Identical trade marks
Identical trade marks
23.—(1)  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 or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of —
(a)the same goods;
(b)the same description of goods; or
(c)services or a description of services which are associated with those goods or goods of that description.
(2)  Except as provided by section 25, no trade mark shall be registered in respect of any services or description of services that is identical with or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect of —
(a)the same services;
(b)the same description of services; or
(c)goods or a description of goods which are associated with those services or services of that description.
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Rival claims to identical trade marks
24.  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 —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
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, on an appeal, by the court.
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Concurrent use
25.  In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar make it proper to do so, the court or the Registrar, as the case may be, may permit the registration by more than one proprietor, in respect of —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
of trade marks that are identical or nearly resemble each other, subject to such conditions and limitations as the court or the Registrar, as the case may be, may think it right to impose.
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Association of trade marks
26.—(1)  Where a trade mark that is registered, or is the subject of an application for registration, in respect of any goods or services 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 —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or description of goods and services which are associated with each other,
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 or services 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.
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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.—(1)  Where a person who claims to be the proprietor of several trade marks for the same goods of the same description within a single class, for the same services or for services of the same description within a single class, seeks to register those trade marks and the trade marks, although they resemble each other in material particulars, differ in respect of —
(a)statements or representations as to the goods or services in respect of which the trade marks are used or proposed to be used;
(b)statements or representations as to number, price, quality or names of places;
(c)other matter which is not distinctive and does not substantially affect the identity of the trade marks; or
(d)colour,
or in respect of any two or more of those matters, the trade marks may be registered as a series in one registration.
(2)  All the trade marks in a series of trade marks so registered shall be deemed to be, and shall be registered as, associated trade marks.
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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 or services in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions.
(2)  The use of a trade mark by a registered user thereof in relation to goods or services 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.
(3)  The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used 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.
(4)  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.
(5)  Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor shall apply in writing to the Registrar in the prescribed manner and shall furnish the following particulars:
(a)the identity of the trade mark;
(b)the name and address of the user;
(c)the goods or services to which the user agreement applies;
(d)the particulars showing the degree of control by the proprietor over the permitted use;
(e)any restrictions on the use of the trade mark by the user; and
(f)the length of permitted use, and, if for a period, the duration and the date of termination of the user agreement thereof.
(6)  When the requirements of subsection (5) 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 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 or services as to which he is so satisfied subject as aforesaid.
(7)  The Registrar may refuse an application under this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.
(8)  The proprietor of a trade mark shall maintain control over the use of the trade mark and the quality of the goods or services provided by the registered user.
(9)  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 or services 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, registered user or assignee 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 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 the rights vested in the applicant by virtue of a contract in the performance of which he is interested.
(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 or services 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)  Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.
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