CHAPTER 322
TRADE MARKS
TRADE MARKS RULES
(SECTION 56(1))
[Commencement 23rd October, 1948]
PART I PRELIMINARY
- These Rules may be cited as the Trade Marks Rules.
- In the construction of these Rules any wordsherein used the meaning of which is defined by the said Act or the Interpretation Act, shall have the meanings thereby assigned to them respectively and —
“agent” means an agent duly authorised to the satisfaction of the Registrar;
“declaration” means a declaration under the Oaths Act;
“office” means the office for the time being of the Registrar General, Nassau, Bahamas. - Any fee required to be paid in connection with applications, registration and other matters under the Actshall be paid before or at the time of the doing of thematter in respect of which they are to be paid.
- The forms herein referred to are the forms contained in the First Schedule to these Rules and such forms shall be used in all cases to which they areapplicable, and shall be modified as directed by theRegistrar to meet other cases.
- For the purposes of trade marks registration and of these Rules goods are classified in the manner appearing in the Second Schedule hereto.
- G.N.
- 175/1948
- G.N.
- 101/1953
- G.N.
- 258/1953
- G.N.
- 129/1954
- G.N.
- 182/1960
- S.I.
- 50/1967
- S.I.
- 4/1982
- S.I.
- 71/1983
- S.I.
- 72/1983 5 of 1987
Title.
Interpretation.
Ch. 2.
Ch. 60.
Time for payment of fees.
S.I. 71/1983, r. 2.
Forms. First Schedule.
S.I. 71/1983, r. 3.
Classification of goods.
S.I. 71/1983, r. 3.
Second Schedule.
Documents to be on foolscap paper.
Sending documents through the post.
Address.
If any doubt arises as to what class any particulardescription of goods belongs, the doubt shall be determined by the Registrar. - Subject to any other directions that may be given by the Registrar, all applications, notices, counter-statements, papers having representations affixed, or other documents required by the said Act or by these Rules to be left with or sent to the Registrar shall be upon foolscappaper of a size approximately thirteen inches by eight inches, and shall have on the left hand part thereof amargin of not less than one inch and a half.
- Any application, statement, notice, or other document authorised or required to be left, made or given at the office, or to or with the Registrar, or with or to any other person may be sent through the post by a prepaid or official-paid letter; any document so sent shall be deemed to have been delivered at the time when the letter containing the same would be delivered in the ordinary course of post, and in proving such service or sending, itshall be sufficient to prove that the letter was properlyaddressed and put into the post. A letter addressed to a registered proprietor of a trade mark at his address as it appears on the register, or address for service, or to anyapplicant for or person opposing the registration of a trademark at the address appearing in the application, or noticeof opposition or given for service as hereinafter provided shall be deemed to be sufficiently addressed.
- Where any person is by the said Act or theseRules bound to furnish the Registrar with an address thefollowing provisions shall apply —
The address given shall in all cases be as full aspossible for the purpose of enabling any person easily to find the place of business of the person whose address is given.
When a person does not reside in a town with streets, the Registrar may require the address to include all indications which he thinks necessary for such purpose sofar as it can be attained.
When an applicant resides in a town where there are streets, the address given shall include the name of thestreet, and the number in the street or name of premises, if any. - Every applicant for the registration of any trade mark and every opponent to such registration, and every agent who does not reside or carry on business in TheBahamas shall, if so required, give an address for service in The Bahamas, and such address may be treated as the actual address of such applicant, opponent, or agent for allpurposes connected with such application for registration or the opposition thereto.
- The Registrar may require the proprietor of aregistered trade mark who does not reside or carry on business within The Bahamas to give an address for service within The Bahamas, and such address may be treated asthe actual address of the proprietor for all purposesconnected with such trade mark.
- An application for registration and an oppositionto registration and all other communications between an applicant, and opponent and the Registrar, or theMinister, and between the proprietor of a registered trade mark and the Registrar, or the Minister, or any other person, may be made by or through an agent. Any such applicant, opponent, or proprietor may appoint an agent torepresent him in the matter of the trade mark by signing and sending to the Registrar an authority in writing to that effect (Form No. 1.) or in such other form as the Registrarmay deem sufficient. In case any proprietor of a registeredtrade mark shall appoint such an agent, service upon such agent of any document relating to such trade mark shall be deemed to be service upon the person so appointing him,and all communications directed to be made to such person in respect of such trade mark may be addressed to such agent.
The Registrar shall not be bound to recognise as suchagent any person who has been convicted criminally or struck off the roll of counsel and attorneys or who is anundischarged bankrupt.
PART II RESTRICTION ON REGISTRATION
11. The Registrar may refuse to accept any application upon which the following appear —
Address within The Bahamas.
Agents.
Form 1.
Registrable trade marks.
Features prohibited.
S.I. 50/1967.
Use of arms of foreign state. - (a)
- the words “Patent”, “Patented” or “By RoyalLetters Patent”, “Registered”, “Registered Design”, “Copyright”, “Entered at Stationer’s Hall”, “To counterfeit this is forgery”, or wordsto like effect;
- (b)
- representations of Their Majesties or anymember of the Royal Family.
12. The following features may not appear on trade marks the registration of which is applied for — - (a)
- representations of the Royal arms, crests, armorial bearings or insignia or devices so nearlyresembling any of the foregoing as to be likely to be mistaken for them;
- (b)
- the word “Royal” or any other words, letters or devices if used in such a manner as to be likely to lead persons to think that the applicant eitherhas, or recently has had, Royal patronage orauthorization whether or not such be the case;
- (c)
- representations of the British Royal crowns orthe British national flags; and
- (d)
- any national, territorial or civil flag, arms crest or emblem, any official control or guarantee sign, stamp or hallmark or any armorial bearing, flag or other emblem, abbreviation or title of any international intergovernmental organisation to which one or more convention countries belong, notice of objection to the use of which as a commercial device has been received pursuant to the provisions of any international convention relating to industrial property to which TheBahamas adheres and publicly given by the Registrar General:
Provided that, in the case of a trade mark containing any official control or guarantee sign, stamp or hallmark, this prohibition shall only apply in cases where the mark is intended to be used on goods of the same or a similar kind to those in respect of which such official control or guarantee sign, stamp or hallmark is already used. - Where representations of the arms of a foreign state or place appear on a mark the Registrar may call forsuch justification as he may deem necessary for their use.
- Where a representation of the arms or emblems, of any city, borough, town, or place, society, bodycorporate, or institution appears on a mark, the applicant shall, if so required, furnish the Registrar with a consentfrom such official as the Registrar may consider entitled to give consent to the use of such arms or emblems.
- Where the names or representations of living persons appear on a trade mark, the Registrar shall if he so require be furnished with consents from such persons before proceeding to register the mark. In the case of persons recently dead the Registrar may call for consents from their legal representatives before proceeding with registration of a trade mark on which their names orrepresentations appear.
- Where a name or a description of any goods appears on a trade mark the Registrar may refuse to register such mark in respect of any goods other than thegoods so named or described.
Where the name or description of any goods appears on a trade mark which name or description in use varies the Registrar may permit the registration of the mark with the name or description upon it for goods other than those named or described, the applicant stating in his application that the name or description varies.
PART III APPLICATION FOR REGISTRATION
17. If application for registration of a trade mark be made by a firm or partnership, it may be signed in the name or for and on behalf of the firm or partnership by any one or more members thereof.
If the application be made by a body corporate it may be signed by a director or by the secretary or other principal officer of such body corporate.
Any application may be signed by an agent.
18. Every application claiming priority under section 63 of the Industrial Property Act, or any enactmentamending or replacing that Act, by reason of anapplication to register the trade mark made or deemed tohave been made in a convention country as defined in
Use of arms of city, etc.
Use of names, etc. of living persons.
Where name or description of goods appears.
Application for registration.
Convention applications.
S.I. 50/1967.
Ch. 324.
Acknowledgement of application.
Representation of the mark to be affixed. Form 2.
Mark to be mounted.
Four copies of the mark should be sent.
Form 3.
Signature.
Representations of marks to be durable.
Applications of the same mark in different classes.
section 62 of that Act, shall state the name of that convention country and the date of that applicationtherein, and the applicant shall furnish a certificate by the registrar or other registering authority of that countryor shall otherwise verify the application made or deemed to have been made therein to the satisfaction of the Registrar. - On or after the receipt of the application the Registrar shall furnish the applicant with an acknowledgement thereof.
- Every application for registration of a trademark shall contain a representation of the mark affixed to it in the square which Form No. 2 contains for that purpose.
- Where the representation in the preceding rule mentioned exceeds such square in size the representation shall be mounted on linen, tracing cloth or other material that the Registrar may consider suitable. Part of the mounting shall be affixed in the space aforesaid and the rest may be folded over.
- There shall be sent with every application for registration of a trade mark four additional representationsof such mark on Form No. 3 exactly corresponding to that affixed to the application (Form No. 2) and noted with all such particulars as may from time to time be required by the Registrar.
- The particulars above mentioned shall, if required, be signed by the applicant or his agent.
- All representations of marks must be of a durable nature, but the applicant may in case of need supply in place of representation of the Form No. 3, halfsheets of strong foolscap of the size aforesaid with therepresentations affixed thereon and noted as aforesaid.
- Applications for the registration of the samemark in different classes shall be treated as separate anddistinct applications, and in all cases in which a trade mark is registered under the same official number for goods in more than one class, the registration shall henceforth forthe purpose of fees and otherwise be deemed to have been made on separate and distinct applications in respect of the goods included in each class.
- The Registrar, if dissatisfied with any representation of a mark, may at any time require another representation satisfactory to him to be substituted before proceeding with the application.
- Where a drawing or other representation orspecimen cannot be given in manner aforesaid, a specimenor copy of the trade mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.
- The Registrar may also, in exceptional cases, deposit in the office a specimen or copy of any trade mark which cannot conveniently be shown by a representation, andmay refer thereto in the register in such manner as he may think fit.
- When application is made for the registration ofa series of trade marks under section 24 of the said Act, a representation of each trade mark of the series shall be affixed, as aforesaid, to the application upon Form No. 2 and to each of the accompanying Forms No. 3.
- When a trade mark contains a word or words in other than Roman characters, there shall be indorsed on the application in Form No. 2 and on each of the accompanying representations in Form No. 3 a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such indorsement shall be signed by the applicant or his agent.
Where a trade mark contains a word or words in a language other than English, the Registrar may ask for anexact translation thereof, and if he so requires such translation shall be endorsed and signed as aforesaid.
PART IV PROCEDURE ON RECEIPT OF APPLICATION
30. Subject to the provisions for special applicationsunder paragraph (e) of section 7 of the said Act, upon receipt of an application for registration the Registrar shall cause a search to be made amongst the registered marksand pending applications for the purpose of ascertainingwhether there are on record any marks for the same goodsor description of goods identical with the mark applied for or so nearly resembling it as to be calculated to deceive.
Request for another representation.
A copy of the mark may be sent in full size.
Applications for a series of trade marks.
Forms 2 and 3.
Translation.
Search of registered marks.
Acceptance by the Registrar.
Statement of objections.
Objections to amendments.
Decision of Registrar at hearing.
Form 4.
Disclaimer.
Application under s. 7(e) of the Act.
Form 5.
Search of registered marks. - If after such search and a consideration of the application the Registrar thinks there is no objection to the mark being registered, he may accept it absolutely or subject to conditions, amendments, and modifications which he shall communicate to the applicant in writing.
- If after such search and consideration of the application any objections appear, a statement of those objections shall be sent to the applicant in writing, and unless within one month the applicant applies for ahearing, he shall be deemed to have withdrawn his application.
- If the Registrar accepts an application subject to any conditions, amendments, or modifications, and the applicant objects to such conditions, amendments, ormodifications, he shall within one month from the date of the communication notifying such acceptance apply for a hearing, and if he does not do so he shall be deemed to have withdrawn his application. If the applicant does notobject to such conditions, amendments, or modifications, he shall forthwith notify the Registrar in writing.
- The decision of the Registrar at such hearing as aforesaid shall be communicated to the applicant inwriting, and if he objects to such decision, he may within one month apply upon Form No. 4, requiring the Registrar to state in writing the grounds of his decision and the materials used by him in arriving at the same.
- Upon receipt of such form the Registrar shall send tothe applicant such statement as aforesaid in writing, and the date when such statement is sent shall be deemed to be the date of the Registrar’s decision for the purpose ofappeal.
- The Registrar may call on an applicant to insert inhis application such disclaimer as the Registrar may think fit, in order that the public generally may understand whatthe applicant’s rights, if his mark is registered, will be.
- An application to register a name, signature or word or words under paragraph (e) of section 7 of the saidAct shall be made on the Form No. 5 and not otherwise.
- Upon receipt of such an application the Registrarshall cause a search to be made amongst the registered
marks and pending applications for the purpose ofascertaining whether there are on record any marks forthe same goods or description of goods identical with themark applied for or so nearly resembling it as to be calculated to deceive. - If after such search the Registrar thinks there are no such marks, he shall notify the applicant accordingly,but if after such search any such marks appear, he shall notify to the applicant the numbers of those marks and theGazette (if any) in which they have been advertised.
- Within one month from the receipt of such notification the applicant shall send to the Registrar inwriting a case in duplicate stating at length the grounds upon which he relies in support of his application, and whether he desires to be heard by the court. If he fails to doso his application shall be deemed to be withdrawn.
- If the applicant desires to obtain an order of thecourt he shall within one month from sending to the Registrar his case as aforesaid bring the matter before the court by motion, and if he does not do so he shall bedeemed to have withdrawn his application.
- If the application be accepted by the court it shall be advertised and proceedings thereafter shall be had in respect of it as if it had been accepted by the Registrar in the ordinary course.
- Where any association or person desires to register a mark under section 58 of the said Act they shallapply to the Registrar in writing upon the Form No. 6.
- Such application shall be in duplicate and shall be accompanied by six copies of the mark applied for. Ifsuch application is permitted to proceed the mark shall be advertised and the application shall be treated in all respects as if it were an ordinary application, and it shall be open to opposition in the same way and all such proceedings shall be had thereon as if it were an application under section 10 of the said Act.
- Every application when accepted shall be advertised by the Registrar in the Gazette during such times and in such manner as the Registrar may direct.
Notification of no similar mark.
Support of application.
Order of the court.
Acceptance by the court.
Special trade under s. 58.
Form 6.
Copies of application.
Advertisement of application.
Specimen of trade mark on exhibition.
Wood block of trade mark for advertising.
Wood block of each trade mark in a series may have to be given.
Advertisements under section 12(9).
Opposition to registration.
Grounds of opposition. Form 7. - If no representation of the trade mark be insertedin connection with the advertisement of an application, the Registrar shall refer in such advertisement to the place orplaces where a specimen or representation of the trade mark is deposited for exhibition.
- For the purposes of such advertisement the applicant may be required to furnish a wood block orelectrotype (or more than one, if necessary) of the trade mark, of such dimensions as may from time to time bedirected by the Registrar, or such other information or means of advertising the trade mark as may be required by the Registrar; and the Registrar, if dissatisfied with the block or electrotype furnished by the applicant or his agent, may require a fresh block or electrotype beforeproceeding with the advertisement.
- When an application relates to a series of trademarks differing from one another in respect of the particulars mentioned in section 24 of the said Act, the applicant may be required to furnish a wood block orelectrotype (or more than one, if necessary) of any or of each of the trade marks constituting the series; or the Registrar may, if he thinks fit, insert with the advertisement of the application a statement of the manner in respect of which the several trade marks differ from oneanother.
- Advertisements under section 12(9) of the said Act shall, mutatis mutandis, be made in the same manner as advertisements relating to an application for registration.
- Any person may within one month from the dateof any advertisement in the Gazette of an application forregistration of a trade mark give notice in writing at the office of opposition to the registration.
- Such notice shall be in Form No. 7, and shall contain a statement of the grounds upon which theopponent objects to the registration. If registration isopposed on the ground that the mark resembles marksalready on the register, the numbers of such marks and thenumbers of the Gazette in which they have been advertisedshall be set out. Such notice shall be accompanied by a duplicate which the Registrar will forthwith send to theapplicant.
- Within one month from the receipt of such duplicate the applicant shall send to the Registrar acounter-statement (Form No. 8) in writing setting out the grounds on which he relies as supporting his application. The applicant shall also set out what facts, if any, allegedin the notice of opposition he admits. Such counter-statement shall be accompanied by a duplicate in writing.
- Upon receipt of such counter-statement and duplicate the Registrar will forthwith send the duplicate tothe opponent and within one month from the receipt of the duplicate the opponent shall leave at the office such evidence by way of declaration as he may desire to adduce in support of his opposition and shall deliver to the applicant copies thereof.
- If an opponent leaves no evidence, he shall be deemed to have abandoned his opposition, but if he doesthen within one month from the receipt of the copies of declarations, the applicant shall leave at the office such evidence by way of declaration as he desires to adduce insupport of his application and shall deliver to the opponent copies thereof.
- Within fourteen days from the receipt by the opponent of the copies of the applicant’s declarations the opponent may leave at the office evidence by declaration inreply, and shall deliver to the applicant copies thereof. Such evidence shall be confined to matters strictly in reply.
- In any proceedings before the Registrar, he mayat any time, if he thinks fit, give leave to either the applicantor the opponent to file any evidence upon such terms as tocosts or otherwise as the Registrar may think fit.
- Where there are exhibits to declarations filed in an opposition, copies or impressions of such exhibits shallbe sent to the other party on his request, or, if such copies or impressions cannot conveniently be furnished, the originals shall be sent to the office, so that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
- Upon completion of the evidence the Registrar shall give notice to the parties of a date when he will hear
Support of application.
Form 8.
Support of opposition.
Additional support of application.
Additional support of opposition.
Further evidence.
Exhibits to declaration in opposition.
Notice of hearing.
Form 9.
Extension of time.
Security for costs.
Non-completion.
Form 10.
Entry on the register.
Form 11.
the arguments in the case. Such appointment shall be for adate at least fourteen days after the date of the notice,unless the parties consent to a shorter notice. Within sevendays from the receipt of such notice both parties file Form No. 9. A party who receives such notice and who does not, within seven days from the receipt thereof, give notice onForm No. 9 that he intends to appear, may be treated as not desiring to be heard and the Registrar may act accordingly. - Where in opposition proceedings any extension of time is granted to any party, the Registrar may thereafter, if he thinks fit, without giving the said party a hearing, grant any reasonable extension of time to the otherparty in which to take any subsequent step.
- Where a party giving notice of opposition neitherresides nor carries on business in The Bahamas, the Registrar may call upon him to give a security in such formas the Registrar may deem sufficient for the costs of theproceedings before the Registrar, for such amount as tothe Registrar may seem fit, and at any stage in such opposition may require further security to be given at any time before giving his decision in the case.
- Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of theapplicant, the Registrar shall give notice to the applicant in writing on Form No. 10 of such non-completion, and if the applicant has an agent, shall send a duplicate of such notice to such agent. If after fourteen days from the date when such notice was sent the registration is notcompleted, the application shall be deemed to be abandoned, but the Registrar may with such notice, wherethe applicant lives at a distance, give further time after such fourteen days for the completion of such application.
- As soon as may be after the expiration of one month from the date of the advertisement in the Gazette of any application, the Registrar shall, subject to any opposition and the determination thereof, and uponpayment of the prescribed fee, on Form No. 11 enter the trade mark on the register. The entry of a trade mark on the register shall give the date of the registration, the goods
in respect of which it is registered, and all particulars named in section 3 of the Act, together with particulars of the trade, business, profession, or occupation, if any, of the proprietor, and such other particulars as the Registrar may deem necessary. - Where a mark is registered as associated with any other mark or marks the Registrar shall note upon the register in connection with such mark the numbers of the marks with which it is associated and shall also note upon the register in connection with each of the associated marks the number of the newly registered mark as being an associated mark with each of them.
- In case of the death of any applicant for a trade mark after the date of his application, and before the trademark applied for has been entered on the register, theRegistrar, after the expiration of the prescribed period of advertisement, may, on being satisfied of the applicant’s death, enter on the register, in place of the name of such deceased applicant, the name, address, and description of the person owning the goodwill of the business, on such ownership being proved to the satisfaction of the Registrar.
- Upon the registration of a trade mark the Registrar shall issue to the applicant a certificate in the Form No. 12.
PART V RENEWAL
65. At any time not less than two months and not more than three months before the expiration of the last registration of a trade mark any person may leave at the office a fee for the renewal of the registration of the markupon Form No. 13. Such person shall indorse upon such form his name and address, and before taking any further step the Registrar may require such person to furnish within five days an authority to pay such fee signed by theregistered proprietor, and if such person does not furnish such authority, may return such fee and treat it as not received.
Cross-references in the register.
Death of applicant.
Certificate of registration. Form 12.
Renewal.
Form 13.