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Chapter: | 559
 | Title: | TRADE MARKS ORDINANCE | Gazette Number: | L.N. 31 of 2003 |
| Schedule: | 4 | Heading: | CERTIFICATION MARKS | Version Date: | 04/04/2003 |
[sections 62 & 92 & Schedule 5]
General
1. This Ordinance applies to certification marks subject to the provisions of this Schedule.
Signs of which a certification mark may consist
2. In relation to a certification 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 which are certified from those which are not.
Indication of geographical origin
3. (1) Notwithstanding section 11(1)(c) of this Ordinance (absolute grounds for refusal of registration), a certification 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 certification 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.
Nature of owner's trade or business
4. A certification mark shall not be registered if the owner carries on a trade or business involving the supply of goods or services of the kind certified.
Mark not to be misleading as to
character or significance
5. (1) A certification 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 certification mark.
(2) The Registrar may accordingly require that a sign in respect of which an application is made for registration as a certification mark include some indication that it is a certification 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 certification mark
6. (1) An applicant for registration of a certification mark must file with the Registrar regulations governing the use of the certification mark.
(2) The regulations must indicate-
- (a) the persons authorized to use the certification mark;
(b) the characteristics to be certified by the certification mark;
(c) how the certifying body is to test those characteristics and to supervise the use of the certification mark;
(d) the fees, if any, to be paid in connection with the use of the certification mark; and
(e) the procedures for resolving disputes.
Approval of regulations, etc.
7. (1) A certification mark shall not be registered unless-
- (a) the regulations governing its use comply with section 6(2) of this Schedule and any further requirements imposed by the rules; and
(b) the applicant is competent to certify the goods or services for which the certification mark is to be registered.
(3) An applicant for registration of a certification 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.
8. (1) The Registrar shall consider whether the requirements mentioned in section 7(1) and (2) of this Schedule are met.
(2) If it appears to the Registrar that the requirements mentioned in section 7(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 7(1) and (2) of this Schedule are met; or
(b) to file regulations amended so as to meet those requirements.
9. 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 7(1) and (2) of this Schedule.
Regulations to be open to inspection
10. The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.
Amendment of regulations
11. (1) An amendment of the regulations governing the use of a registered certification 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 the matters mentioned in section 7(1) and (2) of this Schedule.
Consent to assignment of registered
certification mark
12. The assignment or other transmission of a registered certification mark is not effective without the consent of the Registrar.
Infringement: rights of authorized users
13. The following provisions apply in relation to an authorized user of a registered certification 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).
14. In infringement proceedings brought by the owner of a registered certification 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
15. Apart from the grounds of revocation mentioned in section 52 of this Ordinance (revocation of registration), the registration of a certification mark may be revoked on the ground-
- (a) that the owner has begun to carry on such a trade or business as is mentioned in section 4 of this Schedule;
(b) that the manner in which the owner uses the certification mark or allows it to be used has caused it to become liable to mislead the public in the manner referred to in section 5(1) of this Schedule;
(c) that the owner has failed to observe, or to secure the observance of, the regulations governing the use of the certification mark;
(d) that an amendment of the regulations has been made so that the regulations-
- (i) no longer comply with section 6(2) of this Schedule and any further requirements imposed by the rules; or
(ii) are contrary to accepted principles of morality; or
Grounds for invalidity of registration
16. Apart from the grounds of invalidity mentioned in section 53 of this Ordinance (declaration of invalidity of registration), the registration of a certification mark may be declared invalid on the ground that the certification mark was registered in breach of section 4, 5(1) or 7(1) or (2) of this Schedule.