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Chapter 9 – Certification Trade Marks

BananaIP Counsels > The Trade Marks Act > Chapter 9 – Certification Trade Marks

Chapter 9 – Certification Trade Marks

Certain Provisions of this Act not Applicable to Certification Trade Marks

69. The following provisions of this Act shall not apply to certification trade marks,
that is to say,—
(a) clauses (a) and (c) of sub-section (1) of section 9;
(b) sections 18, 20 and 21, except as expressly applied by this Chapter;
(c) sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56;
(d) chapter XII, except section 107.

Registration of Certification Trade Marks

70. A mark shall not be registrable as a certification trade mark in the name of a person
who carries on a trade in goods of the kind certified or a trade of the provision of services of
the kind certified.

Application for Registration of Certification Trade Marks

71.—(1) An application for the registration of a mark as a certification trade mark shall
be made to the Registrar in the prescribed manner by the person proposed to be registered as
the proprietor thereof, and accompanied by a draft of the regulations to be deposited under
section 74.
(2) Subject to the provisions of section 70, the provisions 18, 19 and 22 shall apply in
relation to an application under this section as they apply in relation to an application under
section 18, subject to the modification that references therein to acceptance of an application
shall be construed as references to authorisation to proceed with an application.
(3) In dealing under the said provisions with an application under this section, the
tribunal shall have regard to the like considerations, so far as relevant, as if the application
were applications under section 18 and to any other considerations relevant to applications
under this section, including the desirability of securing that a certification trade mark shall
comprise some indication that it is a certification trade mark.

Consideration of Application for Registration by Registrar

72.—(1) The Registrar shall consider the application made under section 71 with
regard to the following matters, namely:—
(a) whether the applicant is competent to certify the goods in respect of which the mark
is to be registered;
(b) whether the draft of the regulations to be filed under section 74 is satisfactory;
(c) whether in all the circumstances the registration applied for would be to the public
advantage,
and may either—
(i) refuse the application; or
(ii) accept the application and approve the said draft of the regulations either without
modification and unconditionally or subject to any conditions or limitations, or to any
amendments or modifications of the application or of the regulations, which he thinks
requisite having regard to any of the said matters.
(2) Except in the case of acceptance and approval without modification and
unconditionally, the Registrar shall not decide any matter under sub-section (1) without
giving the applicant an opportunity of being heard.

Opposition to Registration of Certification Trade Marks

73. When an application has been accepted, the Registrar shall, as soon as may be
thereafter, cause the application as accepted to be advertised in the prescribed manner, and the
provisions of section 21 shall apply in relation to the registration of the mark as they apply in
relation to an application under section 18.

Filing of Regulations Governing Use of a Certification Trade Mark

74.—(1) There shall be filed at the Trade Marks Registry in respect of every mark
registered as a certification trade mark regulations for governing the use thereof, which shall
include provisions as to the cases in which the proprietor is to certify goods or services and to
authorise the use of the certification trade mark, and may contain any other provisions which
the Registrar may by general or special order, require or permit to be inserted therein
(including provisions conferring a right of appeal to the Registrar against any refusal of the
proprietor to certify goods or to authorise the use of the certification trade mark in accordance
with the regulations); and regulations so filed shall be open to inspection in like manner as
the register as provided in section 148.
(2) The regulations so filed may, on the application of the registered proprietor, be
altered by the Registrar.
(3) The Registrar may cause such application to be advertised in any case where it
appears to him expedient so to do, and where he does so, if within the time specified in the
advertisement any person gives notice of opposition to the application, the Registrar shall not
decide the matter without giving the parties an opportunity of being heard.

Infringement of Certification Trade Marks

75. The right conferred by section 78 is infringed by any person who, not being the
registered proprietor of the certification trade mark or a person authorised by him in that
behalf under the regulations filed under section 74, using it in accordance therewith, uses in
the course of trade, a mark, which is identical with, or deceptively similar to the certification
trade mark in relation to any goods or services in respect of which it is registered, and in such
manner as to render the use of the mark likely to be taken as being a use as a trade mark.

Acts not Constituting Infringement of Certification Trade Marks

76.—(1) Notwithstanding anything contained in this Act, the following acts do not
constitute an infringement of the right to the use of a registered certification trade mark—
(a) where a certification trade mark is registered subject to any conditions or limitations
entered on the register, the use of any such mark in any mode, in relation to goods to be sold
or otherwise traded in any place, or in relation to goods to be exported to any market or in
relation to services for use or available for acceptance in any place, country or territory or in

any other circumstances, to which having regard to any such limitations, the registration does
not extend;
(b) the use of a certification trade mark in relation to goods or services certified by the
proprietor of the mark if, as to those goods or services or a bulk of which they form part, the
proprietor or another in accordance with his authorisation under the relevant regulations has
applied the mark and has not subsequently removed or obliterated it, or the proprietor has at
any time expressly or impliedly consented to the use of the mark;
(c) the use of a certification trade mark in relation to goods or services adapted to form
part of, or to be accessory to, other goods in relation to which the 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 or services 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 that the goods or services are certified by the proprietor.
(2) Clause (b) of sub-section (1) shall not apply to the case of use consisting of the
application of a certification trade mark to goods or services, notwithstanding that they are
such goods or services as are mentioned in that clause if such application is contrary to the
regulations referred to in that clause.
(3) Where a certification trade mark is one of two or more trade marks registered under
this Act, which are identical or nearly resemble each other, the use of any of those trade marks
in exercise of the right to the use of that trade mark given by registration, shall not be deemed
to be an infringement of the right so given to the use of any other of those trade marks.

Cancellation or Varying of Registration of Certification Trademarks

77. The Registrar may, on the application in the prescribed manner of any person
aggrieved and after giving the proprietor an opportunity of opposing the application, make
such order as he thinks fit for expunging or varying any entry in the register to a certification
trade mark, or for varying the regulations, on any of the following grounds, namely:—
(a) That the proprietor is no longer competent, in the case of any of the goods or
services in respect of which the mark is registered, to certify those goods or services;
(b) That the proprietor has failed to observe any provisions of the regulations to be
observed on his part;
(c) That it is no longer to the public advantage that the mark should remain registered;
(d) That it is requisite for the public advantage that if the mark remains registered, the
regulations should be varied.

Rights Conferred by Registration of Certification Trade Marks

78.—(1) Subject to the provisions of sections 34, 35 and 76, the registration of a person
as a proprietor of certification trade mark in respect of any goods or services, shall, if valid,

give to that person the exclusive right to the use of the mark in relation to those goods or
services.
(2) The exclusive right to the use of a certification trademark given under
sub-section (1) shall be subject to any conditions and limitations to which the registration is
subject.

 

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