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9 1963

TRADE MARKS ACT, 1963

FIRST SCHEDULE.

Certification Trade Marks.

Section 45 .

1. (1) An application for the registration of a mark under section 45 of this Act must be made to the Controller in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof.

(2) The provisions of subsection (2) and of subsections (4) to (8) of section 25 of this Act shall have effect in relation to an application under the said section 45 as they have effect in relation to an application under subsection (1) of the said section 25, except that for references therein to acceptance of an application there shall be substituted references to authorisation to proceed with the application.

(3) In dealing under the said provisions with an application under the said section 45, the Court or the Controller (as the case may be) shall have regard to the like considerations so far as relevant, as if the application were an application under the said section 25 of this Act and to any other considerations (not being matters within the competence of the Minister under subparagraph (5) of this paragraph) relevant to applications under the said section 45, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.

(4) An applicant for the registration of a mark under the said section 45 shall transmit to the Controller draft regulations for governing the use thereof at such time before the decision of the Controller on the application as he may require in order to enable him to consider the draft, and the Controller shall report thereon to the Minister.

(5) When authorisation to proceed with an application has been given, the Minister shall consider the application with regard to the following matters, that is to say:—

(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;

and may either—

(i) direct that the application shall not be accepted; or

(ii) direct the Controller to 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 thinks requisite having regard to any of the matters aforesaid;

but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Minister shall not decide the matter without giving to the applicant an opportunity of being heard:

Provided that the Minister may, at the request of the applicant made with the concurrence of the Controller, consider the application with regard to any of the matters aforesaid before authorisation to proceed with the application has been given, so however that the Minister 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.

2. (1) When an application has been accepted, the Controller shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and the provisions of subsections (2) to (12) of section 26 of this Act shall have effect in relation to the registration of the mark as if the application had been an application under section 25 of this Act:

Provided that, in deciding under the said provisions, the Court or the Controller (as the case may be) shall have regard only to the considerations referred to in subparagraph (3) of paragraph 1 of this Schedule, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Minister under subparagraph (2) of this paragraph of any opposition relating to any of the matters referred to in subparagraph (5) of the said paragraph 1.

(2) When notice of opposition is given relating to any of the matters referred to in subparagraph (5) of paragraph 1 of this Schedule, the Minister 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.

3. (1) The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Controller with the consent of the Minister.

(2) The Minister may cause an application for his consent to be advertised in any case where it appears to him that it is expedient so to do, and, where the Minister causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to him of opposition to the application, he shall not decide the matter without giving the parties an opportunity of being heard.

4. (1) The Minister may, on the application in the prescribed manner of any person aggrieved or on the application of the Controller, make such order as he 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—

(a) 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;

(b) that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;

(c) that it is no longer to the public advantage that the trade mark should be registered; or

(d) that it is requisite for the public advantage that, if the trade mark remains registered, the regulations should be varied;

and neither the Court nor the Controller shall have any jurisdiction to make an order under section 40 of this Act on any of those grounds.

(2) The Controller shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under subparagraph (1) of this paragraph.

5. Notwithstanding anything in section 51 of this Act, the Controller 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.

6. The following provisions of this Act shall not have effect in relation to a certification trade mark, that is to say, section 12, section 14, section 17, sections 25 and 26 (except as expressly applied by this Schedule), subsections (4) to (7) of section 30, sections 34 to 37, section 66, and any provisions the operation of which is limited by the terms thereof to registration in Part B of the register.