Revised Laws of Saint Lucia (2021)

PART 2
INTERPRETATION

2.   Interpretation

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   (1)   In this Act—

“applicant” in relation to an application, means the person in whose name the application is for the time being proceeding;

“applied to” has the meaning given to it in subsection (11);

“applied in relation to” has the meaning given to it in subsection (11);

“approved form” means a form approved by the Registrar for the purposes of the provision in which the expression appears;

“assignment” in relation to a trade mark, means an assignment by act of the parties concerned;

“association” does not include a body corporate;

“attorney-at-law” means an attorney-at-law as defined by the Legal Professions Act;

“authorised user of a trade mark” has the meaning given to it by subsection (7);

“authorised user of a trade mark” has the meaning given to it by subsection (6);

“certification trade mark” has the meaning given to it by section 148;

“collective trade mark” has the meaning given to it by section 141;

“Comptroller” means the Comptroller of Customs appointed under the Customs (Control and Management) Act;

“Convention country” means a country which is a party to the Paris Convention for the Protection of Industrial Property 1883;

“date of registration”, in relation to the registration of a trade mark in respect of particular goods and services, means the day from which the registration of a trade mark in respect of those goods or services is taken to have had effect under section 56(1) or (2);

“deceptively similar” has the meaning given to it by sub-section (13);

“defensive trade mark” has the meaning given to it by section 162;

“Deputy Registrar” means the Deputy Registrar appointed under the Companies and Intellectual Property (Registry) Act;

“designated owner” in relation to goods imported into Saint Lucia means the person identified as the owner of the goods on the entry made under the Customs (Control and Management) Act;

“divisional application” has the meaning given to it by section 29;

“examine”, in relation to an application for the registration of a trade mark, means to carry out an examination under section 15 in relation to the application;

“existing registered mark” means a mark that was registered under the repealed Acts and whose registration was due to expire after the coming into force of this Act;

“file” means to file at the Registry of Companies and Intellectual Property;

“filing date” means—

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   (a)     in relation to an application for the registration of a trade mark other than an application referred to in paragraph (b) of this definition, the day on which the application is filed;

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   (b)     in relation to a divisional application for the registration of a trade mark, the day on which the initial application, within the meaning of Division 3 of Part 4, was filed;

“geographical indication”, has the meaning given to it in the Geographical Indications Act;

“goods of a person” means goods dealt with or provided in the course of trade by the person;

“limitations” means limitations of the exclusive right to use a trade mark, including limitations of that right as to—

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   (a)     mode of use;

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   (b)     use in Saint Lucia; or

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   (c)     use in relation to goods or services to be exported;

“Minister” means Minister with responsibility for intellectual property;

“notified trade mark” means a trade mark in respect of which notice under section 115 is in force;

“objector”, in relation to seized goods, means any person who has given a notice under section 115 that is in force;

“old register” means the Register of Patents, Trademarks and Designs kept under the repealed Acts;

“opponent” in relation to the registration of a trade mark, means—

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   (a)     the person who has filed, under section 36, a notice of opposition to the registration of the trade mark; or

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   (b)     if section 37 applies, a person in whose name the notice of the opposition is taken to have been filed;

“originate” in relation to wine, has the meaning given to it by subsection (19);

“pending” in relation to an application for the registration of a trade mark under this Act has the meaning given to it by subsection (14);

“pending” in relation to an application for the registration of a trade mark under the repealed Acts has the meaning given to it by subsection (15);

“person” includes a body corporate or unincorporated body;

“predecessor in title” in relation to a person who claims to be the owner of a trade mark means—

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   (a)     if the trade mark was assigned or transmitted to one or more than one person before it was assigned or transmitted to the first mentioned person, that other person or anyone of those other persons; or

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   (b)     if paragraph (a) does not apply, the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first mentioned person;

“prescribed” means prescribed in regulations made under this Act;

“priority date” has the meaning given to it by subsection (16);

“Register” means the Register of Trade Marks kept under section 178;

“registered owner” in relation to a registered trade mark, means the person in whose name the trade mark is registered;

“registered trade mark” means a trade mark whose particulars are registered in the Register under this Act;

“Registrar” means the Registrar of Companies and Intellectual Property appointed under the Companies and Intellectual Property (Registry) Act;

“registration number”, in relation to a registered trade mark, means the number given to it under section 52(2);

“Registry of Companies and Intellectual Property” means the Registry of Companies and Intellectual Property established under the Companies and Intellectual Property (Registry) Act;

“regulations” means regulations made under section 200;

“remove from the Register”, in relation to a trade mark, has the meaning given to it by subsection (17);

“repealed Acts” means the Merchandise Marks Act and Title X of the Commercial Code;

“represented graphically” has the meaning given to it in subsection (3);

“seized goods” means goods seized under section 116;

“services of a person” means services dealt with or provided in the course of trade by the person;

“sign” includes letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, and any combination thereof;

“similar goods” has the meaning given to it by subsection (18)(a);

“similar services” has the meaning given to it by subsection (18)(b);

“trade mark” means a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;

“transmission” means—

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   (a)     transmission by operation of law;

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   (b)     devolution on the personal representative of a deceased person; or

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   (c)     any other kind of transfer except assignment;

“use of trade mark” has the meaning effected by subsections (2), (3), and (4);

“use of trade mark in relation to goods” has the meaning given to it under subsection (5)(a);

“use of trade mark in relation to services” has the meaning given to it under subsection (5)(b);

“word” includes an abbreviation of a word.

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   (2)   If the Registrar or the High Court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the High Court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

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   (3)   A trade mark is capable of being represented graphically if it can be represented on paper.

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   (4)   An authorised use of a trade mark by a person is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

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   (5)   In this Act—

“use of a trade mark in relation to goods” means use of the trade mark upon, or in physical or other relation to, the goods, including second-hand goods;

“use of a trade mark in relation to services” means use of the trade mark in physical or other relation to the services.

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   (6)   A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

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   (7)   The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

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   (8)   If the owner of a trade mark exercises quality control over goods or services—

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      (a)     dealt with or provided in the course of trade by another person; and

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      (b)     in relation to which the trade mark is used,

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   the other person is taken, for the purposes of subsections (6) and (7), to use the trade mark in relation to the goods or services under the control of the owner.

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   (9)   If—

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      (a)     a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

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      (b)     the owner of the trade mark exercises financial control over the other person's relevant trading activities,

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   the other person is taken, for the purposes of subsection (6) and (7), to use the trade mark in relation to the goods or services under the control of the owner.

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   (10)   Subsections (8) and (9) do not limit the meaning of the expression “under the control of” in subsections (6) and (7).

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   (11)   For the purposes of this Act—

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      (a)     a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing;

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      (b)     a trade mark is taken to be applied in relation to goods or services if it is—

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         (i)     applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade, or

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         (ii)     used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

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      (c)     in addition to paragraphs (a) and (b), a trade mark is taken to be applied in relation to goods or services if it is used—

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         (i)     on a signboard or in an advertisement, including a televised advertisement, or

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         (ii)     in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document,

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   and goods are delivered, or services provided, as the case may be, to a person following a request or order made by referring to the trade mark as so used.

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   (12)   In subsection (11)(b)(i)—

“covering” includes packaging, frame, wrapper, container, stopper, lid or cap;

“label” includes a band or ticket.

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   (13)   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

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   (14)   An application for the registration of a trade mark under this Act is pending from the time it is filed until—

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      (a)     it lapses under section 21, is withdrawn under section 185 or is rejected under section 17;

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      (b)     if the Registrar refuses, under section 39, to register the trade mark and there is no appeal against the decision, the end of the period allowed for the appeal;

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      (c)     if the Registrar refuses, under section 39, to register the trade mark and—

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         (i)     there is an appeal against the decision, and

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         (ii)     the decision is confirmed on appeal,

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      the day on which the decision is confirmed on appeal; or

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      (d)     the trade mark is registered under section 52.

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   (15)   An application for the registration of a trade mark under the repealed Acts was pending immediately before the commencement date of this Act if, before that date—

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      (a)     the application had not lapsed, been withdrawn, or refused; or

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      (b)     had been refused but—

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         (i)     the period allowed for appealing against the decision to refuse had not yet ended, or

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         (ii)     an appeal had been made against the decision but had not been decided,

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   under the repealed Acts.

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   (16)   The priority date of the registration of a trade mark in respect of particular goods or services is—

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      (a)     if the trade mark is registered, the date of the registration of trade mark in respect of those goods or services;

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      (b)     if the registration of the trade mark is being sought, the day that would be the date of the registration of the trade mark in respect of those goods or services if the trade mark was registered.

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   (17)   A trade mark is taken to have been removed from the Register if the Registrar makes an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register.

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   (18)   For the purposes of this Act—

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      (a)     goods are similar to other goods if—

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         (i)     they are the same as the other goods, or

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         (ii)     they are of the same description as that of the other goods; or

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      (b)     services are similar to other services if—

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         (i)     if they are the same as the other services, or

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         (ii)     if they are of the same description as that of the other services.

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   (19)   For the purposes of this Act—

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      (a)     a wine is taken to have originated in a foreign country or Saint Lucia only if the wine is made within the territory of that country or of Saint Lucia, as the case may be; and

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      (b)     a wine is taken to have originated in a particular region or locality of a foreign country or of Saint Lucia only if the wine is made from grapes grown in that region or locality.