Trade Marks Act, 1963

Trade Marks Act, 1963 Skip to content Disclaimer Feedback Helpdesk Gaeilge Léim go dtí an t-ábhar Séanadh Aiseolas Deasc chabhrach English Gaeilge English Produced by the Office of the Attorney General Táirgthe ag Oifig an Ard-Aighne Home Legislation Acts of the Oireachtas Statutory Instruments Pre-1922 Legislation Constitution External Resources Bills (Houses of the Oireachtas) Iris Oifigiúil / Official Gazette Revised Acts (LRC) Classified List of Legislation (LRC) Translations (acts.ie) Translations (Houses of the Oireachtas) Government Publications for Sale EU Law (EUR-Lex) FAQ Disclaimer Feedback Helpdesk Search Baile Reachtaíocht Achtanna an Oireachtais Ionstraimí Reachtúla Reachtaíocht Réamh-1922 Bunreacht Acmhainní Seachtracha Billí (Tithe an Oireachtais) Iris Oifigiúil Achtanna Athbhreithnithe (CAD) (An Coimisiún um Athchóiriú an Dlí) Liosta Rangaithe Reachtaíochta Aistriúcháin (achtanna.ie) Aistriúcháin (Tithe an Oireachtais) Foilseacháin Rialtais ar Díol Dlí AE (EUR-Lex) CCanna (Ceisteanna Coitianta) Séanadh Aiseolas Deasc chabhrach Cuardach TitleTeideal Year(s) or rangeBliain nó blianta nó raon TypeCineál All Legislation Acts Statutory Instruments Advanced SearchCuardach Casta HomeBaile ActsAchtanna 1963 Trade Marks Act, 1963 Trade Marks Act, 1963 Permanent Page URL View by SectionAmharc de réir Ailt View Full ActAmharc ar an Acht Iomlán Bill History Stair Bille Commencement, Amendments, SIs made under the Act Tosach Feidhme, Leasuithe, IRí arna ndéanamh faoin Acht Print Full ActPriontáil an tAcht Iomlán Number 9 of 1963. TRADE MARKS ACT, 1963. ARRANGEMENT OF SECTIONS PART I Preliminary and General Section 1. Short title and commencement. 2. Interpretation. 3. Power of Minister to make rules. 4. Fees. 5. Exercise of powers of Minister. 6. Excluded days. 7. Expenses. 8. Repeal and savings. PART II Provisions Relating to Registration 9. The register of trade marks. 10. No action for infringement of unregistered trade mark. 11. Registration to be in respect of particular goods. 12. Right given by registration in Part A and infringement thereof. 13. Right given by registration in Part B and infringement thereof. 14. Infringement by breach of certain restrictions. 15. Saving for vested rights. 16. Saving for use of name, address or description of goods. 17. Distinctiveness requisite for registration in Part A. 18. Capability of distinguishing requisite for registration in Part B. 19. Prohibition of registration of deceptive and certain other matter. 20. Prohibition of registration of identical and resembling trade marks. 21. Registration in Part A to be conclusive as to validity after seven years. 22. Registration subject to disclaimer. 23. Word trade mark used as name of article or substance. 24. Effect of limitation as to colour and of absence thereof. 25. Application for registration. 26. Opposition to registration. 27. Registration. 28. Duration and renewal of registration. 29. Registration of parts of trade marks and of trade marks as a series. 30. Powers of and restrictions on assignment and transmission. 31. Certain trade marks to be associated so as to be assignable and transmissible as a whole only. 32. Power of registered proprietor to assign and give receipts. 33. Registration of assignments and transmissions. 34. Removal from the register and imposition of limitations on ground of non-use. 35. Defensive trade marks. 36. Registered users. 37. Proposed use of trade mark by corporation to be constituted. 38. Use of one of associated or substantially identical trade marks equivalent to use of another. 39. Use of trade mark for export trade. 40. General power to rectify entries in register. 41. Power to expunge or vary registration for breach of condition. 42. Correction of register. 43. Alteration of registered trade mark. 44. Adaptation of entries in register to amended or substituted classification of goods. 45. Certification trade marks. 46. Registration of marks by Ministers. 47. Misuse of trade marks indicative of Irish origin. PART III Provisions Relating to Powers and Duties of Controller and to Legal Proceedings 48. Preliminary advice by Controller as to distinctiveness. 49. Controller may consult Attorney General. 50. Hearing before exercise of Controller's discretion. 51. Power of Controller to award costs. 52. Registration to be prima facie evidence of validity. 53. Certificate of validity. 54. Costs of the Controller in Court proceedings. 55. Trade usage and other matters to be considered. 56. Controller's appearance in proceedings. 57. Appeal to the Court. 58. Court's power to review Controller's decision. 59. Procedure in cases of option to apply to Court or Controller. 60. Mode of giving evidence. 61. Evidence of entries in register. 62. Evidence of things done by Controller. PART IV Miscellaneous 63. Falsification of entries in register. 64. Fine for falsely representing a trade mark as registered. 65. Unauthorised user of State badges. 66. Change of form of trade connection not to be deemed to cause deception. 67. Jointly owned trade marks. 68. Trusts and equities. 69. Recognition and registration of trade mark agents. 70. International agreements. 71. Offences by bodies corporate or unincorporated bodies. 72. Transitional provisions. FIRST SCHEDULE SECOND SCHEDULE Acts Referred to INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927 1927, No. 16 Partnership Act, 1890 1890, c. 39 Public Offices Fees Act, 1879 1879, c. 58 Irish Nationality and Citizenship Act, 1956 1956, No. 26 Solicitors Act, 1954 1954, No. 36 Petty Sessions (Ireland) Act, 1851 1851, c. 93 Number 9 of 1963. TRADE MARKS ACT, 1963. AN ACT TO MAKE NEW PROVISION IN RESPECT OF TRADE MARKS AND RELATED MATTERS, IN SUBSTITUTION FOR THE PROVISIONS OF PART IV AND (SO FAR AS IT RELATES TO TRADE MARKS) PART V OF THE INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927 , AND OTHER ENACTMENTS RELATING THERETO, AND TO PROVIDE FOR OTHER MATTERS CONNECTED WITH THE MATTERS AFORESAID. [3rd April, 1963.] BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:— PART I. Preliminary and General. Short title and commencement. 1.—(1) This Act may be cited as the Trade Marks Act, 1963. (2) This Act shall come into operation on such date as the Minister may by order appoint. Interpretation. 2.—(1) In this Act, unless the context otherwise requires— “the Act of 1927” means the Industrial and Commercial Property (Protection) Act, 1927 ; “assignment” means assignment by act of the parties concerned; “the Controller” means the Controller of Industrial and Commercial Property appointed under the Act of 1927; “the Court” means the High Court; “the Journal” means the Official Journal of Industrial and Commercial Property; “limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold (or otherwise traded in) in any place within the State, or as to use in relation to goods to be exported to any market outside the State; “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof; “the Minister” means the Minister for Industry and Commerce; “the Office” means the Industrial and Commercial Property Registration Office established under the Act of 1927; “partnership” has the meaning assigned to it by section 1 of the Partnership Act, 1890 ; “permitted use” has the meaning assigned to it by paragraph (b) of subsection (1) of section 36 of this Act; “prescribed” means, in relation to proceedings before the Court, prescribed by rules of court, and, in other cases, prescribed by this Act or the rules; “the register” means the register of trade marks kept under this Act; “registered trade mark” means a trade mark that is actually on the register; “registered user” means a person who is for the time being registered as such under section 36 of this Act; “the rules” means rules made by the Minister under section 3 or section 44 of this Act; “trade mark” means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 45 of this Act; “transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment. (2) (a) In this Act references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods. (b) In any other Act references to a trade mark shall be construed as references to a trade mark under this Act. Power of Minister to make rules. 3.—(1) The Minister may from time to time make such rules, prescribe such forms and generally do such things as he thinks expedient— (a) for regulating the practice under this Act, including the service of documents; (b) for classifying goods for the purposes of registration of trade marks; (c) for making or requiring duplicates of trade marks and other documents; (d) for securing and regulating the publishing and selling or distributing, in such manner as the Minister thinks fit, of copies of trade marks and other documents; (e) generally, for regulating the business of the Office in relation to trade marks and all things by this Act placed under the direction or control of the Controller or of the Minister; (f) for prescribing any matter referred to in this Act as prescribed or to be prescribed. (2) Rules made under this Act shall, while in force, be of the same effect as if they were contained in this Act. (3) Every rule made under this Act shall be advertised twice in the Journal, and shall be laid before each House of the Oireachtas as soon as may be after it is made and if a resolution annulling the rule is passed by either House within the next subsequent twenty-one days on which that House has sat after the rule is laid before it, the rule shall be annulled accordingly but without prejudice to the validity of anything previously done thereunder. Fees. 4.—(1) There shall be paid in respect of applications, registrations, notices, notifications, statements, counter-statements, amendments, renewals, cancellations, declarations, certificates, certified copies, entries and other matters in relation to trade marks 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) All fees prescribed under this section shall be collected and accounted for in such manner as the Minister with the sanction of the Minister for Finance shall direct. (3) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this Act. Exercise of powers of Minister. 5.—All things required or authorised under this Act to be done by, to or before the Minister may be done by, to or before the secretary of the Department of Industry and Commerce or any person authorised in that behalf by the Minister. Excluded days. 6.—Whenever the last day fixed by this Act for doing anything under this Act falls on a day which is specified by the rules as an excluded day, the rules may provide that the thing may be done on the next subsequent day which is not specified by the rules as an excluded day. Expenses. 7.—The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas. Repeal and savings. 8.—(1) The following sections of the Act of 1927, namely, sections 3 and 9 (in so far as they refer to trade marks), 80 to 123, and (in so far as they refer to trade marks) 124, 125, 127 to 138, and 140 to 153, are hereby repealed. (2) Nothing in this Act shall affect any order, rule, regulation or requirement made, table of fees or certificate issued, notice, decision, determination, direction or approval given, application made, thing done or trade mark or mark registered under the Act of 1927; and every such order, rule, regulation, requirement, table of fees, certificate, notice, decision, determination, direction, approval, application, thing, trade mark or mark, shall, if in force at the commencement of this Act, continue in force and shall, so far as it could have been made, issued, given, done or registered under this Act, have effect as if made, issued, given or done under the corresponding section of this Act. (3) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding section of this Act. PART II. Provisions Relating to Registration. The register of trade marks. 9.—(1) There shall continue to be kept at the Office for the purposes of this Act a book called the register of trade marks, wherein shall be entered all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations, and such other matters relating to registered trade marks as may be prescribed. (2) The register shall continue to consist of two parts called respectively Part A and Part B. (3) The register shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed. (4) The register shall be kept under the control and management of the Controller. (5) The register may, in lieu of being kept in the form of a book, be kept in such other form of record as may from time to time be approved by the Minister. No action for infringement of unregistered trade mark. 10.—No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. Registration to be in respect of particular goods. 11.—A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be decided by the Controller. Right given by registration in Part A and infringement thereof. 12.—(1) Subject to this section, and to sections 15 and 16 of this Act, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either— (a) as being use as a trade mark; or (b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade. (2) The right to the use of a trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend. (3) The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person— (a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or (b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods. (4) The use of a registered trade mark, being one of two or more registered trade marks that are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks. Right given by registration in Part B and infringement thereof. 13.—(1) Except as provided by subsection (2) of this section, the registration (whether before or after the commencement of this Act) of a person in Part B of the register as proprietor of a trade mark in respect of any goods shall, if valid, give or be deemed to have given to that person the like right in relation to those goods as if the registration had been in Part A of the register, and the provisions of section 12 of this Act shall have effect in like manner in relation to a trade mark registered in Part B of the register as they have effect in relation to a trade mark registered in Part A of the register. (2) In any action for infringement of the right to the use of a trade mark given by registration as aforesaid in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 14 of this Act, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the trade mark. Infringement by breach of certain restrictions. 14.—(1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorises it to be done, in relation to the goods, in the course of trade or with a view to any dealing therewith in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money's worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof. (2) The acts to which this section applies are— (a) the application of the trade mark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, get-up or packing; (b) in a case in which the trade mark is upon the goods, the alteration, part removal or part obliteration thereof; (c) in a case in which the trade mark is upon the goods, and there is also thereon other matter, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the trade mark unless that other matter is wholly removed or obliterated; (d) in a case in which the trade mark is upon the goods, the application of any other trade mark to the goods; (e) in a case in which the trade mark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the trade mark. (3) In this section references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those goods, and “upon” includes in relation to any goods a reference to physical relation thereto. Saving for vested rights. 15.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior— (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or (b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his; whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under subsection (2) of section 20 of this Act. Saving for use of name, address or description of goods. 16.—No registration of a trade mark shall interfere with— (a) any bona fide use by a person of his own name or of the name of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business; or (b) the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in paragraph (b) of subsection (1) of section 12 , or in paragraph (b) of subsection (3) of section 45 , of this Act. Distinctiveness requisite for registration in Part A. 17.—(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:— (a) the name of a company, individual, or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname; (e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in paragraphs (a), (b), (c) and (d) of this subsection, shall not be registrable under this paragraph except upon evidence of its distinctiveness. (2) For the purposes of this section “distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration. (3) In determining whether a trade mark is adapted to distinguish as aforesaid the Court or the Controller (as the case may be) may have regard to the extent to which— (a) the trade mark is inherently adapted to distinguish as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid. Capability of distinguishing requisite for registration in Part B. 18.—(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration. (2) In determining whether a trade mark is capable of distinguishing as aforesaid the Court or the Controller (as the case may be) may have regard to the extent to which— (a) the trade mark is inherently capable of distinguishing as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid. (3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof. Prohibition of registration of deceptive and certain other matter. 19.—It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of law, or would be contrary to law or morality, or any scandalous design. Prohibition of registration of identical and resembling trade marks. 20.—(1) Subject to subsection (2) of this section, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use, or of other special circumstances which in the opinion of the Court or the Controller make it proper so to do, the Court or the Controller (as the case may be) may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Court or the Controller (as the case may be) may think it right to impose. (3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other, in respect of the same goods or description of goods, the Controller may refuse to register any of them until their rights have been determined by the Court, or have been settled by agreement in a manner approved by him or by the Court on an appeal, as the case may be: Provided that where separate applications by different persons to be registered as proprietors respectively of trade marks that are identical or nearly resemble each other are made on different dates, the Controller may refuse to proceed with the second or later of those applications until the first application shall have been determined, and that the trade mark the subject of the first application shall, if that trade mark is thereupon registered, be deemed to be a trade mark already on the register under subsection (1) of this section in relation to the trade mark the subject of the second or later application. Registration in Part A to be conclusive as to validity after seven years. 21.—(1) In all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 40 of this Act) the original registration in Part A of the register of the trade mark shall, after the expiration of seven years from the date of that registration, be taken to be valid in all respects, unless— (a) that registration was obtained by fraud, or (b) the trade mark offends against section 19 of this Act. (2) Nothing in subsection (1) of section 13 of this Act shall be construed as making applicable to a trade mark, as being a trade mark registered in Part B of the register, the foregoing provisions of this section relating to a trade mark registered in Part A of the register. Registration subject to disclaimer. 22.—If a trade mark— (a) contains any part not separately registered by the proprietor as a trade mark; or (b) contains matter common to the trade or otherwise of a non-distinctive character; the Court or the Controller (as the case may be), in deciding whether the trade mark shall be entered or shall remain on the register, may require as a condition of its being on the register— (i) that the proprietor shall disclaim any right to the exclusive use of any part of the trade mark, or to the exclusive use of all or any portion of any such matter as aforesaid, to the exclusive use of which the Court or the Controller (as the case may be) holds him not to be entitled; or (ii) that the proprietor shall make such other disclaimer as the Court or the Controller (as the case may be) may consider necessary for the purpose of defining his rights under the registration: Provided that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made. Word trade mark used as name of article or substance. 23.—(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of the registration, of a word or words which the trade mark contains, or of which it consists, as the name or description of an article or substance: Provided that if it is proved either— (a) that there is a well-known and established use of the word or words as the name or description of the article or substance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) goods certified by the proprietor; or (b) that the article or substance was formerly manufactured under a patent (being a patent in force on, or granted after, the 1st day of October, 1927), that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or description of the article or substance; the provisions of subsection (2) of this section shall have effect. (2) Where the facts mentioned in paragraph (a) or (b) of the proviso to subsection (1) of this section are proved with respect to any word or words, then— (a) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed for the purposes of section 40 of this Act to be an entry wrongly remaining on the register; (b) if the trade mark contains that word or those words and other matter, the Court or the Controller (as the case may be), in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same description, may in case of a decision in favour of its remaining on the register require as a condition thereof that the proprietor shall disclaim any right to the exclusive use in relation to that article or substance and any goods of the same description of that word or those words, so, however, that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made; and (c) for the purposes of any other legal proceedings relating to the trade mark— (i) if the trade mark consists solely of that word or those words, all rights of the proprietor, whether under the common law or by registration, to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description, or (ii) if the trade mark contains that word or those words and other matter, all such rights of the proprietor to the exclusive use of that word or those words in such relation as aforesaid, shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of the proviso to subsection (1) of this section first became well known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that proviso. (3) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration in force at the commencement of this Act or thereafter shall, notwithstanding section 21 of this Act, be deemed for the purposes of section 40 of this Act to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require: Provided that this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by others and in association with a suitable name or description open to the public use. Effect of limitation as to colour and of absence thereof. 24.—(1) A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the Court or the Controller (as the case may be) when deciding on the distinctive character of the trade mark. (2) If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours. Application for registration. 25.—(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it must apply in writing to the Controller in the prescribed manner for registration either in Part A or in Part B of the register. (2) Subject to this Act, the Controller may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think right. (3) In the case of an application for registration of a trade mark (other than a certification trade mark) in Part A of the register, the Controller may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B and deal with the application accordingly. (4) In the case of a refusal or conditional acceptance, the Controller shall, if required by the applicant within the prescribed time, state in writing the grounds of his decision and the materials used by him in arriving thereat. (5) An applicant desiring to appeal under section 57 of this Act against a decision of the Controller under this section shall apply to the Controller under subsection (4) of this section for the statement in writing therein referred to, and on the appeal the Court shall, if required, hear the applicant and the Controller, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted. (6) Except by leave of the Court no appeal against a decision of the Controller under this section shall be made save within a period of two months from the date of dispatch to the applicant of the statement in writing referred to in subsection (4) of this section or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of two months). (7) Appeals under section 57 of this Act against decisions of the Controller under this section shall be heard on the materials stated as aforesaid by the Controller, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Controller, other than those so stated as aforesaid by him, except by leave of the Court. (8) The Controller or the Court (as the case may be) may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as the Controller or the Court (as the case may be) may think fit. Opposition to registration. 26.—(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Controller shall, as soon as may be after acceptance, cause the application as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted: Provided that the Controller may cause an application to be advertised before acceptance in any case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Controller may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do. (2) Any person may, within the prescribed time from the date of the advertisement of an application, give notice to the Controller of opposition to the registration. (3) The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition. (4) The Controller shall send a copy of the notice to the applicant, and within the prescribed time after receipt thereof the applicant shall send to the Controller, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application. (5) If the applicant sends such a counter-statement as aforesaid, the Controller shall furnish a copy thereof to the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted and shall notify the applicant and the opponent accordingly. (6) The applicant or the opponent may, within the prescribed time after the date of notification of the decision of the Controller, apply to the Controller for a written statement of the grounds of his decision. (7) A person desiring to appeal under section 57 of this Act against a decision of the Controller under this section shall apply to the Controller under subsection (6) of this section for the written statement therein referred to, and on the appeal the Court shall, if required, hear the parties and the Controller and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted. (8) Except by leave of the Court, no appeal against a decision of the Controller under this section shall be made save within a period of two months from the date of dispatch to the applicant of the statement in writing referred to in subsection (6) of this section or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of two months). (9) On the hearing of an appeal under section 57 of this Act against a decision of the Controller under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court. (10) (a) On an appeal under section 57 of this Act against a decision of the Controller under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Controller, other than those so stated as aforesaid by the opponent, except by leave of the Court. (b) Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed. (11) On an appeal under section 57 of this Act against a decision of the Controller under this section the Court may, after hearing the Controller, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered. (12) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice, or an appellant, neither resides nor carries on business in the State, the Court (in the case of an appeal) or the Controller (in any other case) may require him to give security for costs of the proceedings and, in default of such security being duly given, may treat the opposition or application, or the appeal, as the case may be, as abandoned. Registration. 27.—(1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted, and either— (a) the application has not been opposed and the time for notice of opposition has expired, or (b) the application has been opposed and the opposition has been decided in favour of the applicant, the Controller shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration: Provided that the foregoing provisions of this subsection, relating to the date as of which a trade mark shall be registered and to the date to be deemed to be the date of registration, shall, as respects a trade mark registered under this Act with the benefit of section 70 of this Act, have effect subject to that section. (2) On the registration of a trade mark the Controller shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the official seal of the Controller. (3) 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 the applicant, the Controller may, after giving notice of the non-completion to the applicant in writing in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. Duration and renewal of registration. 28.—(1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with this section: Provided that, in relation to a registration as of a date before the commencement of this Act, this subsection shall have effect with the substitution of a period of fourteen years for the said period of seven years. (2) The Controller shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period, renew the registration of the trade mark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registration, as the case may be, which date is in this section called “the expiration of the last registration”. (3) At the prescribed time before the expiration of the last registration of a trade mark, the Controller shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Controller may remove the trade mark from the register, subject to such conditions, if any, as to its restoration to the register as may be prescribed. (4) Where a trade mark has been removed from the register for non-payment of the fee for renewal, it shall, nevertheless, for the purpose of any application for the registration of a trade mark during one year next after the date of the removal, be deemed to be a trade mark that is already on the register: Provided that the foregoing provisions of this subsection shall not have effect where the Court or the Controller (as the case may be) is satisfied either— (a) that there has been no bona fide trade use of the trade mark that has been removed during the two years immediately preceding its removal; or (b) that no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application for registration by reason of any previous use of the trade mark that has been removed. Registration of parts of trade marks and of trade marks as a series. 29.—(1) (a) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and any such part as separate trade marks. (b) Each such separate trade mark must satisfy all the conditions of an independent trade mark and shall, subject to subsection (3) of section 31 and subsection (2) of section 38 of this Act, have all the incidents of an independent trade mark. (2) Where a person claiming to be the proprietor of several trade marks, in respect of the same goods or description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of— (a) statements of the goods in relation to which they are respectively used or proposed to be used; or (b) statements of number, price, quality or names of places; or (c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or (d) colour; seeks to register those trade marks, they may be registered as a series in one registration. Powers of and restrictions on assignment and transmission. 30.—(1) Notwithstanding any rule of law or equity to the contrary, and subject to this section, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not. (2) Subject to this section, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible in respect either of all the goods in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods. (3) Subsections (1) and (2) of this section shall have effect in the case of an unregistered trade mark used in relation to any goods as they have effect in the case of a registered trade mark registered in respect of any goods, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods all of which are goods in relation to which the unregistered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted. (4) Notwithstanding anything in subsections (1), (2) and (3) of this section, a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which as a result of an assignment or transmission there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and of the trade marks, the use of the trade marks in exercise of those rights would be, or have been, likely to deceive or cause confusion: Provided that, where a trade mark is, or has been, assigned or transmitted in such a case as aforesaid, the assignment or transmission shall not be deemed to be, or to have been, invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, or were, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within the State (otherwise than for export therefrom) or in relation to goods to be exported to the same market outside the State. (5) The proprietor of a registered trade mark who proposes to assign it in respect of any goods in respect of which it is registered may submit to the Controller in the prescribed manner a statement of case setting out the circumstances, and the Controller may issue to him a certificate stating whether, having regard to the similarity of the goods and of the trade marks referred to in the case, the proposed assignment of the first-mentioned trade mark would or would not be invalid under subsection (4) of this section, and a certificate so issued shall, unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under subsection (4) of this section of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 33 of this Act of the title of the person becoming entitled is made within six months from the date on which the certificate is issued. (6) Notwithstanding anything in subsections (1) to (3) of this section, a trade mark shall not, on or after the commencement of this Act, be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the circumstances subsist, whether under the common law or by registration, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods to be sold, or otherwise traded in, in a place or places in the State, and an exclusive right in another of those persons to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods limited to use in relation to goods to be sold, or otherwise traded in, in another place or other places in the State: Provided that, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or of a person who claims that a trade mark has been transmitted to him or to a predecessor in title of his on or after the commencement of this Act, in any such case, the Controller, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this subsection or under subsection (4) of this section, so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 33 of this Act of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date. (7) Where an assignment in respect of any goods of a trade mark that is at the time of the assignment used in a business in those goods is made, on or after the commencement of this Act, otherwise than in connection with the goodwill of that business, the assignment shall not take effect until, in pursuance of an application made by the assignee in the prescribed manner to the Controller within a period of six months from the date on which the assignment is made (or within such extended period, if any, as the Controller may allow) a notice of the assignment is published in the Journal. Certain trade marks to be associated so as to be assignable and transmissible as a whole only. 31.—(1) Trade marks that are registered as, or that are deemed by virtue of this Act to be, associated trade marks shall be assignable and transmissible only as a whole and not separately, but they shall for all other purposes be deemed to have been registered as separate trade marks. (2) Where a trade mark that is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark that is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Controller may at any time require that the trade marks shall be entered on the register as associated trade marks. (3) Where a trade mark and any part or parts thereof are, by virtue of subsection (1) of section 29 of this Act, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks. (4) All trade marks that are, by virtue of subsection (2) of section 29 of this Act, registered as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks. (5) On application made in the prescribed manner by the registered proprietor of two or more trade marks registered as associated trade marks, the Controller may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by another person in relation to any of the goods in respect of which it is registered, and may amend the register accordingly. Power of registered proprietor to assign and give receipts. 32.—Subject to this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any consideration for an assignment thereof. Registration of assignments and transmissions. 33.—(1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application in the prescribed manner to the Controller to register his title, and the Controller shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register. (2) Except for the purposes of an appeal under section 57 of this Act against a decision of the Controller under this section or of an application under section 40 of this Act, a document or instrument in respect of which no entry has been made in the register in accordance with subsection (1) of this section shall not be admitted in evidence in any court of law in proof of the title to a trade mark unless that court otherwise directs. Removal from the register and imposition of limitations on ground of non-use. 34.—(1) Subject to section 35 of this Act, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application by any person aggrieved to the Court or, at the option of the applicant and subject to section 59 of this Act, to the Controller, on the ground either— (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the application; or (b) that up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that (except where the applicant has been permitted under subsection (2) of section 20 of this Act to register an identical or nearly resembling trade mark in respect of the goods in question or where the Court or the Controller (as the case may be) is of opinion that he might properly be permitted so to register such a trade mark) the Court or the Controller (as the case may be) may refuse an application made under paragraph (a) or (b) of this subsection in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) Where in relation to any goods in respect of which a trade mark is registered— (a) the matters referred to in paragraph (b) of subsection (1) of this section are shown so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in the State (otherwise than for export from the State), or in relation to goods to be exported to a particular market outside the State; and (b) a person has been permitted under subsection (2) of section 20 of this Act to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be sold, or otherwise traded in, in that place (otherwise than for export from the State), or in relation to goods to be exported to that market, or the Court or the Controller is of opinion that he might properly be permitted so to register such a trade mark; on application by that person to the Court, or, at the option of the applicant and subject to section 59 of this Act, to the Controller, the Court or the Controller (as the case may be) may impose on the registration of the first-mentioned …