Revised Laws of Saint Lucia (2021)

691A.   Defensive registration of well known trade marks

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    (1)   Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods or services in respect of which it is registered and in relation to which it has been used that use thereof in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade between those goods or services and a person entitled to use the trade mark between those goods or services and a person entitled to use the trade mark in relation to the first-mentioned goods or services, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods or services does not use or propose to use the trade mark in relation to those other goods or services and notwithstanding anything in article 698, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the first-mentioned goods or services, be registered in his or her name in respect of those other goods or services as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under article 698.

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    (2)   The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods or services as a defensive trade mark notwithstanding that it is already registered in his or her name in respect of those goods or services otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods or services otherwise than as a defensive trade mark notwithstanding that it is already registered in his or her name in respect of those goods or services as a defensive trade mark, in lieu in each case of the existing registration.

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    (3)   A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods or services, be deemed to be, and shall be registered as, associated trade marks.

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    (4)   On application by any person aggrieved to the Court, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of paragraph (1) of this article are no longer satisfied in respect of any goods or services in respect of which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods or services in respect of which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods or services would be taken as giving the indication mentioned in paragraph (1) of this article.

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    (5)   The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.

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    (6)   Except as otherwise expressly provided in this article, the provisions of this Title shall apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.

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    (Amended by Act 14 of 1989)