LegalizeTRADE MARKS ACT, 1996
This is the act as published. Later amendments are not folded into the text below: each one is a separate act in this repository and an entry in this law's history.
16 amending acts · 2021-07-22, Maritime Jurisdiction Act 2021
Act to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December, 1988, to approximate the laws of the member states relating to trade marks; to make provision in connection with Council Regulation (EC) No. 40/94 of 20 December, 1993, on the Community Trade Mark; to give effect to the Madrid Protocol relating to the International Registration of Marks of 27th June, 1989, and to certain provisions of the Paris Convention for the Protection of Industrial Property of 20th March, 1883, as revised and amended; to permit the registration of trade marks in relation to services and for connected purposes
(1) Section 28 (assignment or other transmission of registered mark) shall apply only in relation to transactions and events occurring after commencement in relation to an existing registered mark; and the old law shall continue to apply in relation to transactions and events occurring before commencement.
- (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
(1) Sections 32 and 33 (2) (licensing of registered trade mark: rights of exclusive licensee against grantor's successor in title) shall apply only in relation to licences granted after commencement; and the old law shall continue to apply in relation to licences granted before commencement.
- (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
(1) The provisions of this paragraph apply where an application for registration of a trade mark, within the meaning of the Act of 1963, is pending at commencement.
- (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
(1) This paragraph applies if an application which was pending at commencement has not been advertised under section 26 of the Act of 1963.
- (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
(1) Section 47 (1) (duration of original period of registration) applies in any case where the registrability of a trade mark is determined in accordance with the provisions of this Act; and the old law applies in any other case.
- (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
(1) An application under section 34 of the Act of 1963 (removal from register or imposition of limitation on ground of non-use) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).
- (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.
An application under section 40 or 42 of the Act of 1963 (rectification or correction of the register) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).
Validity of existing registered marks
The old law shall continue to apply as regards the validity of the registration of an existing registered mark; and no objection to the validity of such a registration may be taken on the ground of failure to satisfy the requirements of this Act.
Certification marks
(1) If, at commencement, a request is pending for the amendment of the regulations governing the use of an existing certification mark, that request shall be dealt with under the old law.
- (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.
(1) If, at any time between 1st January, 1993 and commencement, an application was made to the Controller for the registration of a trade mark in respect of services, this Act shall have effect, subject to subparagraph (2), as if—
- (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.
Footnotes
OJ No. L40 of 11th February, 1989
OJ No. Lll of 14th February, 1994
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