Part III of the Trade Marks Act (Chapter 385) establishes the Register and makes it the source of proof for everything the Act does.
Section 6 — the Register, in two Parts
(1) The Registrar shall establish and maintain a Register of Trade Marks, in which shall be entered particulars of all registered trade marks and such other matters as are prescribed.
(2) The Register shall be divided into two parts, known as Part A and Part B.
The division matters. Part A is for marks that already satisfy one of the essential particulars in section 15, including distinctiveness; Part B is for marks capable of becoming distinctive through use. The rights differ — see Part A and Part B compared.
Section 7 — trusts are not entered
A notice of trust, express, implied or constructive, shall not be entered in the Register or be received by the Registrar.
The Register records who is the registered proprietor, not who holds the beneficial interest behind them. A trustee is entered as proprietor; the trust is invisible to the Register.
That keeps searches straightforward, but it means anyone dealing with a registered mark cannot discover a trust from the Register — and anyone holding a beneficial interest must protect it by contract, because there is no equivalent of a caveat under this Act.
Section 8 — inspection
The Register shall be available for inspection by any person, on payment of the prescribed fee, during such hours as the office of the Registrar is open for public business.
Any person — no standing requirement, no need to show an interest. That is what makes a clearance search possible before adopting a mark, and it is the first step before applying or before opposing someone else’s application.
Under section 24, a mark that is substantially identical with or deceptively similar to a mark already registered for the same goods, or goods of the same description, is not registrable. And under section 53, using such a mark in the course of trade can infringe.
A search costs a fee. Rebranding after a demand letter costs a great deal more.
Sections 9 and 10 — certificates, and the Register as evidence
(a) issue copies of or extracts from entries in the Register, or other documents or publications in his office, certified under his hand and seal; and
(b) certify under his hand and seal that an entry, act, matter or thing required or authorised by the Act to be made or done, has or has not been made or done.
(1) The Register is evidence of all matters required or authorised by this Act to be entered in it.
(2) A certified copy or extract issued under section 9 is admissible in evidence in all courts and proceedings without further proof or production of the original.
(3) A certificate of the Registrar under section 9 is evidence of the statements contained in it.
To sue for infringement you must prove your registration. Section 10(2) lets you do it with a certified extract — no witness from the Registry, no production of the original Register.
Section 50 goes further: in all legal proceedings relating to a registered trade mark, the original registration is prima facie evidence of its validity. And under section 52, a Part A registration becomes conclusive after 10 years in the circumstances there stated. Section 89 provides for a certificate of validity from the Court.
Section 4 completes the picture: courts take judicial notice of the Registrar’s signature and seal.
Section 11 — alteration on the proprietor’s application
(a) correcting an error in the entry;
(b) entering a change of name, address or description of the registered proprietor;
(c) cancelling the entry of a trade mark;
(d) amending the specification of goods — but so that the amendment does not in any way extend the rights given by the registration; or
(e) entering a disclaimer or memorandum that does not in any way extend the rights given.
Under section 11(3) the Registrar may also correct an error or enter a change in the name, address or description of a registered user. A person aggrieved by a decision under section 11 may appeal to the Court (s 11(2)).
Paragraphs (d) and (e) both carry the same limit: the amendment must not in any way extend the rights given by the registration. The specification may be narrowed, never widened. Broader protection requires a fresh application, with a fresh date.
The same principle governs section 12: a registered mark may be altered only in a manner not substantially affecting its identity.
Keeping your entry current
- Notify changes of name and address under section 11(1)(b). Section 96 requires the address of the registered proprietor or registered user to be kept up to date, and section 97 deals with the address for service.
- Diary the renewal. Under sections 60 to 63, registration must be renewed; there is a procedure on expiry and a power of restoration, and an un-renewed mark has a defined status for a period.
- Register assignments under section 74, and registered users under section 64.
- Use the mark. Three years of continuous non-use exposes the registration to removal under section 14.
- Keep a certified extract for enforcement; it is admissible without further proof.
Section 13 — rectification by the Court
Where an entry is wrong and the proprietor will not fix it, the Court may order rectification on the application of the Registrar or a person aggrieved — including by removing a registration from Part A to Part B (s 13(3)). Notice of such an application must be given to the Registrar, who may appear and be heard, and shall appear if the Court so directs (s 13(5)).
Sources
- Trade Marks Act (Chapter 385) — ss 4, 6–14, 15, 16, 24, 50, 52, 53, 60–63, 64, 74, 89, 96, 97
- Constitution — s 51
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.