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Revised Laws of Saint Lucia
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TRADE MARKS ACT
Revised Laws of Saint Lucia (2023)
Back to Revised Laws of Saint Lucia (2023)
TRADE MARKS ACT
ACT
PART 1 PRELIMINARY
1. Short title
1. Citation
Schedule 1
Schedule 2
Schedule 3
Schedule 4
PART 1 COSTS
PART 2 EXPENSES AND ALLOWANCES
Schedule 5
Schedule 6
PART 2 INTERPRETATION
2. Interpretation
PART 3 TRADE MARKS AND TRADE MARK RIGHTS
3. Categories of trade marks
4. Rights given by registration of trade marks
5. Nature of registered trade mark as property
6. Power of registered owner to deal with trade mark
7. Limitation on rights for similar trade marks
8. Trade mark as sign describing article
9. Trade mark relating to article etc. formerly manufactured under patent
10. Powers of authorised user of registered trade mark
PART 4 APPLICATION FOR REGISTRATION
11. Making of application
12. Application by joint owners
13. Claim for priority
14. Notice of application to be published
15. Registrar to examine, and report on, application
16. Registrar to decide on disputed classification of goods etc.
17. Application accepted or rejected
18. Notice etc. of decision
19. Appeal
20. Deferment of acceptance
21. Lapsing of application
22. Revocation of acceptance
23. Trade mark containing certain signs
24. Trade mark that cannot be represented graphically
25. Trade mark not distinguishing applicant's goods or services
26. Trade mark scandalous or its use contrary to law
27. Trade mark likely to deceive or cause confusion
28. Identical etc. trade marks
29. Definition of divisional application
30. Divisional application possible only if initial application is pending
31. Divisional application for registration of part of trade mark
32. Divisional application for registration of trade mark in respect of some of goods etc.
33. Divisional application for registration of trade mark in respect of goods etc. excluded from the initial application
34. Filing date
35. Application—series of trade marks
PART 5 OPPOSITION TO REGISTRATION
36. Opposition
37. Proceedings in name of a person other than the person who filed the notice
38. Opposition proceedings
39. Decision
40. Appeal
41. Registration may be opposed on same grounds as for rejection
42. Applicant not owner of trade mark
43. Applicant not intending to use trade mark
44. Trade mark similar to trade mark that has acquired a reputation
45. Trade mark containing or consisting of a false geographical indication
46. Application etc. defective etc.
PART 6 AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND OTHER DOCUMENTS
47. Amendment of application for registration of trade mark
48. Amendment before notice of application is published
49. Amendment after notice of application has been published
50. Amendment of other documents
51. Appeal
PART 7 REGISTRATION OF TRADE MARKS
52. Obligation to register
53. Registration—how effected
54. Colours in registered trade marks
55. Notification of registration
56. Date and term of registration
57. Ceasing of registration
58. Disclaimers
59. Request for renewal
60. Notice of renewal date
61. Renewal before registration expires
62. Failure to renew
63. Renewal within 12 months after registration expires
64. Status of un-renewed trade mark
PART 8 AMENDMENT AND CANCELLATION OF REGISTRATION
65. Correction of register
66. Adaptation of classification
67. Amendment of particulars of trade mark entered in Register
68. Cancellation of registration
69. Amendment to correct error or omission
70. Amendment or cancellation on ground of contravention of condition etc.
71. Amendment or cancellation—loss or exclusive rights to use trade mark
72. Amendment or cancellation—other specified grounds
73. Rectification may not be granted in certain cases if registered owner not at fault etc.
74. Duties and powers of Registrar
75. Amendment of certificate of registration
PART 9 REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE
76. Application for removal of trade mark from Register etc.
77. Time for making application
78. Referral to court
79. Notification of application
80. Notice of opposition
81. Removal of trade mark from the Register etc. if application unopposed
82. Trade mark restored to Register if notice of opposition filed within extended time
83. Proceedings before Registrar
84. Burden on opponent to establish use of trade mark etc.
85. Determination of opposed application-general
86. Determination of opposed application-localised use of trade mark
87. Registrar to comply with order of court
88. Appeal
89. Certificate—use of trade mark
PART 10 ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
90. Assignment etc. of trade mark
91. Applications for record to be made of assignment etc. of trade mark whose registration is sought
92. Recording of assignment etc. of trade mark whose registration is sought
93. Application for record of assignment etc. of registered trade mark to be entered in Register
94. Recording of assignment etc. of registered trade mark
95. Notice of application to be given to person recorded as claiming interest in trade mark etc.
PART 11 VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN RESPECT OF TRADE MARKS
96. Object of Part
97. Application to have claims to interest etc. recorded
98. Record of claims to interest etc.
99. Amendment and cancellation
100. Record not proof etc. of existence of right etc.
101. Application to have claims to interest etc. recorded
102. Record of claims to interest etc.
103. Amendment and cancellation
PART 12 INFRINGEMENT OF TRADE MARKS
104. Infringement of trade mark
105. Infringement of trade mark by breach of certain restrictions
106. Goods etc. to which registered trade mark has been applied by or with consent of registered owner
107. Prior use of identical trade mark etc.
108. What courts may hear action for infringement of registered trade mark
109. What relief can be obtained from court
110. Special case—plaintiff not entitled to damages etc.
111. Circumstances in which action may not be brought
112. Groundless threats of legal proceedings
113. Counterclaim by defendant in action on groundless threats
PART 13 IMPORTATION OF GOODS INFRINGING SAINT LUCIAN TRADE MARKS
114. Object of Part
115. Notice of objection to importation
116. Comptroller may seize goods infringing trade mark
117. Notice of seizure
118. Forfeiture of goods
119. Release of goods to owner-no action for infringement
120. Action for infringement of trade mark
121. Action for infringement by authorised user
122. Disposal of forfeited goods
123. Power of Comptroller to retain control of goods
124. Insufficient security
125. Government not liable for loss etc. suffered because of seizure
126. Power to require information
PART 14 OFFENCES
127. Falsifying etc. a registered trade mark
128. Falsely applying a registered trade mark
129. Manufacture and possession of die etc. for use in commission of offence
130. Selling etc. goods with false marks
131. Penalty for offence under section 127, 128, 129 or 130
132. False representations regarding trade marks
133. False entries in Register etc.
134. Disobeying summons etc.
135. Refusing to give evidence etc.
136. Unauthorised persons not to act in trade mark matters
137. False representation about Registry of Companies and Intellectual Property
138. Employee not to prepare documents etc.
139. Conduct of directors, servants and agents
PART 15 COLLECTIVE TRADE MARKS
140. Object of Part
141. Collective trade mark
142. Application of Act
143. Application for registration
144. Limitation on rights given by registered collective trade mark
145. Assignment etc. of collective trade mark
146. Infringement of collective trade mark
PART 16 CERTIFICATION TRADE MARKS
147. Object of Part
148. Certification trade mark
149. Application of Act
150. Rights given by registration of a certification trade mark
151. Rights of persons allowed to use certification trade mark
152. Rules governing the use of certification trade marks
153. Grant of application to register
154. Refusal to register
155. Variation of rules
156. Rules to be available for inspection
157. Assignment of registered certification trade mark
158. Rectification of the Register by order of court
159. Variation of rules by order of court
160. Copy of order and rules
PART 17 DEFENSIVE TRADE MARKS
161. Object of Part
162. Defensive trade mark
163. Application of Act
164. Additional grounds for rejecting application for registration or opposing registration
165. Amendment or cancellation of registration by order of court
166. Cancellation of registration by Registrar
PART 18 JURISDICTION AND POWERS OF COURTS
167. Jurisdiction of the High Court
168. Transfer of proceedings
169. Appeals
170. Registrar may appear in appeals
171. Powers of High Court
PART 19 ADMINISTRATION
172. Registrar of Companies and Intellectual Property
173. Registrar's powers
174. Exercise of power by Registrar
175. Registrar to act as soon as practicable
176. Deputy Registrar
177. Delegation of Registrar's powers and functions
PART 20 THE REGISTER AND OFFICIAL DOCUMENTS
178. The Register
179. Register may be kept on computer
180. Inspection of Register
181. Register
182. Certified copies of documents
PART 21 Miscellaneous
183. Making and signing applications etc.
184. Filing of documents
185. Withdrawal of application etc.
186. Address for service
187. Change of name
188. Death of applicant etc.
189. Description of registered trade mark
190. Evidence of trade usage
191. Death of party to proceeding before Registrar
192. Costs awarded by Registrar
193. Security for costs
194. Fees
195. Extension of time
196. Publication of documents
197. Use of trade mark for export trade
198. Passing off actions
199. Expenses
200. Regulations
201. Transitional
SUBSIDIARY LEGISLATION
Trade Marks Regulations – Section 200 (Statutory Instruments 17/2003 and 146/2020)