Merchandise Marks (CAP. 276 1

CHAPTER 276

THE MERCHANDISE MARKS ACT

Arrangement of Sections
Section

1 . Short title.
2. Interpretation and application.
3. Offences as to trade marks and trade descriptions.
4. Forging trade mark.
5. Applying marks and description.
6. Exemption of certain persons employed in ordinary

course of business.
7 . Application of Act to watches.
8. Trade mark, how described in pleading.
9. Rule as to evidence.

10. Punishment of accessory.
1 1 . Search warrant and forfeiture.
12. Costs of defence or prosecution.
13. Limitation of prosecution.
14. Prohibition on importation.
15. Implied warranty on sale of marked goods.
16. Provisions as to false description not to apply in certain

cases.
17. Savings.

MERCHANDISE MARKS

(3 1st December, 1887).) 1211887. S.R.O. 2211956.
- - -. -.

S.I. 3911989.

1. This Act may be cited as the Merchandise Marks Short title.
Act.

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2 CAP. 276) Merchandise Marks

Interpretation
and application.

2. In this Act-

(1) "false trade description" means a trade description
which is false in a material respect as regards
the goods to which it is applied, and includes
every alteration of a trade description, whether
by way of addition, effacement or otherwise,
where that alteration makes the description
false in a material respect, and the fact that
a trade description is a trade mark, or part
of a trade mark, shall not prevent such trade
description being a false trade description
within the meaning of this Act;

"goods7' means anything which is the subject of trade,
manufacture or merchandise;

" name" includes any abbreviation of a name;

" person", "manufacturer, dealer, or trader", and "pro-
prietor'' include any body of persons corporate
or unincorporate;

"trade description" means any description, statement,
or other indication, direct or indirect-

(a) as to the number, quantity, measure, gauge,
or weight of any goods, or

(6) as to the place or country in which any goods
were made or produced, or

(c) as to the mode of manufacturing or producing
any goods, or

(4 as to the material of which any goods are com-
posed, or

(e) as to any goods being the subject of an existing
patent, privilege, or copyright;

and the use of any figure, word or mark which, accor-
ding to the custom of the trade, is commonly taken to
be an indication of any of the above matters, shall be
deemed to be a trade description within the meaning
of this Act;

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Merchandise Marks (CAP. 276 3

"trade mark" means a trade mark registered in the
register of trade marks kept under the Trade Marks Cap. 435.
Act, and includes any trade mark which, either with
or without registration, is protected by any general
rule under the said Act.

(2) The provisions of this Act respecting the applica-
tion of a false trade description to goods shall extend to the
application to the goods of any such figures, words or marks,
or arrangement or combination thereof whether including
a trade mark or not, as are reasonably calculated to lead
persons to believe that the goods are the manufacture or mer-
chandise of some person other than the person whose
manufacture or merchandise they really are.

(3) The provisions of this Act respecting the applica-
tion of a false trade description to goods, or respecting goods
to which a false trade description is applied, shall extend
to the application to goods of any false name or initials of
a person, and to goods with the false name or initials of a
person applied, in like manner as if such name or initials
were a trade description, and, for the purpose of this enact-
ment, the expression "false name or initials" means, as
applied to any goods, any name or initials of a person
which-

(a) are not a trade mark, or part of a trade mark,
and

( b ) are identical with, or a colourable imitation of,
the name or initials of a person carrying on business
in connection with goods of the same description, and
not having authorized the use of such name or initials,
and

( c ) are either those of a fictitious person or of some
person not boncifide carrying on business in connection
with such goods.

3. (1) Every person who-
(a) forges any trade mark; or

Offences as to
trade marks and
trade
descriptions.

(6 ) falsely applies to goods any trade mark, or any
mark so nearly resembling a trade mark as to be
calculated to deceive; or

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4 CAP. 276) Merchandise Marks

(c) makes any die, block, machine, or other instru-
ment for the purpose of forging, or of being used for
forging a trade mark; or

(d) applies any false trade description to goods; or

(e) disposes of, or has in his possession, any die,
block, machine, or other instrument for the purpose of
forging a trade mark; or

(f) causes any of the things above in this section
mentioned to be done;

shall, subject to the provisions of this Act, and unless he
proves that he acted without intent to defraud, be guilty of
an offence against this Act.

(2) Every person who sells, or exposes, or has in his
possession for sale, or any purpose of trade or manufacture,
any goods or things to which any forged trade mark or false
trade description is applied, or to which any trade mark,
or mark so nearly resembling a trade mark as to be calculated
to deceive, is falsely applied, as the case may be, shall, unless
he proves

(a) that having taken all reasonable precautions
against committing an offence against this Act, he had,
at the time of the commission of the alleged offence,
no reason to suspect the genuineness of the trade mark,
mark, or trade description; and

( 6 ) that, on demand made by or on behalf of the
prosecutor, he gave all the information in his power with
respect to the persons from whom he obtained such
goods or things; or

(c) that otherwise he had acted innocently;
be guilty of an offence against this Act.

(3) Every person guilty of an offence against this Act
shall be liable-

( a ) on conviction on indictment to imprisonment
for a term not exceeding two years, or to a fine, or to
both imprisonment and fine; and

(b) on summary conviction, to imprisonment for
a term not exceeding four months, or to a fine not

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Merchandise Marks (CAP. 276

exceeding one thousand dollars, and in the case of a
second or subsequent conviction, to imprisonment for
a term not exceeding six months, or to a fine not
exceeding three thousand dollars; and

(c) in any case, to forfeit to Her Majesty every chat-
tel, article, instrument or thing by means of or in rela-
tion to which the offence has been committed.

(4) The Court before whom any person is convicted
under this section may order any forfeited articles to be
destroyed, or otherwise disposed of, as the Court thinks fit.

(5) Any offence for which a person is, under this Act,
liable to punishment on summary conviction may be pro-
secuted, and any articles liable to be forfeited under this Act
by a Magistrate may be forfeited, in manner provided by
the Magistrate's Code of Procedure Act: Cap. 255.

Provided that a person charged with an offence under
this section before a Magistrate sitting under Part IV of the
said Act shall, on appearing before the Magistrate, and before
the charge is gone into, be informed of his right to be tried
on indictment, and, if he requires, be so tried accordingly.

4. A person shall be deemed to forge a trade mark Forging trade mark.
who either-

(a) without the assent of the proprietor of the trade
mark, makes that trade mark, or a mark so nearly
resembling that trade mark, as to be calculated to
deceive; or

( b ) falsifies any genuine trade mark, whether by
alteration, addition, effacement, or otherwise;

and any trade mark or mark so made or falsified is in this
Act referred to as a forged trade mark:

Provided that, in any prosecution for forging a trade
mark, the burden of proving the assent of the proprietor shall
lie on the defendant.

5 . (1) A person shall be deemed to apply a trade t~~~~z,g~;t4:,k,".
mark, or mark, or trade description to goods, who-

(a) applies it to the goods themselves; or

( b ) applies it to any covering, label, reel, or other

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6 CAP. 276) Merchandise Marks

thing in or with which the goods are sold, or exposed
or had in possession for any purpose of sale, trade or
manufacture; or

( 6 ) places, encloses, or annexes any goods which
are sold, or exposed or had in possession for any pur-
pose of sale, trade, or manufacture, in, with, or to any
covering, label, reel, or other thing to which a trade
mark or trade description has been applied; or

(6) uses a trade mark, or mark, or trade descrip-
tion in any manner calculated to lead to the belief that
the goods in connection with which it is used are
designated or described by that trade mark, or mark,
or trade description.

(2) The expression "covering" includes any stopper,
cask, bottle, vessel, box, cover, capsule, case, frame or wrap-
per; and the expression "label" includes any band or ticket.

A trade mark, or mark, or trade description, shall be
deemed to be applied whether it is woven, impressed or other-
wise worked into, or annexed or affixed to, the goods, or
to any covering, label, reel or other thing.

(3) A person shall be deemed to falsely apply to goods
a trade mark or mark, who, without the assent of the pro-
prietor of a trade mark, applies such trade mark, or a mark
so nearly resembling it as to be calculated to deceive; but
in any prosecution for falsely applying a trade mark or mark
to goods, the burden of proving the assent of the proprietor
shall lie on the defendant.

Exemption of
certain persons

6. Where a defendant is charged with making any
employed in die, block, machine or other instrument for the purpose of
ordinary forging, or being used for forging a trade mark, or with falsely
of business.

applying to goods any trade mark, or any mark so nearly
resembling a trade mark as to be calculated to deceive, or
with applying to goods any false trade description, or caus-
ing any of the things in this section mentioned to be done,
and proves-

( a ) that in the ordinary course of his business, he
is employed, on behalf of other persons, to make dies,
blocks, machines, or other instruments for making, or
being used in making, trade marks, or, as the case may

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Merchandise Marks ( C A P . 276 7

be, to apply marks or descriptions to goods, and that,
in the case which is the subject of the charge, he was
so employed by some person resident in Antigua
and Barbuda, and was not interested in the goods by
way of profit or commission dependent on the sale of
such goods; and

( 6 ) that he took reasonable precautions against
committing the offence charged; and

(c) that he had, at the time of the commission of
the alleged offence, no reason to suspect the genuineness
of the trade mark, mark, or trade description; and

(d) that he gave to the prosecutor all the informa-
tion in his power with respect to the persons on whose
behalf the trade mark, mark, or d. scription was applied;

he shall be discharged from the prosecution, but shall be
liable to pay the costs incurred by the prosecutor, unless he
has given due notice to him that he will rely on the above
defence.

7. Where a watch case has thereon any words or Application of
Act to watches.

marks which constitute, or are by common repute considered
as constituting, a description of the country in which the
watch was made, and the watch bears no description of the
country where it was made, those words or marks shall prim6
facie be deemed to be a description of that country within
the meaning of this Act, and the provisions of this Act with
respect to goods to which a false trade description has been
applied, and with respect to selling, or exposing, or having
in possession, for sale or any purpose of trade or manufac-
ture, goods with a false trade description, shall apply accor-
dingly; and, for the purposes of this section, the expression
"watch" means all that portion of a watch which is not the
watch case.

8. In any indictment, pleading, proceeding or docu- ;ff,",zb?;;. how
ment, in which any trade mark or f o r ~ e d trade mark is .leadin,.
intended to be mentioned, it shall be suff;cient, without fur- '
ther description and without any copy or facsimile, to state
that trade mark or forged trade mark to be a trade mark
or forged trade mark.

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CAP. 276) Merchandise Marks

Rule as to 9. In any prosecution for an offence against this Act,
evidence.

evidence of the port of shipment shall, in the case of imported
goods, be primci facie evidence of the place or country in which
the goods were made or produced.

Punishment of
accessory. 10. Any person who, being within Antigua and

Barbuda, procures, counsels, aids, abets or is accessory to
the commission, without Antigua and Barbuda, of any act,
which, if committed in Antigua and Barbuda would under
this Act be a misdemeanour, shall be guilty of that mis-
demeanour as a principal, and be liable to be indicted, pro-
ceeded against, tried and convicted in any district or place
in Antigua and Barbuda in which he may be, as if the mis-
demeanour had been there committed.

Search warrant 1 . (1) Where, upon information of an offence
and forfeiture.

against this Act, a Magistrate has issued either a summons
requiring the defendant charged by such information to
appear to answer to the same, or a warrant for the arrest
of such defendant, and either the said Magistrate, on or after
issuing the summons or warrant, or any other Magistrate,
is satisfied by information on oath that there is reasonable
cause to suspect that any goods or things, by means of or
in relation to which such offence has been committed, are
in any house or premises of the defendant, or otherwise in
his possession or under his control in any place, such
Magistrate may issue a warrant under his hand, by virtue
of which it shall be lawful for any constable named or refer-
red to in the warrant to enter such house, premises, or place
at any reasonable time by day, and to search there for and
seize and take away those goods or things; and any goods
or things seized under any such warrant shall be brought
before a Magistrate for the purpose of its being determined
whether the same are or are not liable to forfeiture under
this Act.

(2) If the owner of any goods or things which, if the
owner thereof had been convicted, would be liable to
forfeiture under this Act, is unknown or cannot be found,
an information or complaint may be laid for the purpose
only of enforcing such forfeiture, and a Magistrate may cause
notice to be advertised, stating that, unless cause is shown
to the contrary at the time and.place named in the notice,
such goods or things will be forfeited, and, at such time and

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Merchandise Marks (CAP. 276

place, the Magistrate, unless the owner or any person on
his behalf, or other person interested in the goods or things,
shows cause to the contrary, may order such goods or things
or any of them to be forfeited.

(3) Any goods or things forfeited under this section,
or under any other provision of this Act, may be destroyed,
or otherwise disposed of, in such manner as the Court by
which the same are forfeited may direct, and the court may,
out of any proceeds which may be realised by the disposi-
tion of such goods (all trade marks and trade descriptions
being first obliterated), award to any innocent party any loss
he may have innocently sustained in dealing with such goods.

12. O n any prosecution under this Act the Court may ~ ~ : ~ ~ $ ~ ~
order costs to be paid to the defendant by the prosecutor,
or to the prosecutor by the defendant, having regard to the
information given by, and the conduct of, the defendant and
prosecutor respectively.

13. No prosecution for an offence against this Act Limitation of
prosecution.

shall be commenced after the expiration of three years next
after the commission of the offence, or one year next after
discovery thereof by the prosecutor, whichever expiration
first happens.

14. (1) All goods which, if sold, would be liable to Prohibition on
importation.

forfeiture under this Act, and also all goods of foreign
manufacture bearing any name or trade mark being, or pur-
porting to be, the name or trade mark of any manufacturer,
dealer, or trader in the United Kingdom, or Antigua and
Barbuda, or any British possession, unless such name or trade
mark is accompanied by a definite indication of the country
in which the goods were made or produced, are hereby pro-
hibited to be imported into Antigua and Barbuda, and, sub-
ject to the provisions of this section, shall be included among
the goods prohibited to be imported, as if they were so
specified in the customs laws in force in Antigua and
Barbuda, and if any such goods as aforesaid shall be imported
or brought into Antigua and Barbuda, such goods shall be
forfeited, and may be destroyed or otherwise disposed of as
the Minister may direct.

(2) Before detaining any such goods, or taking any fur-
ther proceedings with a view to the forfeiture thereof under

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10 CAP. 276) Merchandise Marks

the law relating to the customs, the Minister may require
the regulations under this section, whether as to informa-
tion, security, conditions or other matters, to be complied
with, and may satisfy himself in accordance with those regula-
tions that the goods are such as are prohibited by this sec-
tion to be imported.

(3) The Cabinet may from time to time make, revoke,
and vary regulations, either general or special, respecting
the detention or forfeiture of goods the importation of which
is prohibited by this section, and the conditions, if any, to
be fulfilled before such detention and forfeiture: and may,
by such regulations, determine the information, notices, and
security to be given, and the evidence requisite for any of
the purposes of this section, and the mode of verification
of such evidence.

(4) Where there is on any goods a name which is iden-
tical with, or a colourable imitation of, the name of a place
in the United Kingdom, or Antigua and Barbuda, or any
British possession, that name, unless accompanied with the
name of the country in which such place is situate, shall be
treated, for the purposes of this section, as if it were the name
of a place in the United Kingdom, or Antigua and Barbuda,
or such British Possession, respectively.

(5) Such regulations may apply to all goods the impor-
tation of which is prohibited by this section, or different
regulations may be made respecting different classes of such
goods, or of offences in relation to such goods.

(6) The regulations may provide for the informant reim-
bursing the Treasury all expenses and damages incurred in
respect of any detention made on his information, and of
any proceedings consequent on such detention.

(7) All regulations under this section shall be published
in the Gazette.

(8) This section shall have effect as if it were part of
the Customs Act for the time being in force in Antigua and
Barbuda.

Implied warranty 15. O n the sale, or in the contract for the sale, of
on sale of
marked any goods to which the trade mark, or mark, or trade descrip-

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Merchandise Marks (CAP. 276 1 1

tion has been applied, the vendor shall be deemed to war-
rant that the mark is a genuine trade mark, and not forged
or falsely applied, or that the trade description is not a false
trade description within the meaning of this Act, unless the
contrary is expressed in some writing signed by or on behalf
of the vendor, and delivered, at the time of the sale or con-
tract, to and accepted by the vendee.

16. Where, at the passing of this Act, a trade descrip- gyfzzi;:i"
tion is lawfully and generally applied to goods of a particular ,,t to apply in
class. or manufactured bv a articular method. to indicate certain cases.

d

the particular class or method of manufacture of such goods,
the provisions of this Act with respect to false trade descrip-
tions shall not apply to such trade description when so
applied:

Provided that, where such trade description includes the
name of a place or country, and is calculated to mislead as
to the place or country where the goods to which it is applied
were actually made or produced, and the goods are not
actually made or produced in that place or country, this sec-
tion shall not apply, unless there is added to the trade descrip-
tion, immediately before or after the name of that place or
country, in an equally conspicuous manner with that name,
the name of the place or country in which the goods were
actually made or produced, with a statement that they were
made or produced there.

17. (1) This Act shall not exempt any person from Savin~s.
any action, suit, or other proceeding which might, but for
the provisions of this Act, be brought against him.

(2) Nothing in this Act shall entitle any person to refuse
to make a complete discovery, or to answer any question
or interrogatory in any action, but such discovery or answer
shall not be admissible in evidence against such person in
any prosecution for an offence against this Act.

(3) Nothing in this Act shall be construed so as to render
liable to any prosecution or punishment any servant of a
master resident in Antigua and Barbuda, who bonB fide acts
in obedience to the instructions of such master, and, on
demand made by or on behalf of the prosecutor, has given
full information as to his master.