(1) Any person being the registered proprietor of a trade mark in the United Kingdom by virtue of an entry in the register of trade marks kept under the Trade Marks Act, 1938, or any Act amending or substituted for that Act, or any person deriving title from such registered proprietor by assignment or other mode of transfer, may apply at any time during the existence of the registration in the United Kingdom to have such trade mark registered in Saint Lucia in respect of some or all of the goods or services comprised in the United Kingdom registration.
(2) An application for registration of a trade mark under this article shall be made to the Registrar and accompanied by a certified representation of the trade mark and a certificate of the Comptroller General of the United Kingdom Patent Office (under his or her title of Registrar of Trade Marks) giving full particulars of the registration of the trade mark in the United Kingdom.
(3) Upon such application being lodged, together with the documents mentioned in the preceding paragraph of this article, the Registrar shall enter the prescribed particulars in the register, and shall issue a Certificate of Registration to the applicant, who shall then be the registered proprietor in Saint Lucia of the trade mark in respect of the goods or services entered in the register.
(4) Subject to the provisions of this article, a registered proprietor shall have in Saint Lucia such privileges and rights in the use of the trade mark in respect of the goods or services entered in the register as mutatis mutandis would be conferred on him or her by the law for the time being in force in the United Kingdom.
(5) The privileges and rights conferred by paragraph 4 of this article shall date from the date of registration in the United Kingdom and shall continue in force, subject to the provisions of paragraph 13 of this article, for so long as the registration in the United Kingdom remains in force in respect of the goods or services for which the trade mark is registered in Saint Lucia:
Provided that no action for infringement of the trade mark shall be entertained in respect of any use of the trade mark prior to the date of issue of the Certificate of Registration in Saint Lucia.
(6) Nothing in this article shall be deemed to affect any right of action against any person for passing off goods or services as those of another person or any remedy in respect thereof.
(7) The Court shall have power, upon the application of any person who alleges that his or her interests have been prejudicially affected by the issue of a Certificate of Registration, to declare on any of the grounds mutatis mutandis on which the United Kingdom registration might be cancelled under the law for the time being in force in the United Kingdom that the exclusive privileges and rights have not been acquired.
(8) Subject to the provisions of this article, where a person becomes entitled by assignment or other mode of transfer to the privileges and rights conferred on a registered proprietor by this article, the Registrar shall, on application being made in the prescribed manner, and on proof of title to his or her satisfaction, cause such person to be entered in the register as subsequent registered proprietor of the trade mark.
(9) Any person entered in the United Kingdom Register of Trade Marks under section 28 of the Trade Marks Act, 1938, as a registered user in respect of any goods or services of a trade mark in respect of which a Certificate of Registration under this article is in force may apply to be registered in Saint Lucia as a registered user of the mark in respect of some or all of such goods or services, subject to any conditions or restrictions entered in the United Kingdom Register.
(10) Upon such application being lodged, together with a certificate of the United Kingdom Registrar of Trade Marks giving full particulars of the entry in the United Kingdom Register under the said section 28, the Registrar shall cause the applicant to be entered in the register of Saint Lucia as a registered user of the trade mark, and on such entry the registered user shall be entitled in Saint Lucia, subject to the aforesaid conditions and restrictions, to such privileges and rights in respect of the goods or services for which he or she is entered as mutatis mutandis would be conferred on him or her by the law for the time being in force in the United Kingdom.
(11) The Cabinet may make such rules and so such things as it may think expedient, subject to the provisions of this article, for regulating procedure under this article, and prescribing the fees to be paid in respect of proceedings under this article, and generally for prescribing anything which by this article is to be prescribed.
(12) (a) There shall be kept in the Registrar's Office a registrar in which shall be entered in the prescribed form all matters which are by this article required to be registered.
(b)Such register shall be opened to inspection at all hours during which the Registrar's Office is open.
(13) If the registration in the United Kingdom of a trade mark registered under this article is renewed, the registered proprietor may, within such time after the date of renewal in the United Kingdom as may be prescribed, notify by the Registrar, who shall then on sufficient evidence thereof and on payment of the prescribed fee, renew the registration in the register in the prescribed manner. If the registration in the register is not so renewed it shall be cancelled by the Registrar.
(14) The Registrar may, on request in writing made by the registered proprietor, and on payment of the prescribed fee—
(a) cancel the registration of a trade mark or of a registered user thereunder either wholly or as regards any particular goods or services in respect of which the trade mark or the registered user is registered;
(b) correct any clerical error in or in connection with any application under this article or in any matter which is entered in the Register;
(c) enter in the register any change in the name, description or address of the person who is registered as proprietor or user of a trade mark.
(Amended by Act 14 of 1989)
Special Trade Marks