Amendmenis

3. Trade Marks Act, 3, In section 5, insert the following new Cap, 319 -Cont'd subsections innnediately after subsection (3):

"(4) In relation to a certification mark, the rights vested in the registered owner of the mark under this section are subject to the conditions governing the use of the mark.

(5) The registered owner of a certiiication mark may use that mark himself so long as themark is being used by persons permitted to use it under the conditions governing its use; and use by any of those persons is presumed, for purposes of

'this Act, to be use by the registered owner. n.

4, In section 8,

(a) in subsection (J) re-number paragraphs (d) to (g) as paragraphs

(e) to (h);

INTELLEcruAL PROPERTY (MISCELLANEOUS PROVISIONS)

7 ACT,2006-2

SCHEDULE -Cont'd

Column 1 Column 2

Amendments

Trade Marks Act, (b) in subsection (1), insert the following Cap. 319 -Cont'd new paragraph immediately after paragraph (c):

"(d) Subject to subsection (2), a mark that resembles, in such a way as to be likely to mislead the public, a business name registered under the

Cap. 317. Registration of Business Names Act and in use in Barbados by another person, if the applicant is aware or could not have reasonably been unaware of the earlier use; "; and

(c) in subsection (2), delete the words "paragraph (b), (c), (d) or (e)" .appearing in the second and third lines and substitute the words "paragraph (b), (c), (d), (e) or (j)".

5. In section 1 0, add the following new subsections:

"(6) When the application is for the registration of a certification mark, the application must

(a) designate the mark as a certification mark;

8 INTEILECfUAL PROPERTY (MISCEILANEOUS PROVISIONS)

ACT, 2006-2

SCHEDULE-Cont'd

Column 1 Column 2

Enactments Amendments

3. Trade Marks Act, (b) be accompanied by a copy

Cap.319-Cont'dof the rules which . must

(i) be signed by the applicant;

(it) contain the conditions governing the use of the mark as a certification mark; and

(m) be in compliance with the requirements of subsection (7).

(7)
The rules providing for the use of a· certification mark must specifY the
(a)
categories of persons authorised to use the mark;
(b)
characteristics to be certified by the mark;
(c)
conditions governing the use of the mark;
(d)
procedure by which the certifyiogbody is to test the characteristics to be certified by the mark;

9

INTELLECTIJAL PROPERTY (MISCELLANEOUS PROVISIONS)

ACf,2006-2

SCHEDULE-Cont'd

Column I Column 2

Enactments Amendments

3. Trade Marks Act, (e) manner in which the

Cap. 319 -Con/'d supervision of the use of
the mark will be
undertaken;

(f)
fees, if any, that must be paid in connection with the operation of the mark;
(g)
penalties or sanctions that are to be applied if the certification mark is used in contravention of any of the conditions governing its use; and
(h)
procedures for the resolution of disputes.".

6. In section 16(3),

(a)
delete the word "and" appearing at the end of paragraph (e);
(b)
delete the full stop appearing at the end of paragraph (f) and substitute the following:

II ; and!!;

10 INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT, 2006-2

SCHEDULE-Com'd

Column 1 Column 2
Enactments Amendments

3. Trade Marks Act, (c) add the following new paragrph Cap. 319 COl/t'd immediately after paragraph (I):

-

U(g) ifthemarkisace:tification mark, contain the rules governing the use of the mark as a certification mark that accompanied the application for its registration.n .

7. In section 20, add the following new subsection:

"(4) Acertificationmarkmust be recorded in.a sq>arate section of the register reserved for the registration of certification marks.'I,

8. In section 21,

(a)
delete the word "and" appearing at the end of paragraph (I);
(b)
delete the full-stop at the end of paragraph (g) and substitute the following:

INTEILEcruAL PROPERIY (MISCELLANEOUS PROVISIONS)
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SCHEDULE Cont'd

-

Column 1 Column 2

Enactments Amendments

3. Trade Marks Act, (c) add the following new paragraph Cap. 319 -Cont'd immeillately after paragraph ();):

"(h) ifthemarkis acerti:fication mark, the rules governing theuse of the mark as a certification mark that accompanied the application for its registration. II;

(d)
in subsection (3), insertthe words "or a certification mark" innnediately after the words IIcollective mark"; and
(e)
in subsection (4), insert the words "or a certification mark" innnediately after the words "collective markll.

9. Delete section 29 and substitute the following:

collective or

writing approve the transfer of the

marks.

certification mark ifthe transferee undertakes in writing to exercise effective control of the use of the collective or certification markin accordance with the conditions governing its use.

12 INI'ELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT,2006-2

Column 1

Enactments

  1. Trade Maries Act, Cap. 319 -Concl'd
  2. Industrial Designs Regulations, 1984

(S. l. 1984 No. 83)

SCHEDULE Cant 'd

-

Column 2

Amendments

(2) A transfer of the registration of a collective or certification mark is void until it is recorded in the register; and it may not be recorded unless the application to record the transfer is accompanied by the prescribed fee and a copy of the Director's approval of the transfer. II.

In Scbedule I, delete all tbe words appearing under tbe headings "On .

application for registration" and "On granting registration of an industrial design" along witb tbe monetary values opposite thereto and substitute the following:

"On application for registration:

For the first design in tbe application .. .... .... 200.00

For eacb additional design ...................... 100.00

On granting registration of an industrial design:

For the first design in tbe application .. ... .... 200.00

For eacb additional design .................... 100.00.".

13 ACT, 2006-2

INTELLECfUAL PROPERlY (MISCELLANEOUS PROVISIONS)

SCHEDULE-Cont'd

Column I Column 2

Enactments Amendments

5. Trade Marks 1. Insert the following immediately after Regulations, 1984 regulation 3 L

(S.I. 1984No. 85)

Certification Marks

31A. (1) When an application is "Certifica made for theregistratioll of a certification tion

mark, the Director shall, in addition to

ll1Ilfks",

the other examinations of the application that are required to be made by this Act and the regulations, examine the application and accompanying rules governing the use of the mark to ensure that it complies with subsections (6) and (7) of section 100ftheAct.

(2)
The rules accompanying the application must be examined to ensure that
(a)
origin, material, mode of manufacture, quality, accuracy or other common characteristics of the goods or services to which the certification mark is to be applied are set out in sufficient detail to identify the said common characteristics;
(b)
they contain the conditions and restrictions governing the use oftbemark;
(c)
they state that the owuer of the certification mark can

14 INTELLEcruAL PROPERTY (MISCELLANEOUS PROVISIONS) Aer,2006-2

SCHEDULE Cont'd

-

Column 1 Column 2

Enactments Amendments

5. Trade Marks (0 receive samples of . Regulations, 1984 any goods or inspect

(S.l. 1984No. 85) the delivery of any

-Cont'd of the services associated with the certification mark; or

(ii) inspect during normal business hours, the place of manufacture of the goods or the place where the services are performed,

to ensure that the common characteristics or common qualityis being maintained; and

(d) they contain some means by which the owner of the certification mark can prevent its use in contravention of the conditions governing its use.".

INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS)

ACf,2006-2

SCHEDULE -Cont'd

Column J Column 2

Enactments Amendments

5. Trade Maries 2. Delete regulation. 49 and substitute Regulations, 1984 the following:

(S.I. 1984 No. 85)
-Cont'd "Change of 49. (1) When a registered

conditions. owner of a collective or certification mark wishes to change the conditions governing the use of the collective or certification mark be shall submit an application in Form No. 18 together with the prescribed fee and a copy of the agreement or in the case of a certification mark, the rules, in which the cbanged conditions are set out.

(2)
The Director shall examine the agreement or the rules and tbe changed conditions mentioned in paragraph (I) and if he is satisfied that they comply with the Act and the regulations he shall cause a notice of the application to be published in the Official Gazelle.
(3)
The notice mentioned in paragraph (1) must

(a) specify the registration number of the collective or certification mark;

16 INTEllEcruAL PROPERTY (MISCELLANEOUS PROVISIONS)

ACT,2006-2

SCHEDULE Cont'd

-

Column 1 Column 2

Enactments Amendments

5. Trade Marks (b) indicate the goods and Regulations, 1984 services in respect of

(S.I. 1984 No. 85) which the collective or

Cont'd certification mark is registered;

-

set out the change in the

conditions governing the

use of the collective or

certification mark; and

(d)
set out the name and address of the registered owner, and, if necessary, his address for service.
(4)
The Director shall, upon recording a change in the

conditions governing the use of a collective or certification mark, nolilY the registered owner of the

mark.!!.

INTELLEcruAL PROPERTY (MISCELLANEOUS PROVISIONS) 17 ACT, 2006-2

SCHEDULE -Cont 'd

Column 1 Column 2
Enactments Amendments

5. Trade Marks 3. Delete regulations 52 and 53 and Regulations, 1984 substitute the following:

(S.1. 1984No. 85)

-Con/'d "Collective or certification mark approvaL

Recording transfer of collective or certification mark.

52. (1) For the purpose of obtainiug the approval of the Director to the transfer of a collective or certification mark under section 29 of theAct, the transferor or transferee of the collective or certification must submit to the Director an application in Form No. 21, together with the prescribed fee and evidence satisfactory to the Director that the transfer complies with the requirements of the Act.

(2) If the Director approves the transfer of a collective or certification mark, he shan notifY the applicant in Form No. 22.

53. (1) For the purpose of recording a transfer of a collective or certification mark, the transferee must submit to the Director an application in Form No. 23, together with the prescribed fee, the Director's approval of the transfer and evidence satisfactory to the Director that the collective or certificati6n mark has been transferred to the applicant.

18 INTELLEcruAL PROPERlY (MISCEllANEOUS PROVISIONS) ACT, 2006-2

SCHEDULE-Cont'd

Column 1 Column 2

Enactments Amendments

5. Trade Marks (2) If the Directoris satisfied that Regulations, 1984 the collective or c<rti:fication mark has

(S.1. 1984 No. 85) been transferred to the applicant, the

Cont'd Director shall record the transferee as the registered owner of the registration in accordance with the information contained in the application, and advise the applicant in writing of the action taken. II.

-

4. In Schedule I,

(a)
delete the words "On application to record a change of conditions governing use of a collective mark" appearing in the fifth and sixth lines thereof and substitnte thewords "On application to record a change of couditions governing the use of a collective or certification mark";
(b)
delete the words "On application for approval of the transfer of a collective mark" appearing in the penultimate line and substitute the words "On application for approval of the transfer of a collective or certification mark"; and
(c)
delete the words "For recording thc transfer of a collective mark" appearing in the last line and substitute the words "For recording the transfer ofa collective or certification mark".

INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) 19 ACT, 2006-2

SCHEDULE Cont'd

-

Column 2

Amendments

5. In Schedule II,

(aJ in Form No. I, insert the words ", certification" immediately after the word "service" appearing in the footnote;

(b)
in Form No.3, add the following footnote:
"2A. The applicant must indicate whether the application is in respect of a trade mark, service mark, collective mark or cert:l:ticationmark II;
(c)
in Fonn No.4, in the footnote numbered 2, insert the words 11, Certificationt1 immediately after the word "Service";
(d)
in Form No. 12, in the footnotenumbered I, insert the words ", Certification" word nService!l;
(e)
in Form No. 17, in the footnote numbered 2, insert the words It, Certification" immediately after tbe word nService1!;
(j)
in Form No. 18, insert the words "/ certification mark" immediately after the words "collective mark" wherever they appear in the form;

20 INTELLECTUAL PROPERTY (MISCELLANEOUS PROVISIONS) ACT, 2006-2

SCHEDULE -Cone/'d

Column 1 Column 2

Enactments Amendments

5. Trade Marks (g) in Form No. 21, insert the words "/ Regu/ations, 1984 certification mark:" 'immediately after

(S.l. 1984 No. 85) the words "colleetive mark" wherever -Concl'd they appear in the form;

(h)
in Form No. 22, insert the words "/ certification mark" immediately after the words "collective mark" wherever they appear in the form; and
(i)
in Form No. 23, insert the words "/ certification mark" immediately after the words "collective mark" wherever they appear in the form.

 

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