Trade Marks Act 1974

[29 July 1974]

[preamble and words of enactment omitted]

PART I

PRELIMINARY

Interpretation

1 (1) In this Act, unless the context otherwise requires�

"assignment" means assignment by act of the parties concerned;

"Court" means the Supreme Court;

"limitations" means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold, or oth erwise traded in, in Bermuda, or as to use in relation to goods to be exported to any market outside Bermuda;

"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof;

"Minister" means the Minister of Labour and Home Affairs;

"permitted use" has the meaning assigned to it by section 31(1);

"prescribed" means, in relation to proceedings before the Court, prescribed by rules of Court, and, in other cases, prescribed by this Act or the regulations;

"the register" means the register of trade marks kept under this Act;

"the Registrar" means the Registrar-General;

"registered trade mark" means a trade mark which is registered under this Act;

"registered user" means a person who is for the time being reg istered as such under section 31;

"the regulations" means regulations made by the Minister under section 38 or section 39;

"statutory declaration" means a declaration in the form of an af fidavit (as defined in the Commissioners for Oaths and No taries Public Act 1972 [title 8 item 22]), taken in Bermuda by a Commissioner for Oaths or Notary Public or, in the case of a declaration made abroad,

(i) which would be admissible in evidence in cases or matters depending in the Supreme Court in accor dance with the rules thereof; or

(ii) which is made and subscribed in such manner as may be prescribed;

"trade mark" means a mark used or proposed to be used in rela tion to goods for the purpose of indicating, or so as to indi cate, a connection in the course of trade between the goods, and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person;

"transmission" means transmission by operation of law, devolu tion on the personal representative of a deceased person, and any other mode of transfer not being assignment.

(2) References in this Act to the use of a mark shall be con strued as references to the use of a printed or other visual representation of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods.

(3) For the purposes of this Act goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and so with descriptions of goods and descriptions of services.

(4) References in this Act to a near resemblance of marks are references to a resemblance so near as to be likely to deceive or cause confusion.

[Section 1 amended by 1991:39 effective 18 June 1993 and modified by First Schedule of 1991:39 effective 18 June 1991]

PART II

REGISTRATION, INFRINGEMENT AND OTHER SUBSTANTIVE PROVISIONS

The register of trade marks

2 (1) For the purpose of this Act the Registrar shall keep a record called the register of trade marks, in which shall be entered�

(a) all registered trade marks with the dates of their registration, the names and addresses of their proprietors and the proprietors' agents;

(b) notifications of assignments and transmissions;

(d) disclaimers, conditions and limitations; and

(e) such other matters relating to registered trade marks as may be prescribed.

(2) The register shall be divided into two parts, called Part A and Part B.

(3) Part A of the Register shall comprise all trade marks which�

(a) immediately preceding 1 July 1975 are entered in the register of trade marks under the Patents, Designs and Trade Marks Act 1930 [title 17 item 45 (under its present title as the Patents and Designs Act 1930)];

(b) after 30 June 1975 are registered in that Part under this Act.

(4) Part B shall comprise all trade marks registered in that Part under this Act.

(5) The register need not be kept in documentary form.

(6) Subject to the regulations the public shall have a right to inspect the register at all convenient times.

(7) The register shall be kept under the control and manage ment of the Registrar.

[Section 2 amended by 1991:39 effective 18 June 1993]

No action for infringement of unregistered trade mark

3 (1) No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as goods of another person or the remedies in respect thereof.

Registration to be in respect of particular goods

4 A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar.

Right given by registration in Part A and infringement thereof

5 (1) Subject to subsections (2) and (4) and sections 3 and 9, the registration of a person in Part A of the register as a proprietor of a trade mark in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or registered user thereof using by way of the permitted use, uses in the course of trade a mark identical with or nearly resembling it, in relation to any goods in respect of which it is regis tered, and in such manner as to render the use of the mark likely to be taken either �

(a) as being use as a trade mark; or

(b) in the case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as pro prietor or as registered user to use the trade mark or to goods with which such person as aforesaid is connected in the course of trade.

(2) The right to the use of a trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or other wise traded in any place, in relation to goods to be exported to any mar ket, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.

(3) The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person �

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if as to those goods or the bulk of which they form part, the proprietor or the registered user conforming to the per mitted use has applied the trade mark and has not sub sequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(b) in relation to goods adapted to form part of, or to be ac cessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and nei ther the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.

(4) The use of a registered trade mark, being one of two or more registered trade marks that are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration as aforesaid, shall not be deemed to be an infringement of the right to be given to the use of any other of those trade marks.

[Section 5 modified by First Schedule and amended by Second Schedule of 1991:39 effective 18 June 1993]

Right given by registration in Part B and infringement thereof

6 (1) Except as provided by subsection (2), the registration of a person in Part B of the register as proprietor of a trade mark in respect of any goods shall, if valid, give or be deemed to have given to that person the like right in relation to those goods as if the registration had been in Part A of the register, and section 5 shall have effect in like manner in relation to a trade mark registered in Part B of the register as they have effect in relation to a trade mark registered in Part A of the register.

(2) In any action for infringement of the right to the use of a trade mark given by registration as aforesaid in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 7, no injunction or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of which the plaintiff complains is not likely to deceive or cause confu sion or to be taken as indicating a connection in the course of trade be tween the goods and some person having the right either as proprietor or as registered user to use the trade mark.

[Section 6 modified by First Schedule of 1991:39 effective 18 June 1993]

Infringement by breach of certain restrictions

7 (1) Where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in rela tion to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act, or authorises it to be done, in relation to the goods, in the course of trade or with a view to any dealing therewith in the course of trade, shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that per son became the owner of the goods by purchase for money or money's worth in good faith before receiving notice of the obligation or by virtue of a title derived through another who so became the owner thereof.

(2) The acts to which this section applies are �

(a) the application of the trade mark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, get up or packing;

(b) in a case in which the trade mark is upon the goods, the alteration, part removal or part obliteration thereof;

(c) in a case in which the trade mark is upon the goods, and there is also thereon other matter, being matter in dicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the trade mark unless that other matter is wholly removed or obliterated;

(d) in a case in which the trade mark is upon the goods, the application of any other trade mark to the goods;

(e) in a case in which the trade mark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the trade mark.

(3) In this section references in relation to any goods to the proprietor, to a registered user, and to the registration, of a trade mark shall be construed, respectively, as references to the proprietor in whose name the trade mark is registered, to a registered user who is registered, and to the registration of the trade mark, in respect of those goods, and the expression "upon" includes in relation to any goods a reference to physical relation thereto.

[Section 7 modified by First Schedule of 1991:39 effective 18 June 1993]

Saving for vested rights

8 Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in rela tion to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior �

(a) to the use of the first-mentioned trade mark in respect of those goods by the proprietor or a predecessor in title of his; or

(b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his,

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of these goods under section 13(2).

Saving for use of name, address or description of goods

9 No registration of a trade mark shall interfere with�

(a) any bona fide use by a person of his own name or of the name of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business; or

(b) the use by any person of any bona fide description of the character or equality of his goods, not being a descrip tion that would be likely to be taken as importing any such reference as is mentioned in section 5(1)(b).

THE REFEREE

Appointment of referee

9A (1) The Minister may by instrument in writing published in the Gazette appoint a person who by reason of his qualifications and experience to be a referee to determine any case or matter referred to him under this Act.

(2) The person appointed under subsection (1) shall hold office for a period of one year beginning on such day as the Minister may determine and may be re-appointed from time to time for a like period.

(3) The Minister may, at any time by notification in the Gazette, appoint any person to act temporarily in the place of the referee if the referee is absent from Bermuda or is for any reason unable to discharge his functions under this Act.

(4) The referee may at any time resign his appointment by notice in writing addressed to the Minister.

(5) The referee appointed under this section shall have such powers and shall perform such duties as are assigned to him under this Act and the Regulations made thereunder.

[Section 9A inserted by 1991:39 effective 18 June 1993]

Case or matter may be referred to referee

9B (1) Where a notice of opposition and a counter-notice are sent to the Registrar under section 19(2) and (4) respectively, in any case, the Registrar may instead of, pursuant to section 19(5), hearing the parties, considering the evidence and making a decision, refer the case to the referee for the referee to deal with it on his behalf.

(2) Where an application is made to the Registrar�

(a) by a person aggrieved under sections 29(1), 34(1) or 35; or

(b) by a registered proprietor of a trade mark under section 36(1) or 37(1),

then the Registrar may, instead of himself dealing with the application, refer the application to the referee to deal with it on his behalf.

[Section 9B inserted by 1991:39 effective 18 June 1993]

Powers and duties of referee

9C The referee, in the discharge of his functions in relation to any case or matter referred to him under section 9B shall have the same powers and duties of the Registrar that the Registrar would have had under the Act or any Regulations made thereunder in relation to the case or matter, including the power to award costs under section 43, and anything done by the referee within the scope of his authority shall, for the purposes of this Act or any Regulations made thereunder, be deemed to have been done by the Registrar himself.

[Section 9C inserted by 1991:39 effective 18 June 1993]

REGISTRABILITY AND VALIDITY OF REGISTRATION

Distinctiveness requisite for registration in Part A

10 (1) A trade mark to be registrable in Part A of the register, must contain or consist of at least one of the following essential particulars �

(a) the name of a company, individual, or firm, represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business;

(d) a word or words having no direct reference to the char acter or quality of the goods, and not being according to its ordinary signification a geographical name or a sur name;

(e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the de scriptions in paragraphs (a), (b), (c) and (d), shall not be registrable under this paragraph except upon evidence of its distinctiveness.

(2) For the purposes of this section "distinctive" means adapted, in relation to the goods in respect of which a trade mark is reg istered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, ei ther generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(3) In determining whether a trade mark is adapted to distinguish as aforesaid the Registrar may have regard to the extent to which �

(a) the trade mark is inherently adapted to distinguish as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to dis tinguish as aforesaid.

[Section 10 modified by First Schedule of 1991:39 effective 18 June 1993]

Capability of distinguishing requisite for registration in Part B

11 (1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection sub sists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(2) In determining whether a trade mark is capable of distin guishing as aforesaid the Registrar may have regard to the extent to which �

(a) the trade mark is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of dis tinguishing as aforesaid.

(3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof.

[Section 11 modified by First Schedule of 1991:39 effective 18 June 1993]

Restrictions on registration

12 (1) A mark �

(a) the use of which would be likely to deceive or cause confusion;

(b) the use of which would be contrary to law;

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

(2) The Registrar may refuse to accept an application for the registration of a trade mark which contains or consists of any of the fol lowing marks or a mark so nearly resembling any of those marks as to be likely to be taken for that mark �

(a) the word or words "Patent", "By Royal Letters Patent", "Registered", "Registered Design", "Copyright", "To counterfeit this is a forgery", or a word or words to the like effect;

(b) a representation of the Sovereign or of a member of the Royal Family;

(i) the Royal Arms, crests, armorial bearings, in signia or devices;

(ii) any of the Royal crowns; or

(iii) the national flag of a country or territory in the Commonwealth;

(d) the word "Royal" or any other word, or any letters or de vice, likely to lead persons to think that the applicant has or has had Royal or Government patronage or au thority;

(e) a representation of the Arms, or of any flag or seal, of Bermuda;

(f) a representation of the Arms or emblem of a city or town in Bermuda or of a public authority or public institution in Bermuda;

(g) a mark which is specified in the regulations as being, for the purposes of this section, a prohibited mark.

(3) The regulations may provide that a mark in relation to which subsection (2) applies (not being a registered trade mark or a mark in use in good faith as a trade mark) shall not be used as a trade mark or as part of a trade mark, either at all or after a date specified in the regu lations.

(4) Where a person makes an application for registration of a trade mark which consists of or includes the name or a representation of a living person or of a person believed by the Registrar to be living, the Registrar may require the applicant to furnish him with the consent of that person to the name or representation appearing on the trade mark before he proceeds with the registration of the trade mark.

(5) No word which is the commonly used and accepted name of any single chemical element or single chemical compound, as distin guished from a mixture, shall be registered as a trade mark in respect of a chemical substance or preparation, and any such registration in force at 1 July 1975, or thereafter shall, notwithstanding anything in section 14, be deemed for the purposes of section 34 to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require:

Provided that this subsection shall not have effect in relation to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, as distinguished from the element or compound as made by oth ers, and in association with a suitable name or description open to the public use.

Prohibition of registration of identical and resembling trade marks

13 (1) Subject to subsection (2), no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of�

(a) the same goods,

(b) the same description of goods, or

(2) In case of honest concurrent use, or of other special cir cumstances which in the opinion of the Court or the Registrar make it proper so to do, the Court or the Registrar may permit the registration by more than one proprietor, in respect of�

(a) the same goods,

(b) the same description of goods, or

of marks that are identical or nearly resemble each other, subject to such conditions and limitations, if any, as the Court or the Registrar, as the case may be, may think it right to impose.

(3) Where separate applications are made by different persons to be registered as proprietors respectively of marks that are identical or nearly resemble each other, in respect of�

(a) the same goods,

(b) the same description of goods, or

the Registrar may refuse to register any of them until their rights have been determined by the Court, or have been settled by agreement in a manner approved by him or, on an appeal, by the Court.

[Section 13 modified by First Schedule and amended by Second Schedule of 1991:39 effective 18 June 1993]

Registration in Part A to be conclusive as to validity after seven years

14 (1) In all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 34) the origi nal registration in Part A of the register of the trade mark shall, after the expiration of seven years from the date of that registration, be taken to be valid in all respects unless �

(a) that registration was obtained by fraud; or

(b) the trade mark offends against section 12(1) or section 12(5).

(2) Nothing in section 6(1) shall be construed as making applicable to a trade mark, as being a trade mark registered in Part B of the regis ter, the foregoing provisions of this section relating to a trade mark reg istered in Part A of the register.

Registration subject to disclaimer

15 (1) If a trade mark �

(a) contains any part not separately registered by the pro prietor as a trade mark; or

(b) contains matter common to the trade or otherwise of a non-distinctive character,

the Registrar or the Court, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register �

(i) that the proprietor shall disclaim any right to the exclusive use of any part of the trade mark, or to the exclusive use of all or any portion of any such matter as aforesaid, to the exclusive use of which they hold him not to be entitled; or

(ii) that the proprietor shall make such other dis claimer as they may consider necessary for the purpose of defining his rights under the regis tration.

(2) No such disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

[Section 15 modified by First Schedule of 1991:39 effective 18 June 1993]

Words used as name or description of an article or substance

16 (1) Subject to this section the registration of a trade mark shall not be deemed to have become invalid by reason only of any use, after the date of registration, of a word or words which the trade mark con tains, or of which it consists as the name or description of an article or substance.

(2) Subsection (3) shall have effect where �

(a) there is a well-known and established use of the word or words as the name or description of the article or sub stance by a person or persons carrying on a trade therein, not being use in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark; or

(b) the article or substance was formerly manufactured un der a patent, that a period of two years or more after the cesser of the patent has elapsed, and that the word or words is or are the only practicable name or description of the article or substance.

(3) Where the facts mentioned in subsection (2)(a) or (b) are proved with respect to any word or words, then�

(a) if the trade mark consists solely of that word or those words, the registration of the trade mark, so far as re gards registration in respect of the article or substance in question or of any goods of the same description, shall be deemed for the purposes of section 34 to be an entry wrongly remaining on the register;

(b) if the trade mark contains that word or those words and other matter, the Court or the Registrar, in deciding whether the trade mark shall remain on the register, so far as regards registration in respect of the article or substance in question and of any goods of the same de scription, may in case of a decision in favour of its re maining on the register require as a condition thereof that the proprietor shall disclaim any right to the exclu sive use in relation to that article or substance and any goods of the same description of that word or those words, so however, that no disclaimer on the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

(4) For the purposes of any other legal proceedings relating to the trade mark �

(a) if the trade mark consists solely of that word or those words, all rights of the proprietor, whether under the common law or by registration, to the exclusive use of the trade mark in relation to the article or substance in question or to any goods of the same description; or

(b) if the trade mark contains that word or those words and other matter, all such rights of the proprietor to the ex clusive use of that word or those words in such relation as aforesaid,

shall be deemed to have ceased on the date at which the use mentioned in subsection (2)(a) first became well known and established, or at the expiration of the period of two years mentioned in subsection (2)(b).

[Section 16 modified by First Schedule of 1991:39 effective 18 June 1993]

Effect of limitation as to colour and of absence thereof

17 (1) A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the Registrar or the Court in decid ing on the distinctive character of the trade mark.

(2) If and so far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

PROCEDURE FOR, AND DURATION OF, REGISTRATION

Application for registration

18 (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it must apply in writing to the Registrar in the prescribed manner for reg istration either in Part A or Part B of the register.

(2) Subject to this Act, the Registrar may refuse the applica tion, or may accept it absolutely or subject to such amendments, modifi cations, conditions or limitations, if any, as he may think fit.

(3) In the case of an application for registration of a trade mark in Part A of the register, the Registrar may, if the applicant is willing, in stead of refusing the application, treat it as an application for registra tion in Part B and deal with the application accordingly.

(4) Where a person makes application for the registration of a trade mark and satisfies the Registrar that he, or his predecessor in title, has registered the mark under the Trade Marks Act 1938, of the United Kingdom, as amended from time to time or under any legislation of the United Kingdom that replaces that Act, the Registrar may accept the application if it is for registration on the same basis and subject to the same conditions and limitations as in the United Kingdom; but upon advertisement of the application in ac cordance with section 19 any person may, in accordance with that sec tion oppose the registration as if the trade mark were one to which this subsection does not apply.

(4A) Where a person makes application for the registration of a trade mark and the country of origin of the applicant is not Bermuda, then the country of origin of the applicant shall be the country where the applicant has a bona fide and effective industrial or commercial establishment in that country, or if he has not such an establishment, the country in which he is domiciled, or if he is not domiciled in that country, the country of which he is a national.

(4B) A mark duly registered in the country indicated in subsection (4A) may be registered in Bermuda by an applicant whose country of origin is not Bermuda and the application shall be accompanied by a certification or a certified copy of the registration of the country indicated in subsection (4A).

(4C) The registration of a mark under subsection (4B) shall be independent of the registration in the country of origin of the applicant and the registrability, duration, validity or transfer in Bermuda of such registration shall be governed by the provisions of this Act.

(4D) For the removal of doubt this Act applies to any person whose country of origin is not Bermuda.

(5) In the case of a refusal or conditional acceptance, the Reg istrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving thereat, and the decision shall be subject to appeal to the Court.

(6) An appeal under this section shall be made in the pre scribed manner, and on the appeal, the Court shall, if required, hear the applicant and the Registrar, and shall make an order determining whether, and subject to what amendments, modifications, conditions or limitations, if any, the application is to be accepted.

(7) Appeals under this section shall be heard on the materials stated as aforesaid by the Registrar, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the Registrar, other than those so stated as aforesaid by him, except by leave of the Court. Where any further grounds of objections are taken, the ap plicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.

(8) The Registrar or the Court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in con nection with the application, or may permit the applicant to amend his application upon such terms as they may think fit.

[Section 18 amended by 1991:39 effective 18 June 1993]

Opposition to registration

19 (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the appli cation as accepted to be advertised in the prescribed manner, and the advertisement shall set forth all conditions and limitations subject to which the application has been accepted:

Provided that the Registrar may cause an application to be ad vertised before acceptance if it is made under section 10(1)(e), or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do, and where an application has been so advertised the Registrar may, if he thinks fit, advertise it again when it has been accepted but shall not be bound so to do.

(2) Any person may within the prescribed time from the date of the advertisement of an application give notice to the Registrar of oppo sition to the registration.

(3) The notice shall be given in writing in the prescribed man ner, and shall include a statement of the grounds of opposition.

(4) The Registrar shall send a copy of the notice to the appli cant, and within the prescribed time after receipt thereof the applicant shall send to the Registrar, in the prescribed manner, a counter-state ment of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.

(5) If the applicant sends such a counter-statement as afore said, the Registrar shall furnish a copy thereof to the persons giving no tice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(6) The decision of the Registrar shall be subject to the appeal to the Court.

(7) An appeal under this section shall be made in the pre scribed manner, and on the appeal the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.

(8) On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court.

(9) On an appeal under this section no further grounds of ob jection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated as aforesaid by the opponent, except by leave of the Court. Where any further grounds of objection are taken, the applicant shall be entitled to withdraw his appli cation without payment of the costs of the opponent on giving notice as prescribed.

(10) On an appeal under this section the Court may, after hear ing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.

(11) If a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice, or an appellant, neither resides nor carries on business in Bermuda the Registrar or the Court may require him to give security for costs of the proceedings before them relative to the opposition or to the appeal, as the case may be, and in default of such security being duly given may treat the opposition or application, or the appeal, as the case may be, as abandoned.

(12) [deleted by 1991:39]

(13) [deleted by 1991:39]

Protection of marks registered in country of origin

20 The Registrar may refuse to register any trade mark if it is proved to his satisfaction by the person opposing the application for reg istration that such mark is identical with, or so nearly resembles as to be calculated to deceive or cause confusion, a trade mark which is already registered in respect of the same goods or description of goods in a country or place from which such goods originate:

Provided that no application to register shall be refused under this section �

(a) if the applicant proves that he or his predecessors in business have in Bermuda, in relation to such goods, continuously used the trade mark for the registration of which he has made application from a date anterior to the date of the registration of the other mark in such country or place of origin; or

(b) if the opponent does not give an undertaking to the sat isfaction of the Registrar that he will, within three months from the giving of the notice of opposition, apply for registration in Bermuda of the trade mark so regis tered in the country or place of origin, and will take all necessary steps to complete such registration.

Registration

21 (1) When an application for registration of a trade mark in Part A or in Part B of the register has been accepted and either�

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the application has been accepted in error, register the trade mark in Part A or Part B, as the case may be, and the trade mark, when registered, shall be registered as of the date of the ap plication for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.

(2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof under the hand and seal of the Registrar.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice of the non-completion to the applicant in writing, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

Removal of trade mark from register on proof of prior registration in country of origin

22 The Court may, on application made within seven years from the registration of a trade mark in Bermuda by any person aggrieved by such registration, remove such trade mark from the register if it is proved to the satisfaction of the Court that such trade mark is identical with, or so nearly resembles as to be calculated to deceive or cause confusion, a trade mark which was, prior to the registration in Bermuda of the first-mentioned trade mark, registered (in respect of goods of the same de scription as those in respect of which the first-mentioned trade mark is registered in Bermuda) in a country or place from which such goods originate:

Provided that no trade mark shall be removed from the register under this section in the following cases �

(a) if the proprietor of the other trade mark consented to the registration in Bermuda of the first-mentioned trade mark; or

(b) if the proprietor of the trade mark registered in Bermuda proves that he or his predecessors in business have continuously used such trade mark in Bermuda in con nection with such goods as aforesaid from a date ante rior to the date of the registration of the other trade mark in the country or place of origin; or

(c) unless the applicant proves either that within the five years immediately preceding the making of the applica tion under this section there has been bona fide user in connection with such goods as aforesaid in Bermuda of the trade mark registered in the country or place of ori gin, or that the special circumstances of the trade ac count for the non-user of such trade mark in Bermuda within the same period, or that the trade mark so regis tered in the country or place of origin was first registered there within the like period of five years, and in either event gives an undertaking to the satisfaction of the Registrar that he will within three months from the making of the application under this section apply for the registration in Bermuda of the trade mark so regis tered in the country or place of origin, and will take all necessary steps to complete the registration.

Duration and renewal of registration

23 (1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with this section:

Provided that, in relation to a registration as of a date before 1 July 1975, this subsection shall have effect with the substitution of a pe riod of fourteen years for such period of seven years.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark within the prescribed period, renew the regis tration of the trade mark for a period of fourteen years from the date of expiration of the original registration or of the last renewal of registra tion, as the case may be, which date is in this section referred to as "the expiration of the last registration".

(3) At the prescribed time before the expiration of the last reg istration of a trade mark, the Registrar shall send notice to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be ob tained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trade mark from the register, subject to such conditions, if any, as to its restoration to the register as may be prescribed.

(4) Where a trade mark has been removed from the register for non-payment of the fee for renewal, it shall, nevertheless, for the purpose of any application for the registration of a trade mark during one year next after the date of the renewal, be deemed to be a trade mark that is already on the register:

Provided that the foregoing provisions of this subsection shall not have effect where the Registrar or the Court, as the case may be, is satisfied either �

(a) that there has been no bona fide trade use of the trade mark that has been removed during the two years im mediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application for registration by reason of any previous use of the trade mark that has been removed.

[Section 23 modified by First Schedule of 1991:39 effective 18 June 1993]

Registration of parts of trade marks and of trade marks as a series

24 (1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and any such part as separate trade marks.

(2) Each such separate trade mark must satisfy all the condi tions of an independent trade mark and shall, subject to sections 26(2) and 32(2), have all the incidents of an independent trade mark.

(3) Where a person claiming to be the proprietor of several trade marks, in respect of the same goods or description of goods, which, while resembling each other in the material particulars thereof, yet differ in respect of �

(a) statements of the goods in relation to which they are re spectively used or proposed to be used; or

(b) statements of number, price, quality or names of places; or

(d) colour,

seeks to register those trade marks, they may be registered as a series in one registration.

Associated trade marks

25 (1) Where a trade mark that is registered, or is the subject of an application for registration, in respect of any goods is identical with another trade mark that is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade marks shall be entered on the register as associated trade marks.

(2) Where a trade mark and any part or parts thereof are, by virtue of section 24(1) registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.

(3) All trade marks that are, by virtue of section 24(2) regis-tered as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.

(4) On application made by the registered proprietor of two or more trade marks registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark was used by another person in relation to any of the goods in respect of which it is registered, and may amend the register ac cordingly.

(5) Subject to section 26(5) trade marks registered as associ ated marks shall be deemed to have been registered as separate trade marks.

(6) Any decision of the Registrar under this section shall be subject to appeal to the Court.

ASSIGNMENT AND TRANSMISSION

Powers of, and restrictions on assignment and transmission

26 (1) Notwithstanding any rule of law or equity to the contrary, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not.

(2) A registered trade mark shall be, and shall be deemed al ways to have been, assignable and transmissible in respect either of all the goods in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods.

(3) The provisions of subsections (1) and (2) shall have effect in the case of an unregistered trade mark used in relation to any goods as they have effect in the case of a registered trade mark registered in re spect of any goods, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods all of which are goods in relation to which the unregis tered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted.

(4) Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which as a result of an assignment or trans mission there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to

(a) the same goods,

(b) the same description of goods, or

of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or the association of the goods and services or description of goods and services and to the similarity of the trade marks, the use of the trade marks in exer cise of those rights would be, or have been, likely to deceive or cause confusion.

(5) Trade marks that are registered as, or that are deemed by virtue of this Act to be, associated trade marks shall be assignable and transmissible only as a whole and not separately.

(6) Where an assignment in respect of any goods of a trade mark that is at the time of the assignment used in a business in those goods is made, on or after 1 July 1975, otherwise than in connection with the goodwill of that business, the assignment shall not take effect until the following requirements have been satisfied; that is to say, the assignee must, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, apply to him for directions with respect to the advertisement of the assignment, and must advertise it in such form and manner and within such period as the Registrar may direct.

[Section 26 modified by First Schedule and amended by Second Schedule of 1991:39 effective 18 June 1993]

Power of registered proprietor to assign and give receipts

27 Subject to this Act, the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights ap pearing from the register to be vested in any other person, have power to assign the trade mark, and to give effectual receipts for any considera tion for an assignment thereof.

Registration of assignments and transmissions

28 (1) Where a person becomes entitled by assignment or trans mission to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register.

(2) Any decision of the Registrar under this section shall be subject to appeal to the Court.

(3) Except for the purposes of an appeal under this section or of an application under section 34, a document or instrument in respect of which no entry has been made in the register in accordance with sub section (1) shall not, unless the Court otherwise directs, be admitted in evidence in any Court in proof of the title to a trade mark.

USE AND NON-USE

Removal from register and imposition of limitations on grounds of non-use

29 (1) Subject to section 30, the Court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the register in respect of any goods in respect of which it is regis tered on the grounds �

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to the date one month be fore the date of the application; or

(b) that up to the date one month before the date of the ap plication a continuous period of five years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being.

(2) Except where the applicant has been permitted under sec tion 13(2) to register an identical or nearly resembling trade mark in re spect of the goods in question or where the Court or the Registrar is of opinion that he might properly be permitted so to register such a trade mark the Court or the Registrar, as the case may be, may refuse an ap plication made under subsection (1) in relation to any goods, if it is shown that there has been, before the relevant date or during the rele vant period, as the case may be, bona fide use of the mark by the proprietor thereof for the time being in relation to�

(i) goods of the same description; or

(ii) services associated with those goods or goods of that description,

being goods or, as the case may be, services in respect of which the mark is registered.

(3) An applicant shall not be entitled to rely for the purposes of subsection (1)(b), on any non-use of a trade mark that is shown to have been due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark in relation to the goods to which the application relates.

[Section 29 modified by First Schedule and amended by Second Schedule of 1991:39 effective 18 June 1993]

Defensive registration of well known trade marks

30 (1) Where a trade mark consisting of an invented word or in vented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in section 29, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the first-mentioned goods, be reg istered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the reg ister in respect of those goods under section 29.

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

(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, be deemed to be, and shall be registered as, associated trade marks.

(4) On application by any person aggrieved to the Court or, at the option of the applicant and subject to section 50, to the Registrar, the registration of a trade mark as a defensive trade mark may be can-celled on the ground that the requirements of subsection (1) are no longer satisfied in respect of any goods 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 in re spect 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 would be taken as giving the indication men tioned in subsection (1).

(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 de fensive trade mark.

(6) Except as otherwise expressly provided in this section, the provisions of this Act 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.

[Section 30 modified by First Schedule of 1991:39 effective 18 June 1993]

Registered users

31 (1) Subject to this section, a person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or re strictions.

(2) The use of a trade mark by a registered user thereof in rela tion to goods with which he is connected in the course of trade and in re spect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration is subject, is in this Act referred to as the "permitted use" thereof.

(3) The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor, for the purposes of section 29 and for any other purpose for which such use is material under this Act or at common law.

(4) Subject to any agreement subsisting between the parties, a registered user of a trade mark shall be entitled to call upon the propri etor thereof to take proceedings to prevent infringement thereof, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for in fringement in his own name as if he were the proprietor, making the pro prietor a defendant.

(5) A proprietor added as defendant in accordance with sub section (4) shall not be liable for any costs unless he enters an appear ance and takes part in the proceedings.

(6) Where it is proposed that a person should be registered as a registered user of a trade mark, the proprietor and the proposed regis tered user must apply in writing to the Registrar in the prescribed man ner and must furnish him with a statutory declaration made by the pro prietor, or by some person authorised to act on his behalf and approved by the Registrar �

(a) giving particulars of the relationship, existing or pro posed, between the proprietor and the proposed regis tered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made;

(b) stating the goods in respect of which registration is pro posed;

(c) stating any conditions or restrictions proposed with re spect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter; and

(d) stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof,

and with such further documents, information or evidence as may be required under the rules or by the Registrar.

(7) When the requirements of subsection (6) have been com plied with, if the Registrar, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the use of the trade mark in relation to the proposed goods or any of them by the proposed registered user subject to any conditions or restrictions which the Registrar thinks proper would not be contrary to the public interest, the Registrar may register the proposed registered user as a registered user in respect of the goods as to which he is so satisfied sub ject as aforesaid.

(8) The Registrar shall refuse an application under the forego ing provisions of this section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark.

(9) The Registrar shall, if so required by an applicant, take steps for securing that information given for the purposes of an applica tion under the foregoing provisions of this section (other than matter entered in the register) is not disclosed to rivals in trade.

(10) Without prejudice to section 34, the registration of a person as registered user �

(a) may be varied by the Registrar as regards the goods in respect of which, or any conditions or restrictions sub ject to which, it has effect, on the application in writing of the registered proprietor of the trade mark to which the registration relates;

(b) may be cancelled by the Registrar on the application in writing of the registered proprietor or of the registered user or of any other registered user of the trade mark; or

(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or be likely to cause, deception or confusion;

(ii) that the proprietor or the registered user mis represented, or failed to disclose, some fact ma terial to the application for registration, or that the circumstances have materially changed since the date of the registration;

(iii) that the registration ought not to have been ef fected having regard to rights vested in the ap plicant by virtue of a contract in the perfor mance of which he is interested.

(11) Provision shall be made by regulations for the notification of the registration of a person as a registered user to any other registered user of the trade mark, and for the notification of an application under subsection (10) to the registered proprietor and each registered user (not being the applicant) of the trade mark, and for giving to the applicant on such an application, and to all persons to whom such an application is notified and who intervene in the proceedings in accordance with the regulations an opportunity of being heard.

(12) The Registrar may at any time cancel the registration of a person as a registered user of a trade mark in respect of any goods in re spect of which the trade mark is no longer registered.

(13) Any decision of the Registrar under the foregoing provisions of this section shall be subject to appeal to the Court.

(14) Nothing in this section shall confer on a registered user of a trade mark any assignable or transmissible right to the use thereof.

[Section 31 modified by First Schedule of 1991:39 effective 18 June 1993]

Proposed use of trade mark by corporation to be constituted, etc.

31A (1) No application for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark�

(a) if the Court or the Registrar is satisfied that a body corporate is about to be constituted, and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods by the corporation; or

(b) if the application is accompanied by an application for the registration of a person as a registered user of the trade mark, and the Court or the Registrar is satisfied that the proprietor intends it to be used by that person in relation to those goods and the Court or the Registrar is also satisfied that that person will be registered as a registered user thereof immediately after the registration of the trade mark.

(2) The provisions of section 29 have effect, in relation to a trade mark registered under the power conferred by subsection (1), as if for the reference, in subsection (1)(a), to an intention on the part of an applicant for registration that a trade mark should be used by him there were substituted a reference to an intention on his part that it should be used by the corporation or registered user concerned.

(3) The Court or the Registrar may, as a condition of the exercise of the power conferred by subsection (1) in favour of an applicant who relies on intention to assign to a corporation as aforesaid, require him to give security for the costs of any proceedings before the Court or the Registrar relative to any opposition or appeal, and in default of such security being duly given may treat the application as abandoned.

(4) Where a trade mark is registered in respect of any goods under the power conferred by subsection (1) in the name of an applicant who relies on intention to assign to a corporation as aforesaid, then, unless within such period as may be prescribed, or within such further period not exceeding six months as the Registrar may on application being made to him in the prescribed manner allow, the corporation has been registered as the proprietor of the trade mark in respect of those goods, the registration shall cease to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly.

[Section 31A inserted by 1991:39 effective 18 June 1993}

Use of one of associated or substantially identical trade marks equivalent to use of another

32 (1) Where under this Act use of a registered trade mark is required to be proved for any purpose, the Court or the Registrar, as the case may be, may, if and so far as they think right, accept use of an associated registered trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.

(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any registered trade mark, being a part thereof registered in the name of the same proprietor by virtue of section 24(1).

Use of trade mark for export trade

33 The application in Bermuda of a trade mark to goods to be ex ported from Bermuda, and any other act done in Bermuda in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Bermuda, would constitute use of the trade mark therein, shall be deemed to constitute use of the trad

Bermuda Consolidated Legislation

Trade Marks Act 1974