Part 3TRADE MARKS AND TRADE MARK RIGHTS

PART 3—TRADE MARKS AND TRADE MARK RIGHTS What is a trade mark? 16. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so provided or dealt with by any other person. Note: For “sign” see section 5. Certain signs not to be used as trade marks etc. 17.(1) The regulations may provide that a sign specified in the regulations is not to be used as a trade mark or as part of a trade mark. (2) Regulations made under subsection (1) do not affect any trade mark that: (a) was a registered trade mark; or (b) in the case of an unregistered trade mark—was being used in good faith; immediately before the regulations were notified in the Gazette. Certain trade marks may be registered 18.(1) A trade mark may be registered in accordance with this Act in respect of: (a) goods; or (b) services; or (c) both goods and services. (2) The registration of a trade mark may be in respect of goods or services of one or more of the classes prescribed under subsection (3), (3) The regulations may prescribe the classes into which goods and services are to be divided for the purposes of this Act. Rights given by registration of trade mark 19.(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and services in respect of which the trade mark is registered. Note: For “use” see section 6. (2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed. Note: For what amounts to an infringement of a trade mark see Part 13. (3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark. Note: For “date of registration” see section 5. (4) If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations. (5) If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person. Nature of registered trade mark as property 20. A registered trade mark is personal property. Power of registered owner to deal with trade mark 21.(1) The registered owner of a trade mark may, subject only to any rights vested in another person. deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing. (2) This section does not protect a person who deals with the registered owner otherwise than: (a) as a purchaser in good faith for value; and (b) without notice of any fraud on the part of the owner. (3) Equities in respect of a trade mark may be enforced against the registered owner in the same way as equities in respect of any other personal property. Limitation on rights if similar trade marks etc. registered by different persons 22. If trade marks that are substantially identical or deceptively similar have been registered by more than one person, (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first-mentioned owner is authorised to do so under the registration of his or her trade mark. Note: For “deceptively similar” see section 9. Trade mark consisting of sign that becomes accepted as sign describing article etc. 23.(1) This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes well known, or becomes accepted generally, as the sign that describes or is the name of an article, substance or service. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (b) is taken to have ceased to have those exclusive rights from and including the day determined by the court under subsection (4). (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (b) is taken to have ceased, to have, those exclusive, rights from the day determined by the court under subsection (4). (4) For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became well known or generally accepted as the sign that describes or is the name of the article, substance or service. Trade mark relating to article etc. formerly manufactured under patent 24.(1) This section applies if: (a) a registered trade mark consists of, or contains, a sign that describes or is the name of: (i) an article or substance that was formerly exploited under a patent; or (ii) a service that was formerly provided as a patented process; and (b) it is at least 2 years since the patent has expired or ceased; and (c) the sign is the only commonly known way to describe or identify the article, substance or service. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased.