Identical trade marks
Identical trade marks
23.  Except as provided by section 25, no trade mark shall be registered in respect of any goods or description of goods that is identical with one belonging to a different proprietor and already on the register in respect of the same goods or description of goods or so nearly resembling such a trade mark as to be likely to deceive or cause confusion.
Rival claims to identical trade marks
24.  Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar 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.
Concurrent user
25.  In case of honest concurrent user or of other special circumstances, which in the opinion of the court or of the Registrar make it proper to do so, the court or the Registrar may permit the registration of trade marks which are identical or nearly resemble each other for 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 Registrar, as the case may be, may think it right to impose.
Association of trade marks
26.—(1)  Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark which 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 Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.
(2)  On application made in the prescribed manner by the registered proprietor of two or more associated trade marks, the Registrar 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.
(3)  Any decision of the Registrar under this section shall be subject to appeal to the court.
Combined trade marks
27.  If the proprietor of a trade mark claims to be entitled to the exclusive use of any portion of the trade mark separately, he may apply to register the same as separate trade marks. Each such separate trade mark shall satisfy all the conditions and shall have all the incidents of an independent trade mark, except that when registered it and the trade mark of which it forms a part shall be deemed to be associated trade marks, and shall be entered on the register as such, but the user of the whole trade mark shall for the purposes of this Act be deemed to be also a user of such registered trade marks belonging to the same proprietor as it contains.
Series of trade marks
28.  When a person claiming to be the proprietor of several trade marks for 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 for which they are respectively used or proposed to be used;
(b)statements of number, price, quality or names of places;
(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. All trade marks so registered shall be deemed to be and shall be registered as associated trade marks.
Assignment and user of associated trade marks
29.  Associated trade marks shall be assignable or 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:
     Provided that —
(a)where under the provisions of this Act user of a registered trade mark is required to be proved for any purpose, the court or the Registrar may, if and so far as it or he thinks right, accept user of an associated registered trade mark, or of the trade mark with additions and alterations not substantially affecting its identity, as an equivalent for such user; and
(b)the foregoing provisions apply in relation to proof of use of any registered trade mark and not in relation only to proof of use of a trade mark which is one of two or more associated trade marks.
Registered users
30.—(1)  Subject to this section, a person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.
     The use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is referred to in this Act as the “permitted use” thereof.
(2)  The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor, for the purposes of section 40 and for any other purpose for which such use is material under this Act or at common law.
(3)  Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the proprietor thereof to take proceedings to prevent infringement thereof, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant. A proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(4)  Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed registered user shall apply in writing to the Registrar in the prescribed manner and shall furnish him with a statutory declaration made by the proprietor, or by some person authorised to act on his behalf and approved by the Registrar —
(a)giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made;
(b)stating the goods in respect of which registration is proposed;
(c)stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter; and
(d)stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof,
and with such further documents, information or evidence as may be required under the rules made under this Act or by the Registrar.
(5)  When the requirements of subsection (4) have been complied with, if the Registrar, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark in relation to the proposed goods or any of them by the proposed registered user, subject to any conditions or restrictions which the Registrar thinks proper, would not be contrary to the public interest, the Registrar may register the proposed registered user as a registered user in respect of the goods as to which he is so satisfied subject as aforesaid.
(6)  The Registrar shall refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.
(7)  The Registrar shall, if so required by an applicant, take steps for ensuring that information furnished for the purposes of an application under this section (other than matter entered in the register) is not disclosed to rivals in trade.
(8)  Without prejudice to section 39, the registration of a person as a registered user —
(a)may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions subject to which, it has effect, on the application in writing in the prescribed manner of the registered proprietor of the trade mark to which the registration relates;
(b)may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered proprietor or of the registered user or of any other registered user of the trade mark; or
(c)may be cancelled by the Registrar on the application in writing in the prescribed manner of any person on any of the following grounds:
(i)that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion;
(ii)that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration;
(iii)that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.
(9)  Provision shall be made by rules made under this Act for the notification of the registration of a person as a registered user to any other registered user of the trade mark, and for the notification of any application under subsection (8) to the registered proprietor and each registered user (not being the applicant) of the trade mark, and for giving to the applicant on such an application and to all persons to whom such application is notified and who intervene in the proceedings in accordance with those rules an opportunity of being heard.
(10)  The Registrar may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods in respect of which the trade mark is no longer registered.
(11)  Any decision of the Registrar under this section shall be subject to appeal to the court.
(12)  Where a person is registered as a registered user of a trade mark on an application made within 6 months from the commencement of this Part, subsection (2) shall have effect in relation to any previous use (whether before or after the commencement of this Act) of the trade mark by that person, being use in relation to the goods in respect of which he is registered and, where he is registered subject to conditions or restrictions, being use such as to comply substantially therewith, as if such previous use had been permitted use.
(13)  Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.