SAINT VINCENT AND THE GRENADINES
TRADE MARKS ACT, 2003
[Act No. 46 of 2003 as amended by Act. No. 50 of 2004 - Unofficial Consolidation]
ARRANGEMENT OF SECTIONS SECTION
1. Short title and commencement
PART 1
PRELIMINARY
- Interpretation
- Authorised use of a trade mark
- Use of trade mark
PART 2
TRADE MARKS AND TRADE MARK RIGHTS
- Categories of trade marks which may be registered
- Rights accrued by registration of trade mark
- Nature of registered trade mark as property
- Power of registered owner to deal with trade mark
- Limitation of rights for similar trade marks registered by different persons
- Trade mark as a sign describing article
- Trade mark relating to article formerly manufactured under patent
- Powers of authorised user of registered trade mark
PART 3
APPLICATION FOR REGISTRATION
- Making of application
- Application by joint owners
- Claim for right priority
- Duties of the Registrar with respect to application of Trade Marks
- Right to appeal
- Deferment of acceptance
- Lapsing of application
- Revocation of acceptance
- Grounds for rejecting application
- Trade mark that cannot be represented graphically
- Trade mark not distinguishing applicants goods or services
- Trade mark scandalous or its use contrary to law
- Trade mark likely to deceive or cause confusion
- Identical trade marks
PART 4
DIVISIONAL APPLICATIONS
- Making of Divisional Application
- Divisional application for registration of part of trade mark
- Divisional application for registration of trade mark in respect of part of trade mark
- Divisional application for registration of trade mark in respect of some goods
PART 5
APPLICATION FOR REGISTRATION OF SERIES OF TRADE MARKS
32. Application for registration of series of trade marks
PART 6
OPPOSITION TO REGISTRATION
- 33.
- Opposition
- Circumstances in which opposition may proceed in name of a person other than a person who filed the notice
- Opposition proceedings
- Decision of the Registrar
PART 7
GROUNDS FOR OPPOSING REGISTRATION
- Opposition to registration of trade mark
- Application not intending to use trade mark
- Trade mark similar to trade mark that has acquired a reputation in Saint Vincent and the Grenadines
- Trade mark containing or consisting of a false geographical indication
- Application defective
PART 8
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK
AND OTHER DOCUMENTS
- Amendment of application for registration of trade mark
- Amendment before particulars of application are published
- Amendment after particulars of application have been published
- Amendment of other documents
- Appeal of decision on amendment
PART 9
REGISTRATION OF TRADE MARKS
- Duty of Registrar to register
- Registration - how effected
- Colours in registered trade marks
- Notification of registration
- Date and term of registration
- Ceasing of registration
- Disclaimers
- Request for renewal of registration
- Notice of renewal due
- Renewal before registration expires
- Failure to renew
- Renewal within twelve months after registration expires
- Status of unrenewed trade mark
PART 10
AMENDMENT AND CANCELLATION OF REGISTRATION – ACTION BY
REGISTRAR
- Correction of Register
- Adaptation of classification
- Amendment of particulars of trade mark entered in Register
- Cancellation of registration
PART 11
AMENDMENT AND CANCELLATION OF REGISTRATION - ACTION BY
COURT
- Amendment to correct error or omission
- Amendment or cancellation on ground of contravention of condition
- Amendment or cancellation - loss or exclusive rights to use trade mark
- Amendment or cancellation: other specified grounds
- Rectification may not be granted in certain cases if registered owner not at fault
- Duties and powers of Registrar
- Amendment of certificate of registration
PART 12
REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE
- Application for removal of trade mark from Register
- Time for making application
- Referral to court
- Notification of application
- Notice of opposition
- Removal of trade mark from the Register if application unopposed
- Trade mark restored to Register if notice of opposition filed within extended time
- Proceedings before Registrar
- Burden on opponent to establish use of trade mark
- Determination of opposed application
- Determination of opposed application, localised use of trade mark
- Register to comply with order of court
- Appeal
- Certificate of use of trade mark
PART 13
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
- Assignment of trade mark
- Applications for record to be made of assignment of trade mark whose registration is sought
- Recording of assignment of trade mark whose registration is sought
- Application for record of assignment of registered trade mark to be entered in Register
- Recording of assignment of registered trade mark
- Notice of application to be given to person recorded as claiming interest in trade mark
PART 14
VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN
RESPECT OF TRADE MARKS
- Object of Part
- Application to have claims to interest recorded
- Record of claims to interest
- Amendment and cancellation
- Record not proof of existence of right
- Application to have claims to interest recorded
- Record of claims to interest
99. Regulations for the amendment and cancellation of particulars
PART 16
IMPORTATION OF GOODS INFRINGING VINCENTIAN TRADE MARKS
PART 15 |
INFRINGEMENT OF TRADE MARKS |
100. | Infringement |
101. | Infringement of trade mark by breach of certain restrictions |
102. | Exceptions to infringement of trade mark |
103. | Goods to which a registered trade mark has been applied by or with consent of |
| registered owner |
104. | Prior use of indentical trade mark |
105. | Action for infringement to be brought before Court |
106. | Relief to be obtained from Magistrate’s Court |
107. | Special case where claimant not entitled to damages |
108. | Circumstances in which action may not be brought |
109. | Groundless threats of legal proceedings |
110. | Counterclaim by defendant in action on groundless threats |
- Notice of objection to importation
- Comptroller may seize good infringing trade mark
- Notice of seizure
- Forfeiture of goods
- Release of goods to owner where 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 suffered because of seizure
- Power to require information
PART 17 OFFENCES
- Falsfying, 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 offences
- False representations regarding trade marks
- False entries in Register
- Disobeying summons
- Refusing to give evidence
- Unauthorised persons not to act in trade marks matters
- False representation about Commerce and Intellectual Property Office
- Employee not to prepare documents
- Conduct of directors, servants and agents
PART 18 COLLECTIVE TRADE MARKS
- Application and definition
- Application for registration
- Limitation on rights given by registered collective trade mark
- Assignment etc. of collective trade mark
- Infrigement of collective trade mark
PART 19 CERTIFICATION TRADE MARKS
- Interpretation
- Rights given by registration of a trade 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
viii |
146. | Refusal to Register |
147. | Variation of rules |
148. | Rules to be available for inspection |
149. | Assignment of registered certification trade mark |
150. | Assignment of registered certification trade mark |
151. | Rectification Register by order of Court |
152. | Variation of rules by order of Court |
153. | Copy of order and rules |
| PART 20 |
| DEFENSIVE TRADE MARKS |
154. | Defensive trade marks |
155. | Application of Act |
156. | Additional grounds for rejecting application for registration or opposing |
| registration |
157. | Amendment or cancellation of registration by order of corut |
158. | Cancellation of registration by Registrar |
| PART 21 |
| JURISDICTION AND POWERS OF COURTS |
159. | Jurisdiction of the High Court |
160. | Transfer of proceedings |
161. | Appeals |
162. | Registrar may appear in appeals |
163. | Powers of Court |
| PART 22 |
| ADMINISTRATION |
164. | Registrar of Commerce and Intellectual Property Office |
165. | Registrar’s powers |
166. | Exercise of power by Registrar |
- Registrar to act as soon as possible
- Deputy Registrar
- Delegation of Registrar’s powers and functions
PART 23 THE REGISTER AND OFFICIAL DOCUMENTS
- The Register
- Register may be kept on computer
- Register
- Certified copies of documents
PART 24 MISCELLANEOUS
- Making and signing applications and filing of documents
- 175.
- Withdrawal of application etc.
- 176.
- Address for service
- 177.
- Change of name
- 178.
- Death of applicant etc.
- Description of registered trade mark
- Evidence of usage of trade mark
- Death of party to proceeding before Registrar
- 182.
- Cost awarded by Registrar
- 183.
- Security for costs
- 184.
- Fees
- 185.
- Extension of time
- 186.
- Publication of documents
- Use of trade mark for export trade
- 188.
- Passing off actions
- 189.
- Expenses
- 190.
- Regulations
- 191.
- Repeal
- 192.
- Transitional
SAINT VINCENT AND THE GRENADINES
ACT NO. 46 OF 2003
I ASSENT
DR.FREDERICK BALLENTYNE [L.S.] Governor-General 30th December, 2003
AN ACT to repeal and replace the Registration of United Kingdom Trade Marks Act (Cap. 113) and the Merchandise Marks Act (Cap. 106) and to provide for the promotion and protection of Trade Marks and for related matters.
[30th December, 2003]
BE IT ENACTED by the Queen’s Most Excellent Majesty, by and with the advice
and consent of the House of Assembly of Saint Vincent and the Grenadines and by the
authority of the same as follows:
1. This Act may be cited as the Trade Marks Act, 2003 and shall come
Short title and
commencement into force on a day to be appointed by the Governor-General by order published in the Gazette, and different days may be appointed for different provisions and different purposes.
PART I
PRELIMINARY
2. (1) In this Act
Interpretation
“applicant” means the person in whose name an application is for the time being proceeding;
“approved form” means a form approved by the Registrar of the Commerce and Intellectual Property;
“assignment” in relation to a trade mark means an assignment by act of the parties concerned;
“attorney at law” means a person duly admitted and entitled to practise law in Saint Vincent and the Grenadines;
“authorised user of trade mark” means a person who uses the trade mark under the control of the owner of the trade mark;
“authorised use of a trade mark” means the 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 ;
“Comptroller” means the Comptroller of Customs appointed under the Customs (Control and Management) Act 1999;
“Convention Country” means a country which is a party to the Paris Convention for the Protection of Industrial Property 1883;
“Court” means High Court;
“covering” includes packaging, frame, wrapper, container stopper, lid or cap;
“date of registration” in relation to the registration of a trade mark in respect of particular goods or services, means the day from which the registration of the trade marks in respect of those goods and services is to have had taken effect under section 52;
“designated owner” in relation to goods imported into Saint Vincent and the Grenadines means the person identified as the owner of the goods in the entry made pursuant to the Customs (Control and Management) Act 1999;
“existing registered trade mark” means a mark that was registered under Registration of United Kingdom Trade Marks Act Cap. 113 and whose registration is due to expire after the coming into force of this Act;
“file” means to lodge with the Commerce and Intellectual Property Office;
“filing date” means - (a)
- in relation to an application for the registration of a trade mark other than a divisional application, 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 section 27 was filed;
“geographical indication” in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods
indicating that the goods - (a)
- originated in that country, region or locality; and
- (b)
- have a quality, reputation or other characteristic attributable to their geographical origin;
“goods of a person” means goods dealt with or provided by the person in the course of trade;
“label” includes a band or ticket;
“limitations” means limitations of the exclusive right to use a trade mark given by the registration of the trade mark including limitations of that right as to - (a)
- mode of use; or
- (b)
- extent of use in Saint Vincent and the Grenadines;
- (c)
- use in relation to goods or services to be exported;
“Minister” means the Minister with responsibility for Intellectual Property;
“notified trade mark” means a trade mark in respect of a notice under section 1 is in force;
“objector” in relation to seized goods, means any person who has given a notice under section 33 that is in force;
“official journal” means a publication issued by or at the direction of the Commerce and Intellectual property Office containing the matters that are required by this Act to be advertised and included advertisement in the Gazette;
“old register” means the Register of Trade Marks kept under the Registration of United Kingdom Trade Marks Act;
“opponent” in relation to the registration of a trade mark, means - (a)
- the person who has filed a notice of opposition to the registration of the trade mark; or
- (b)
- where section 33 (5) applies, a person in whose name the notice of opposition is taken to have been filed;
“originate” in relation to wine, has the meaning given by section 2 (7) (1) (c) (ii);
“pending” in relation to an application for the registration of a trade mark, under this Act has the meaning given by section 2 (4);
No. 43 of 2003
“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 any one 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;
“priority date” has the meaning given by section 2 (6);
“Register” means the Register of Trade Marks kept under section 170;
“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 entered in the Register under this Act;
“Registrar” means the Registrar of Commerce and Intellectual Property designated under the Commerce and Intellectual Property Office Act;
“registration number” in relation to a registered trade mark, means the number given to it under section 49 (2);
“seized goods” means goods seized under section 112;
“services of a person” means services dealt with or provided in the course of trade by the person;
“sign” includes a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour or sound and any combination thereof;
“State” means the state of Saint Vincent and the Grenadines;
“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; or
- (b)
- devolution on the personal representative of a deceased person; or
- (c)
- any other kind of transfer except assignment;
“use of trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods, including secondhand goods;
“use of trade mark in relation to services” means the use of the trade mark in physical or in other relation to the services.
(2) 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)
- a trade mark is taken also to be applied in relation to goods or services if it is used
- (i)
- in an advertisement including an advertisement by electronic means;
- (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. - (3)
- 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.
- (4)
- (1) An application for the registration of a trade mark under this act is pending from the time it is filed until
- (a)
- it lapses, is withdrawn or is rejected;
- (b)
- if the Registrar refuses under section 36 to register the trade mark and there is no appeal against the decision, the end of the period allowed for the appeal; or
- (c)
- the Registrar refuses 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. - (2)
- An application for the registration of a trade mark under the Registration of United Kingdom Trade Marks Act Cap. 113 is pending if immediately before the commencement date of this Act the application had not been withdrawn;
- (5)
- The priority date for the registration of a trade mark in respect of particular goods or services is
- (a)
- if the trade mark is registered, the date of registration of the trade mark in respect of those goods or services; or
- (b)
- if the registration of the trade mark is being sought the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark was registered.
- (6)
- 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.
(7) (1) 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;
- (b)
- services are similar to other services
- (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; and
- (c)
- a wine is taken to have originated
- (i)
- in a foreign country or in the state only if the wine is made within the territory of that country or the state, as the case may be; and
- (ii)
- a wine is taken to have originated in a particular region or locality of a foreign country or of the
Authorised use of a trade mark
Use of trade mark
Categories of trade marks which may be
region or locality of a foreign country or of the state only if the wine is made from grapes grown in that region or locality.
3. (1) 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 subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(2) 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 section 4 (3), to use the trade mark in relation to the goods or services under the control of the owner.
(3) Subsections (1) and (2) do not limit the meaning of the expression “under the control of” under section 4 (3) and in the definition of “authorised use of a trade mark” under section 2.
4. (1) If the Registrar or the Court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the 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. - (2)
- A trade mark is capable of being represented graphically if it can be represented on paper.
- (3)
- 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.
PART 2
TRADE MARKS AND TRADE MARK RIGHTS
5. (1) A trade mark may be registered in accordance with this Act in respect of
registered
Rights accrued by registered trade mark
Nature of registered trade mark as property
Power of registered owner deal with trade mark