Second Schedule — TRADEMARKS ACT *

CERTIFICATION MARKS

General

1. The provisions of this Act apply to certification marks

subject to the following provisions which may, by regulations, be

amended by the Minister.

Signs of which a certification mark may consist

2. In relation to a certification mark the reference in the

definition of "trademark" in article 2 to distinguishing goods or

services of one undertaking from those of other undertakings shall

be construed as a reference to distinguishing goods or services

which are certified from those which are not.

Indication of geographical origin

3. Notwithstanding article 4(1)(c), a certification mark which

consists of signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services may be

registered

Provided that the proprietor of such a mark is not entitled

to prohibit the use of the signs or indications in accordance with

honest practices in industrial or commercial matters (in particular,

by a person who is entitled to use a geographical name).

Nature of proprietor’s business

4. A certification mark shall not be registered if the proprietor

carries on a business involving the supply of goods or services of

the kind certified.

Mark not to be misleading as to character or significance

5. (1) A certification mark shall not be registered if the

public is liable to be misled as regards the character or significance

of the mark, in particular if it is likely to be taken to be something

other than a certification mark.

(2) The Comptroller may accordingly require that a mark in

respect of which application is made for registration includes some

indication that it is a certification mark, and notwithstanding the

provisions of article 36(2), an application may be amended so as to

comply with any such requirement.

Regulations governing use of certification mark

6. An applicant for registration of a certification mark must

file with the Comptroller regulations governing the use of the mark

specifying the person authorised to use the mark, the characteristics

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to be certified by the mark, how the certifying body is to test those

characteristics and to supervise the use of the mark, the fees (if

any) to be paid in connection with the operation of the mark and the

procedures for resolving disputes and any further requirements

with which the regulations have to comply as may be established by

any rule made by the Minister.

Approval of regulations, etc.

7. (1) A certification mark shall not be registered unless -

(a) the regulations governing the use of the mark -

(i) comply with paragraph 6(2) and any further

requirements imposed by rules, and

(ii) are not contrary to public policy or to accepted

principles of morality, and

(b) the applicant is competent to certify the goods or

services for which the mark is to be registered.

(2) The application shall be deemed to be withdrawn if before

the end of any period as may be prescribed after the date of the

application for registration of a certification mark, the applicant

fails to file the regulations with the Comptroller and pay the

prescribed fee.

8. (1) The Comptroller shall consider

whether

the

requirements mentioned in paragraph 7(1) are met.

(2) If it appears to the Comptroller that those requirements are

not met, he shall inform the applicant and give him an opportunity,

within such period as the Comptroller may specify, to make

representations or to file amended regulations.

(3) If the applicant fails to satisfy the Comptroller that those

requirements are met, or to file regulations amended so as to need

them, or fails to respond before the end of the specified period, the

Comptroller shall refuse the application.

(4) If it appears to the Comptroller that those requirements,

and the requirements for registration are met, he shall accept the

application and shall proceed in accordance with article 37.

Regulations to be open to inspection

9. The regulations governing the use of a registered

certification mark shall be open to public inspection in the same

way as the register.

Amendment of regulations

10. An amendment of the regulations governing the use of a

registered certification mark is not effective unless and until the

amended regulations are filed with the Comptroller and accepted by

him.

Consent to assignment of registered certification mark

11. The assignment or other transmission of a registered

certification mark is not effective without the consent of the

Comptroller.

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Infringement: right of authorised users

12. The provisions of sub-article (6) of article 10 and of sub-

article (2) of article 19 apply in relation to an authorized user of a

registered certificate mark as in relation to a licensee of a

trademark.

13. In infringement proceedings brought by the proprietor of a

registered certification mark any loss suffered or likely to be

suffered by authorised users shall be taken into account by the

Court which shall give such directions as it thinks fit with regard to

the disposal and distribution of any sum awarded as a remedy for

infringement.

Grounds for revocation of registration

14. Apart from the grounds of revocation provided for in

article 42, the registration of a certification mark may be revoked

on the ground -

(a) that the proprietor has begun to carry on such a

business in contravention of paragraph 4,

(b) that the manner in which the mark has been used by

the proprietor has caused it to become liable to mislead

the public in the manner referred to in paragraph 5(1),

(c) that the proprietor has failed to observe, or to secure

the observance of the regulations governing the use of

the mark,

(d) that an amendment of the regulations has been made so

that the regulations -

(i) no longer comply with paragraph 6, or

(ii) are contrary to public policy or to accepted

principles of morality,

(e) that the proprietor is no longer competent to certify the

goods or services for which the mark is registered.

Grounds for invalidity of registration

15. Apart from the grounds of invalidity provided for in article

43, the registration of a certification mark may be declared invalid

on the ground that the mark was registered in breach of the

provisions of paragraph 4, 5(1) or 7(1) of this Schedule.

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