68.—(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person:| Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified. |
| | In determining whether a mark is adapted to distinguish as aforesaid, the Registrar may have regard to the extent to which — |
| | (a) | the mark is inherently adapted to distinguish as aforesaid in relation to the goods in question; and |
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| | (b) | by reason of the use of the mark or of any other circumstances, the mark is in fact adapted to distinguish as aforesaid in relation to the goods in question. |
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(2) Subject to subsections (3) to (5), and sections 48 and 52, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give 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 person authorised by him under the regulations in that behalf using it in accordance therewith, 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 by his authorisation under the relevant regulations to use the trade mark or to goods certified by the proprietor. |
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| (3) The right to the use of a certification 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. |
(4) The right to the use of a certification 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 certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade 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 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 that the goods are certified by the proprietor:| Provided that paragraph (a) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are mentioned in that paragraph, if the application is contrary to the relevant regulations. |
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| (5) Where a certification trade mark is one of two or more registered trade marks 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. |
| (6) An application for the registration of a mark under this section shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof. |
| (7) Section 11(2) to (6) shall have effect in relation to an application under this section as it has effect in relation to an application under section 11(1). |
| (8) In dealing under section 11(2) to (6) with an application under this section the Registrar shall have regard to the like considerations, so far as relevant, as if the application were an application under section 11 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 such a trade mark. |
| (9) An applicant for the registration of a mark under this section shall transmit to the Registrar draft regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the trade mark, and may contain any other provisions that the Registrar may 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 trade mark in accordance with the regulations). Such regulations, if approved, shall be deposited with the Registrar and shall be open to inspection in like manner as the register. |
(10) The Registrar shall consider the application with regard to the following matters:| (a) | whether the applicant is competent to certify the goods in respect of which the mark is to be registered; | | (b) | whether the draft regulations are satisfactory; and | | (c) | whether in all the circumstances the registration applied for would be to the public advantage; |
| (i) | refuse to accept the application; or | | (ii) | accept the application and approve 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 may think requisite having regard to any of the matters aforesaid, |
| but, except in the case of acceptance and approval without modification and unconditionally, the Registrar shall not decide the matter without giving to the applicant an opportunity of being heard: |
| Provided that the Registrar may, at the request of the applicant, consider the application with regard to any of the matters aforesaid, except that the Registrar shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations. |
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(11) When an application has been accepted, the Registrar shall, as soon as possible after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and section 19 shall have effect in relation to the registration of the mark as if the application had been an application under section 11:| Provided that, in deciding under those provisions, the Registrar shall have regard only to the considerations referred to in subsection (8), and a decision under those provisions in favour of the applicant shall be conditional on the determination in his favour by the Registrar under subsection (12) of any opposition relating to any of the matters referred to in subsection (10). |
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| (12) When notice of opposition is given relating to any of the matters referred to in subsection (10), the Registrar shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted. |
| (13) (a) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Registrar. |
| (b) The Registrar may cause an application for his consent to be advertised in any case where it appears to him that it is expedient to do so, and, where the Registrar causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar of opposition to the application, the Registrar shall not decide the matter without giving the parties an opportunity of being heard. |
(14) (a) The court may, on the application in the prescribed manner of any person aggrieved, or on the application of the Registrar, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground —| (i) | that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods; | | (ii) | that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part; | | (iii) | that it is no longer to the public advantage that the trade mark should be registered; or | | (iv) | that it is requisite for the public advantage that if the trade mark remains registered, the regulations should be varied, |
| and the court shall not have any jurisdiction to make an order under section 39 on any of those grounds. |
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| (b) The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under paragraph (a). |
| (15) Notwithstanding anything in section 56(2), the Registrar shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or to authorise the use of the trade mark. |
(16) The following provisions of this Act do not have effect in relation to a certification trade mark:| (a) | sections 10, 11, 18 and 19 (except as expressly applied by this section), 30, 40, 41, 42(4) to (8), 45, 51 and 72(2); and | | (b) | any provisions the operation of which is limited by the terms thereof to registration in Part B of the register. |
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