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Chapter: | 559
 | Title: | TRADE MARKS ORDINANCE | Gazette Number: | L.N. 31 of 2003 |
| Schedule: | 3 | Heading: | COLLECTIVE MARKS | Version Date: | 04/04/2003 |
[sections 61 & 92]
General
1. This Ordinance applies to collective marks subject to the provisions of this Schedule.
Signs of which a collective mark may consist
2. In relation to a collective mark, the reference in section 3(1) of this Ordinance (meaning of "trade mark") to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the owner of the collective mark from those of other undertakings.
Indication of geographical origin
3. (1) Notwithstanding section 11(1)(c) of this Ordinance (absolute grounds for refusal of registration), a collective mark which consists of a sign which may serve, in trade or business, to designate the geographical origin of goods or services may be registered.
(2) However, the owner of such a collective mark is not entitled to prohibit the use of the sign in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.
Mark not to be misleading as to
character or significance
4. (1) A collective mark shall not be registered if the public is liable to be misled as regards its character or significance, in particular, if it is likely to be taken to be something other than a collective mark.
(2) The Registrar may accordingly require that a sign in respect of which an application is made for registration as a collective mark include some indication that it is a collective mark.
(3) Notwithstanding section 46 of this Ordinance (amendment of application), an application may be amended so as to comply with any requirement imposed by the Registrar under subsection (2).
Regulations governing use of collective mark
5. (1) An applicant for registration of a collective mark must file with the Registrar regulations governing the use of the collective mark.
(2) The regulations must specify-
- (a) the persons authorized to use the collective mark;
(b) the conditions of membership of the association; and
(c) where they exist, the conditions of use of the collective mark, including any sanctions against misuse.
Approval of regulations by Registrar
6. (1) A collective mark shall not be registered unless the regulations governing its use comply with section 5(2) of this Schedule and any further requirements imposed by the rules.
(2) A collective mark shall not be registered if the regulations governing its use are contrary to accepted principles of morality.
(3) An applicant for registration of a collective mark must file the regulations and pay the prescribed fee before the end of the prescribed period after the date of the application for registration.
(4) If an applicant fails to comply with subsection (3), the application shall be deemed to be withdrawn.
7. (1) The Registrar shall consider whether the requirements mentioned in section 6(1) and (2) of this Schedule are met.
(2) If it appears to the Registrar that the requirements mentioned in section 6(1) and (2) of this Schedule are not met, he shall inform the applicant and give him an opportunity to make representations or to file amended regulations within such period as the Registrar may specify.
(3) The Registrar shall refuse the application if the applicant fails to respond before the end of the specified period or fails before the end of that period-
- (a) to satisfy the Registrar that the requirements mentioned in section 6(1) and (2) of this Schedule are met; or
(b) to file regulations amended so as to meet those requirements.
8. In addition to any other grounds on which the registration may be opposed, notice of opposition may be given relating to any of the matters mentioned in section 6(1) and (2) of this Schedule.
Regulations to be open to inspection
9. The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.
Amendment of regulations
10. (1) An amendment of the regulations governing the use of a registered collective mark is not effective until the amended regulations are filed and are accepted by the Registrar.
(2) Before accepting any amended regulations the Registrar may, in any case where it appears to him expedient to do so, cause or require notice of the amendment to be published in the official journal.
(3) If notice of the amendment is published in the official journal, notice of opposition may be given relating to any of the matters mentioned in section 6(1) and (2) of this Schedule.
Infringement: rights of authorized users
11. The following provisions apply in relation to an authorized user of a registered collective mark as in relation to a licensee of a registered trade mark-
- (a) section 18(6) of this Ordinance (infringement of registered trade mark); and
(b) section 25(3) of this Ordinance (order for disposal).
12. (1) The following provisions, which correspond to the provisions of section 35 of this Ordinance (rights of licensees generally), have effect as regards the rights of an authorized user in relation to infringement of a registered collective mark.
(2) An authorized user is entitled, subject to any agreement to the contrary between him and the owner of the registered collective mark, to call on the owner to take infringement proceedings in respect of any matter which affects his interests.
(3) If the owner-
- (a) refuses to do so; or
(b) fails to do so within 1 month after being called upon to do so,
(4) Where infringement proceedings are brought by virtue of this section, the authorized user may not, without the leave of the court, proceed with the action unless the owner is either joined as a plaintiff or added as a defendant.
(5) Nothing in subsection (4) affects the granting of interlocutory relief on an application by an authorized user alone.
(6) A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(7) In infringement proceedings brought by the owner of a registered collective mark, any loss suffered or likely to be suffered by authorized users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.
Grounds for revocation of registration
13. Apart from the grounds of revocation mentioned in section 52 of this Ordinance (revocation of registration), the registration of a collective mark may be revoked on the ground-
- (a) that the manner in which the owner uses the collective mark or allows it to be used has caused it to become liable to mislead the public in the manner referred to in section 4(1) of this Schedule;
(b) that the owner has failed to observe, or to secure the observance of, the regulations governing the use of the collective mark; or
(c) that an amendment of the regulations has been made so that the regulations-
- (i) no longer comply with section 5(2) of this Schedule and any further requirements imposed by the rules; or
(ii) are contrary to accepted principles of morality.
Grounds for invalidity of registration
14. Apart from the grounds of invalidity mentioned in section 53 of this Ordinance (declaration of invalidity of registration), the registration of a collective mark may be declared invalid on the ground that the collective mark was registered in breach of section 4(1) or 6(1) or (2) of this Schedule.