Trade Marks Act , 1996

79.—(1) Unless otherwise provided by rules of court, within the period of three months from the date of a decision of the Controller under this Act, an appeal shall lie from the decision to the Court.

(2) On an appeal under this section—

(a) the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court: and

(b) the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

(3) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified point of law.

80 No award of costs to or against the Controller.

80.—In any proceedings before the Courts under this Act, the Controller shall not be awarded or be ordered to pay costs.

Rules and Fees

81 Power of Minister to make rules.

81.—(1) The Minister may make rules—

(a) for the purposes of any provision of this Act authorising the making of rules with respect to any matter; and

(b) for prescribing anything authorised or required by any provision of this Act to be prescribed,

and generally for regulating practice and procedure under this Act.

(2) Without prejudice to the generality of subsection (1), provision may, in particular, be made by rules under this section—

(a) as to the manner of filing of applications and other documents;

(b) requiring and regulating the translation of documents and the filing and authentication of any translation;

(c) as to the service of documents;

(d) authorising the rectification of irregularities of procedure; and

(e) prescribing time limits for anything required to be done in connection with any proceeding under this Act, and providing for the extension of any such limit (whether or not it has already expired).

82 Fees.

82.—(1) There shall be charged by the Controller and paid in respect of applications and registration and other matters under this Act, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance.

(2) Provision may be made by rules to enable the payment of a single fee in respect of two or more matters.

(3) All fees charged by the Controller under this section shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

(4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.

PART V Trade Mark Agents

83 Authorised agent may act.

83.—(1) Subject to rules made under section 90, whenever, under this Act, any act has to be done by or to any person in connection with the registration of a trade mark or any procedure relating to a registered trade mark, the act may be done by or to an agent—

(a) who is authorised by that person orally or in writing; and

(b) who is a registered trade mark agent.

(2) A person duly authorised by another person under subsection (1) to act as his registered trade mark agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and the other person, cease to act as registered trade mark agent for the other person.

84 Register of Trade Mark Agents.

84.—The Register which, immediately before the commencement of this section, was known as the Register of Trade Mark Agents shall continue to be known as such and to be maintained by the Controller; and in this Part—

(a) “the Register” means the Register of Trade Mark Agents;

(b) “registered trade mark agent” means a person whose name is entered in the Register; and

(c) “registration”, in relation to a person who is or has been a registered trade mark agent, means the entry of that person's name in the Register.

85 Business to be carried on only by registered trade mark agents &c.

85.—(1) Subject to the provisions of this section, an individual who is not a registered trade mark agent shall not—

(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent.

(2) A partnership shall not—

(a) carry on a business under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out or permit itself to be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

(3) A body corporate shall not—

(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent,

unless all the directors of the body corporate and any manager who is not also a director are registered trade mark agents or the body satisfies such conditions as may be prescribed for the purposes of this section.

(4) With a view to the fulfilment by the Government on behalf of the State of any international agreement to which the State is a party, the Minister may permit any person who is not a registered trade mark agent but who is a citizen of a state which is also a party to that international agreement, upon application made by that person, to act on behalf of others in relation to trade marks subject to any conditions that the Minister considers appropriate.

(5) The legal personal representative of a deceased registered trade mark agent may carry on the business or practice of the deceased agent for a period not exceeding three years from the agent's death, or for such further period (if any) as the Court allows if the personal representative—

(a) is authorised by the Court to manage the business or practice; or

(b) employs another person who is so authorised to manage the business or practice on behalf of the personal representative.

(6) Any person who contravenes any provision of this section shall be liable on summary conviction to a fine not exceeding £500 in the case of a first offence and, in the case of a second or subsequent offence, £1,000; and, notwithstanding section 10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section may be commenced at any time within twelve months from the date of the offence.

(7) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking such part in proceedings under this Act as has heretofore been taken by solicitors or barristers in connection with a trade mark or any procedure relating to a trade mark or the registration thereof.

(8) A registered trade mark agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by the agent of—

(a) a deed assigning the property in a trade mark application or trade mark; or

(b) any document (not being a deed) for use in proceedings under this Act before the Controller or the Court.

(9) No offence is committed under any enactment restricting the use of certain expressions in reference to any person not qualified to act as a solicitor by use of the term “Community Trade Mark Attorney” in reference to a Registered Trade Mark Agent.

86 Entitlement to be registered as trade mark agent.

86.—(1) Any person who—

(a) resides in the State or in such other state as may be prescribed,

(b) has a place of business in the State,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a partnership shall be so eligible if every partner is registered in accordance with the provisions of this section; and, on application in the prescribed form and manner and on payment of the prescribed fee, a person or partnership so eligible shall be registered.

(2) Persons and partnerships whose names were entered in the Register under the Act of 1963 immediately before the commencement of this Act shall continue to be registered trade mark agents.

87 Removal from Register.

87.—The Controller may, upon the application of any person who is a registered trade mark agent, remove that person's name from the Register.

88 Suspension and erasure of registration of trade mark agent.

88.—(1) Where, in the opinion of the Controller, a person who is a registered trade mark agent ceases to be eligible to be registered or has been guilty of conduct disgraceful to that person in the capacity of a registered trade mark agent, the Controller may, after giving that person an opportunity to be heard, decide that the name of that person should be erased from the Register or that, during a period of specified duration, that person's registration should not have effect.

(2) On making a decision under subsection (1), the Controller shall forthwith send by post to the person to whom the decision relates (in this section referred to as “the person in default”), at that person's address as stated in the Register, a notice in writing stating the decision, the date thereof and the reason therefor.

(3) On giving notice to the Controller in the prescribed manner, the person in default may, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision; and, if that person so applies, the Court, on hearing the application, may either—

(a) cancel the decision, or

(b) declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

(i) direct the Controller to erase the name of the person in default from the Register; or

(ii) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(4) If at any time the Controller satisfies the Court that the person in default has delayed unduly in proceeding with an application under subsection (3), the Court shall, unless it sees good reason to the contrary, declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register; or

(b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(5) Where the person in default does not, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision, the Controller may apply exparte to the Court for confirmation of the decision; and, if the Controller so applies, the Court on the hearing of the application shall, unless it sees good reason to the contrary, declare accordingly and either (as the Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register; or

(b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(6) The decision of the Court on an application under subsection (3) or subsection (5) shall be final, save that, by leave of the Court or the Supreme Court, an appeal by the Controller or the person in default from the decision shall lie to the Supreme Court on a specified question of law.

89 Notice of erasure or suspension: subsequent restoration.

89.—(1) Upon the erasure of the name of a person from the Register the Controller shall forthwith send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the erasure.

(2) Where a decision is made under section 88 that, during a specified period, a person's registration shall not have effect, the Controller shall, before the commencement of that period, send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the decision.

(3) The name of any person which has been erased from the Register may at any time be restored to the Register by direction of the Controller but not otherwise; and, when a person's name is so restored to the Register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by the person for registration if that person was being registered for the first time) as the Controller thinks fit.

(4) Where a person's registration has ceased to have effect under section 88 for a specified period, the Controller may, if he so thinks fit, on application made to him by that person, terminate the suspension.

90 Rules relating to trade mark agents.

90.—(1) The Minister may make rules for the management of the Register and may, by those rules, prescribe any matter or thing referred to in this section or section 85 and, in particular, may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration and the maximum fees which may be charged by any person who is registered for such services in connection with trade marks as may be specified in the rules.

(2) Rules under subsection (1) may authorise the Controller to refuse to recognise as agent in respect of any business under this Act any person who does not satisfy the requirements of section 85.

(3) Rules under this section may authorise the Controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director, manager or partner (as the case may be) is an individual whom the Controller could refuse to recognise as an agent.

91 Privileged communications.

91.—(1) This section applies to communications in respect of any matter relating to the protection of a trade mark or in respect of any matter involving passing off.

(2) Any communication to which this section applies—

(a) between a person and his registered agent, or

(b) for the purposes of obtaining or in response to a request for information which a person is seeking for the purpose of instructing his registered agent,

is privileged from disclosure in legal proceedings in the State in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining or in response to a request for information which a person seeks for the purpose of instructing his solicitor.

(3) In subsection (2) “registered agent” means—

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents; or

(c) a body corporate entitled to describe itself as a registered trade mark agent.

PART VI Offences

92 Fraudulent application or use of trade mark in relation to goods.

92.—(1) Subject to the provisions of subsection (3), it shall be an offence for any person—

(a) to apply a mark identical to or nearly resembling a registered trade mark to goods or to material used or intended to be used for labelling, packaging or advertising goods,

(b) to sell, let for hire, offer or expose for sale or hire or distribute—

(i) goods bearing such a mark, or

(ii) material bearing such a mark which is used or intended to be used for labelling, packaging or advertising goods,

(c) to use material bearing such a mark in the course of a business for labelling, packaging or advertising goods, or

(d) to possess in the course of a business goods or material bearing such a mark with a view to doing any of the things mentioned in paragraph (a) to (c),

when that person is not entitled to use the mark in relation to the goods in question or authorised by a person who is so entitled.

(2) Subject to the provisions of subsection (3), it shall be an offence for any person to possess in the course of a business goods or material bearing a mark identical to or nearly resembling a registered trade mark with a view to enabling or assisting another person to do any of the things mentioned in subsection (1) (a), (b) or (c), knowing or having reason to believe that the other person is not entitled to use the mark in relation to the goods in question or authorised by a person who is so entitled.

(3) Any person who contravenes the provisions of subsection (1) or (2) shall be guilty of an offence if, but only if that person acts with a view to gain, for himself or another, or with intent to cause a loss to another and it shall be a defence for a person charged with an offence under subsection (1) to show that he believed, on reasonable grounds, that he was entitled to use the trade mark in relation to the goods in question.

(4) A person who commits an offence under this section shall be liable—

(a) on summary conviction to imprisonment for a term not exceeding six months or to a fine not exceeding £1,000, or to both;

(b) on conviction on indictment to imprisonment for a term not exceeding five years or to a fine not exceeding £100,000, or to both.

93 Falsification of register, &c.

93.—(1) It shall be an offence for a person to make, or cause to be made, an entry in the register which that person knows or has reason to believe to be false.

(2) It shall be an offence for a person—

(a) to make or cause to be made anything falsely purporting to be a copy of an entry in the register, or

(b) to produce or tender or cause to be produced or tendered in evidence any such thing,

knowing or having reason to believe that it is false.

(3) A person who commits an offence under this section shall be liable—

(a) on summary conviction, to imprisonment for a term not exceeding six months or to a fine not exceeding £1,000, or to both,

(b) on conviction on indictment, to imprisonment for a term not exceeding two years or to a fine not exceeding £200,000, or to both.

94 Falsely representing trade mark as registered.

94.—(1) It shall be an offence for a person—

(a) falsely to represent that a mark is a registered trade mark, or

(b) to make a false representation as to the goods or services for which a trade mark is registered,

knowing or having reason to believe that the representation is false.

(2) For the purposes of this section, the use in the State in relation to a trade mark—

(a) of the word “registered”, or

(b) of any other word or symbol importing a reference (express or implied) to “registration”,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the State and that the trade mark is in fact so registered for the goods or services in question.

(3) A person guilty of an offence under this section shall be liable on summary conviction to a fine not exceeding £1,000 and, in the case of a continuing offence, to a further fine not exceeding £100, for every day on which the offence continues.

95 Offences committed by partnerships and bodies corporate.

95.—(1) Without prejudice to any liability of a partner under subsection (3), proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners.

(2) A fine imposed on a partnership on its conviction in proceedings brought in accordance with subsection (1) shall be paid out of the assets of the partnership.

(3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, shall also be guilty of the offence and liable to be proceeded against and punished accordingly.

(4) Where an offence under this Act which is committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of, any person who, when the offence was committed, was a director, manager, secretary or other similar officer of the body corporate or a person who was purporting to act in any such capacity, that person (as well as the body corporate) shall be guilty of an offence and liable to be proceeded against and punished as if guilty of the offence committed by the body corporate.

PART VII Miscellaneous and General

96 Jurisdiction of the Circuit Court.

96.—Without prejudice to the powers conferred by this Act upon the Court, proceedings for an order under section 20 or section 23 may be brought in the Circuit Court in the county in which the infringing goods, material or articles are situated or in the county in which resides any person having those goods, material or articles in his possession, custody or control.

97 Unauthorised use of State emblems of Ireland.

97.—(1) A person shall not, without the authority of the Minister, use in connection with any business the State emblems of Ireland notified under Article 6ter of the Paris Convention or emblems so closely resembling the State emblems as to be calculated to deceive in such a manner as to be calculated to lead to the belief that that person is duly authorised to use the State emblems.

(2) A person who contravenes the provisions of subsection (1) shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000 and, in the case of a continuing offence, to a further fine not exceeding £100 for every day the offence continues.

(3) The Minister may apply to the Court for an injunction to restrain any person from contravening the provisions of subsection (1).

(4) Nothing in this section shall affect any right of the proprietor of a registered trade mark containing any such emblem to use that trade mark.

(5) In any proceedings to restrain any action prohibited under subsection (1) or any prosecution under subsection (2) a certificate purporting to be signed by the Controller that the emblem is a State emblem shall be sufficient evidence of its contents unless the contrary is proved.

98 Misuse of trade marks indicative of Irish origin.

98.—The Minister may take, in any place outside the State, such lawful steps, whether by way of action or prosecution at law or otherwise, as he shall think proper to prevent, restrain, or to secure punishment for, the registration, use or application, in relation to or in respect of goods not grown, produced or manufactured in the State, of any trade mark or other mark or description indicating or suggesting, or likely to lead to the belief, that the goods in respect of which or to which that trade mark, mark or description is used or applied were grown, produced or manufactured in the State.

99 Burden of proving use of trade mark.

99.—Where, in any civil proceedings under this Act, an issue arises as to the use made by any person of any registered trade mark, the onus of proving such use shall lie with the proprietor.

100 Transitional provisions.

100.—The provisions of the Third Schedule shall have effect with respect to transitional matters, including the treatment of trade marks registered under the Act of 1963, and applications for registration and other proceedings pending under that Act, on the commencement of this Act.

101 Territorial waters and continental shelf.

101.—For the avoidance of doubt, it is hereby declared that this Act applies to the following waters, namely, the waters in the portion of the sea which comprises the territorial seas of the State, the waters in all areas of the sea to which the internal or inland waters of the State are extended by section 5 of the Maritime Jurisdiction Act, 1959 and the waters in any area which is for the time being a designated area within the meaning of section 1 of the Continental Shelf Act, 1968.

102 Amendment and adaptation of existing statutes.

102.—(1) In any enactment passed before, and in any provision made under any enactment before, the commencement of this Act, any reference to trade marks or registered trade marks, within the meaning of the Act of 1963, shall, unless the context otherwise requires, be construed after the commencement of this Act as a reference to trade marks or registered trade marks, within the meaning of this Act.

(2) In section 24 of the Consumer Information Act, 1978—

(a) for the words “the Trade Marks Act, 1963”, in each place where they occur except in paragraph (c), there shall be substituted “the Trade Marks Act, 1996”; and

(b) in paragraph (c) for the words “a person registered under section 36 of the Trade Marks Act, 1963 as a registered user of a trade mark” there shall be substituted “in the case of a registered trade mark, a person licensed to use it”.

FIRST SCHEDULE Collective Marks

General

Signs of which a collective mark may consist

Indication of geographical origin

(2) However, the proprietor of a mark referred to in subparagraph (1) shall not be entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, in the case of a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significance

(2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a collective mark shall comprise some indication that it is a collective mark, and, notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective mark

(2) The regulations shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse of the mark.

(3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations by Controller

(a) comply with paragraph 5 (2) and any further requirements imposed by rules; and

(b) are not contrary to public policy or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the Controller and pay the prescribed fee; and if the applicant does not do so, the application shall be deemed to be withdrawn.

(a) accept the application;

(b) accept it subject to conditions (including amendment of the regulations or otherwise); or

(c) refuse to accept it.

(2) Where the Controller accepts an application subject to specified conditions, and those conditions are complied with within the prescribed period, the Controller shall proceed with the publication in the Journal in accordance with section 43.

(3) Where the Controller accepts an application subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

(2) The provisions of this paragraph are in addition to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

Amendment of regulations

Infringement proceedings: rights of authorised users

(2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's name as if the authorised user were the proprietor.

(4) Where the infringement proceedings are brought by virtue of subparagraph (3)—

(a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless he takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered collective mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

(a) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 4 (1); or

(b) the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark; or

(c) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 5 (2) and any further conditions imposed by rules; or

(ii) are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

SECOND SCHEDULE Certification Marks

General

Signs of which a certification mark may consist

Indication of geographical origin

Provided that the proprietor of such a mark shall not be entitled to restrain the use of the signs or indications 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 proprietor's business

Mark not to be misleading as to character or significance

(2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a certification mark shall comprise some indication that it is a certification mark; and notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification mark

(2) The regulations shall indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.

(3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations, &c. by Minister

(a) the regulations governing the use of the mark—

(i) comply with paragraph 6 (2) and any further requirements imposed by rules; and

(ii) are not contrary to public policy or to accepted principles of morality; and

(b) the applicant is competent to certify the goods or services for which the mark is to be registered.

(2) If it appears to the Controller that the requirements for registration other than those in subparagraph (1) are met, the Controller shall authorise the applicant to proceed with the application.

(3) Within the prescribed period of authorisation to proceed, the applicant must file the regulations (if this has not already been done) and pay the prescribed fee, failing which, the application shall be deemed to be withdrawn.

(2) Where the Minister directs that the application be accepted, and any conditions are complied with within the prescribed period, the Controller shall proceed in accordance with section 43.

(3) Where the Minister directs that an application be accepted subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

Regulations to be open to inspection

Amendment of regulations

(2) The Minister may cause an application for consent under subparagraph (1) to be published in any case where it appears expedient to do so.

(3) Any person may, within the prescribed time from the date of the publication of the application, give notice to the Minister of opposition to the application and any such notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition.

(4) After the Minister has consented to such an amendment as is mentioned in subparagraph (1), the Controller shall publish notice in the Journal when the amended regulations are filed with him.

Consent to assignment of registered certification mark

Infringement proceedings: rights of authorised users

(2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's own name as if the authorised user were the proprietor.

(4) Where infringement proceedings are brought by virtue of subparagraph (3)—

(a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless the proprietor takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered certification mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

(a) the proprietor has begun to carry on such a business as is mentioned in paragraph 4; or

(b) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 5 (1); or

(c) the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or

(d) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 6 (2) and any further conditions imposed by rules; or

(ii) are contrary to public policy or to accepted principles of morality; or

(e) the proprietor is no longer competent to certify the goods or services for which the mark is registered.

(2) An application for revocation on the ground mentioned in subparagraph (1) (c), (d) or (e) shall be made to the Minister.

(3) For the purposes of this paragraph the reference in section 51 (6) to the Controller or the Court shall be construed as a reference to the Minister.

Grounds for invalidity of registration

(2) An application for a declaration of invalidity on the ground that the registration was made contrary to the provisions of paragraph 7 (1) shall be made to the Minister.

General provisions as to functions of Minister

(2) Section 79 shall apply in relation to a decision of the Minister under this Schedule as they apply in relation to a decision of the Controller.

(3) The Minister may, for the purpose of discharging any of his functions under this Schedule, refer any matter to a body or person appearing to the Minister to have experience of matters of that description, and may take their report or advice into account in reaching his decision.

THIRD SCHEDULE Transitional Provisions

Introductory

“commencement” means the commencement of this Act; “existing registered mark” means a trade mark or certification trade mark, within the meaning of the Act of 1963, registered under that Act immediately before commencement;

“the former register” means the register of trade marks kept under the Act of 1963;

“the old law” means the Act of 1963 and any other enactment or rule of law applying to existing registered marks immediately before commencement;

“the new register” means the Register of Trade Marks kept under this Act.

(2) For the purposes of this Schedule an application shall be treated as pending at commencement if it was made but not finally determined before commencement.

Existing registered marks

(2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it applies to the marks themselves.

(3) Entries indicating that existing registered marks are associated with other marks shall cease to have effect on commencement.

(4) A condition entered on the former register in relation to an existing registered mark immediately before commencement shall cease to have effect on commencement; and proceedings under section 41 of the Act of 1963 (application to expunge or vary registration for breach of condition) which are pending at commencement shall be dealt with under the old law (with any necessary alteration being made in the new register).

(5) A disclaimer or limitation entered on the former register in relation to an existing registered mark and in force immediately before commencement shall be deemed to be transferred to the new register and have effect as if entered on the new register in pursuance of section 17.

Effects of registration: infringement

(2) Without prejudice to the operation of the Interpretation Act, 1937, the old law shall continue to apply in relation to infringements committed before commencement.

(3) It shall not be an infringement of—

(a) an existing registered mark, or

(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articles

Rights and remedies of licensee or authorised user

(2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements committed after commencement.

Assignment &c. of registered trade marks

(2) An application for registration under section 33 of the Act of 1963 (registration of assignments and transmissions) which is pending at commencement shall be treated as an application for registration under section 29 and shall proceed accordingly, except that the Controller may require the applicant to amend the application so as to conform with the requirements of this Act.

(3) An application for registration under section 33 of the Act of 1963 which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law.

(4) Where, before commencement, a person became entitled by assignment or transmission to an existing registered mark but did not make an application to register his title, any application for registration after commencement shall be made under section 29.

(5) Any entry falling to be made in the old register as a result of subparagraph (3) shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

Licensing of registered mark

(2) Existing entries under section 36 of the Act of 1963 (registered users) shall be deemed to be transferred on commencement to the new register and shall have effect as if made under section 29.

(3) An application for registration as a registered user which is pending at commencement shall be treated as an application for registration of a licence under section 29 (1) and shall proceed accordingly, except that the Controller may require an applicant to amend the application so as to conform with the requirements of this Act.

(4) An application for registration as a registered user which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law, and any entry falling to be made in the old register as a result of this subparagraph shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

(5) Any proceedings pending on commencement under section 36 (7) or (9) of the Act of 1963 (variation or cancellation of registration of registered user) shall be dealt with under the old law (with any necessary alteration being made to the new register).

Pending applications for registration

(2) Subject to paragraph 9, the application shall be dealt with (and the registrability of the mark shall be determined) in accordance with the old law and any mark which, on that determination, falls to be registered shall be treated for the purpose of this Schedule as an existing registered mark.

(3) Provision may be made by rules to enable pending applications for registration to continue in accordance with the procedural provisions of this Act.

Conversion of pending application

(2) If, in case where subparagraph (1) applies, the applicant gives notice to the Controller requesting that the registrability of the mark be determined in accordance with the provisions of this Act, the Controller shall deal with the application accordingly.

(3) Notice under subparagraph (2) shall be in the prescribed form, shall be accompanied by the appropriate fee and shall be given no later than six months after commencement.

(4) Notice given under subparagraph (2) shall be irrevocable and the application to which the notice relates shall be treated as if it were made at commencement and as if the date of filing were the date of commencement.

Duration and renewal of registration

(2) Sections 47 (2) and 48 (renewal of registration) apply when the renewal falls due at or after commencement; and the old law applies in any other case.

(3) For the purposes of this paragraph it is immaterial when the application is made or when the fee is paid.

Revocation for non-use

(2) Subject to subparagraph (3), an application under section 51 (4) on the grounds specified in section 51 (1) (a) or (b) (revocation for non-use) may be made in relation to an existing registered mark at any time after commencement.

(3) No application for the revocation of the registration of an existing registered mark which was registered by virtue of section 35 of the Act of 1963 (defensive registration of well-known trade marks) may be made under section 51 until more than five years after commencement.

Application for rectification &c.

Validity of existing registered marks

Certification marks

(2) In subparagraph (1) “existing certification mark” means a certification trade mark registered under the Act of 1963 immediately before commencement.

Pre-commencement applications in respect of trade marks for services.

(a) the application were made at commencement; and

(b) the date of filing were the date of commencement;

and the Controller shall deal with the application accordingly.

(2) Section 20 (3) of the Act of 1963 (separate applications for registration of identical trade marks in respect of goods, etc.) shall apply in relation to applications falling within subparagraph (1)—

(a) with the substitution of a reference to services for the reference to goods or a description of goods; and

(b) with the omission of the proviso.