A registration is only as useful as it is defensible. Sections 50 to 52 of the Trade Marks Act (Chapter 385) give a registered proprietor three progressively stronger protections.
Section 50 — the presumption
In legal proceedings relating to a registered trade mark, including applications under section 13, the original registration of the mark and the registration of any assignment or transmission of it shall be deemed to be valid unless the contrary is shown.
This reverses the burden. A plaintiff proves the registration — and under section 10(2) a certified copy or extract is admissible in all courts without further proof or production of the original. It is then for the challenger to displace the presumption.
Two details are worth noting. The section expressly covers section 13 rectification applications, so a person seeking to clear the Register carries the burden from the outset. And it covers the registration of an assignment or transmission, not just the original registration — useful for a purchaser of a mark.
Under section 9 the Registrar may issue certified copies and extracts and certificates that an act or matter has or has not been done. Under section 10(1) the Register is evidence of all matters required to be entered in it, and under section 10(3) a certificate is evidence of the statements in it. Under section 4, courts take judicial notice of the Registrar’s signature and seal. And under section 92 you need not set out a copy or description of the mark in a pleading — it may be identified by its registered number.
Section 51 — the three-year limitation, Part A only
In legal proceedings relating to a trade mark registered in Part A, including section 13 applications, instituted after the expiration of three years from the date of registration, the mark shall not be removed from the Register, or be held invalid on the ground that it was not a registrable trade mark under section 15, unless it is proved that it was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
After three years, an attack that the mark never satisfied section 15 — that it was a surname, a place name, or descriptive — is closed off. What remains open is the question whether the mark is distinctive now, at the commencement of the proceedings.
The three years runs from the date of registration, which under section 45 is the date the application was lodged.
The protection does not extend to Part B registrations, and it does not touch the other grounds — section 19, want of proprietorship, or non-use under section 14.
Section 52 — conclusive validity after 10 years
In legal proceedings relating to a trade mark registered in Part A, including section 13 applications, the original registration shall, after the expiration of 10 years from the date of the original registration, be taken to be valid in all respects, unless it is shown:
(a) that the original registration was obtained by fraud; or
(b) that the trade mark offends against the provisions of section 19; or
(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.
This is the strongest protection in the Act, and it is the reason to pursue Part A rather than settling permanently for Part B. But it is not absolute: three exceptions remain open indefinitely.
| Time | Part A | Part B |
|---|---|---|
| From registration | Presumed valid unless the contrary is shown (s 50) | Presumed valid unless the contrary is shown (s 50) |
| After 3 years | No attack on section 15 registrability, unless not distinctive now (s 51) | No equivalent |
| After 10 years | Valid in all respects, except fraud, s 19, and present non-distinctiveness (s 52) | No equivalent |
| Always open | Non-use (s 14); breach of a condition or limitation (s 13(2)); generic use (s 47) | The same, plus registrability at any time |
Both section 51 and section 52(c) leave open the question whether the mark is distinctive at the commencement of the proceedings. Time does not protect a mark that has stopped functioning as a mark — which is exactly what section 47 addresses when a word becomes the name of the article itself.
The practical answer is the same as it is everywhere in this Act: use the mark as a mark, consistently, alongside the generic name of the product, and keep the evidence.
Section 89 — a certificate of validity, and what it is worth
In an action or proceeding in which the validity of a registration is unsuccessfully disputed, the Court may certify that the validity of the registration came in question. If it does, then in a subsequent action or proceeding in which validity is disputed, the registered proprietor, on obtaining a final order or judgement in his favour, is entitled — unless the court otherwise directs — to his full costs, charges and expenses as between solicitor and client.
A proprietor who successfully defends a validity challenge should always ask the Court to certify under section 89. It converts the ordinary party-and-party costs entitlement in any later validity dispute into an entitlement to solicitor-and-client costs — a substantial deterrent to the next challenger, and a fact worth stating in any letter of demand.
If your registration is attacked
- Identify the exact ground. Section 15 registrability, section 19, fraud, want of proprietorship, breach of condition, non-use, or present non-distinctiveness — the available answers differ for each.
- Check the dates. More than three years since registration, and a Part A mark? Section 51 closes the section 15 ground. More than ten? Section 52 closes everything but the three exceptions.
- Produce the certified extract, and rely on section 50 to put the burden on the challenger.
- Prove present distinctiveness — sales, advertising, geographic spread, trade evidence. Section 57 makes evidence of the usages of the trade and of marks legitimately used by others admissible.
- Answer a non-use attack with use, remembering that under section 69(1) permitted use by a registered user is deemed use by the proprietor, that under section 30 use of an associated mark or of the mark with immaterial alterations may be accepted, and that under section 85 application of the mark to goods for export counts as use.
- Ask for a section 89 certificate when you win.
Sources
- Trade Marks Act (Chapter 385) — ss 4, 9, 10, 13–15, 19, 30, 45, 47, 50–52, 57, 69, 85, 89, 92
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.