Trade Marks Act


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Trade Marks (CAP. 435 1

CHAPTER 435

THE TRADE MARKS ACT

Arrangement of Sections
Section

1. Short title.
2. Interpretation.

PART 1

Registration of Trade Marks

3. Application for registration.
4. Limit of time for proceeding with application.
5. Particulars of trade mark.
6. Connection of trade mark with goods.
7. Registration of a series of marks.
8. Trade marks may be registered in any colour or

colours.
9. Advertisement of application.

10. Opposition to registration.
11. Assignment and transmission of trade mark.
12. Conflicting claims to registration.
13. Restrictions on registration.
14. Further restriction on registration.
15. Saving for power to provide for entry on register of

common marks as additions to trade marks.

Effect of Registration

16. Effect of application.
17. Right of first proprietor to exclusive use of trade mark.
18. Restrictions on actions for infringement.
19. Costs of action for infringement of trade mark.

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2 CAP. 435) Trade Marks

Register of Trade Marks

20. Register of trade marks.
21.' Removal of trade mark after fourteen years unless fee

paid.

Fees

22. Fees for registration.

General

23. Trade Marks Office.
24. Officers and clerks.
25. Trusts not to be entered in registers.
26. Refusal to register trade mark in certain cases.
27. Entry of assignments and transmissions in register.
28. Seal of Trade Marks Office.
29. Inspection of, and extracts from, registers.
30. Sealed copies to be received in evidence.
31. Rectification of registers by Court.
32. Power to Registrar to correct clerical errors.
33. Alteration of registered trade mark.
34. Falsification of entries in registers.
35. Exercise of discretionary power by Registrar.
36. Registrar may apply to Attorney-General.
37. Certificate of Registrar to be evidence.
38. Applications and notices by post.
39. Provision as to days for leaving documents at office.
40. Declaration by infant, person of unsound mind, &c.
41. Power of Cabinet to make general rules for classifying

goods and regulating business of Trade Marks
Office.

42. Authority for taking declarations.
SCHEDULE.

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Trade Marks (CAP. 435 3

TRADE MARKS

(3 l s t December, 1887.)
18/1989.

S.I. 39/1989.

1. This Act may be cited as the Trade Marks Act. short title.

2. In thisAct- Interpretation.

"Court" means the High Court.

"person" includes a body corporate.

"Registrar" means the Registrar of the High Court.

Regzstration of Trade Marks

3. ( 1 ) The Registrar may, on application by or on zgi;z:;.for
behalf of any person claiming to be the proprietor of a trade
mark, register the trade mark.

(2) The application must be made in the form set
forth in the Schedule, or in such other form as may be from Schedde.
time to time prescribed, and must be left at, or sent by post
to, the Trade Marks Office in the prescribed manner.

( 3 ) The application must be accompanied by the
prescribed number of representations of the trade mark,
and must state the particular goods or classes of goods in
connection with which the applicant desires the trade mark
to be registered.

(4) The Registrar may, if he thinks fit, refuse to register
a trade mark, but any such refusal shall be subject to appeal
to the Court, and the Court shall have jurisdiction to hear
and determine the appeal, and may make an order
determining whether, and subject to what conditions, if any,
registration is to be permitted.

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4 CAP. 435) Trade Ma*

(5) When an applicant for the registration of a trade
mark, otherwise than under an international convention, is
out of Antigua and Barbuda at the time of making the
application, he shall give the Registrar an address for service in
Antigua a i d Barbuda, and, if he fails to do so, the application
shall not be proceeded with until the address has been given.

Limit of time for
proceedig with

4. Where registration of a trade mark has not been or
application. shall not be completed within twelve months from the date

of the application, by reason of default on the part of the
applicant, the Registrar shall give notice of the non-comple-
tion to the agent (if any) employed on behalf of the
applicant, and, if at the expiration of fourteen days from
that notice the registration is not completed, shall give the
like notice to the applicant (to be left at his address within
Antigua and Barbuda, if he be out of Antigua and
Barbuda), and if at the expiration of the latter fourteen
days, or such further time as the Registrar may in special
cases permit, the registration is not completed, the applica-
tion shall be deemed to be abandoned.

Particulars of 5. For the purposes of this Act a trade mark must
trade mark.

consist of or contain, at least, one of the following essential
particulars-

( a ) a name of an individual or firm printed,
impressed or woven in some particular and distinctive
manner; or

(6 ) a written signature, or copy of a written signa-
ture, of the individual or firm applying for registration
thereof as a trade mark; or

( c ) a distinctive device, mark, brand, heading,
label or ticket; or

(d) an invented word or invented words; or

( e ) a word or words having no reference to the
character or quality of the goods, and not being a
geographical name.

(2) There may be added to any one or more of the
essential particulars mentioned in this section any letters,
words or figures, or combination of letters, words or figures,
or any of them; but the applicant for registration of any

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Trade Marks (CAP. 435 5

such additional matter must state in his application the
essential particulars of the trade mark, and must disclaim in
his application any right to the exclusive use of the added
matter, and a copy of the statement and disclaimer shall be
entered on the register:

Provided that a person need not, under this section,
disclaim his own name or the foreign equivalent thereof, or
his place of business, but no entry of any such name shall
affect the right of any owner of the same name to use that
name or the foreign equivalent thereof.

6. A trade mark must be registered for particular connectionof
trade mark with

goods or classes of goods. goods.

7. When a person claiming to be the proprietor of Registration of a
series of marks.

several trade marks, which, while resembling each other in
the material particulars thereof, yet differ in respect of-

(a) the statement of the goods for which they are
respectively used or proposed to be used, or

(6) statements of numbers; or

(c) statements of price; or

(d) statements of quality; or

(e) statements of names of places,

seeks to register such trade marks, they may be registered as
a series in one registration. A series of trade marks shall be
assignable and transmissible only as a whole, but for all
other purposes each of the trade marks comprising a series
shall be deemed and treated as registered separately.

8. A trade mark may be registered in any colour or :~$$ZZ~Y
colours, and such registration shall (subject to the colour or
provisions of this Act) confer on the registered owner the colours.
exclusive right to use the same in that or any other colour or
colours.

9. Every application for registration of a trade mark Advertisement application. of
under this Act shall, as soon as may be after its receipt, be
advertised by the Registrar, unless the Registrar refuses to
entertain the application.

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6 CAP. 435) Trade Marks

Opposition to
registration. 10. (1) Any person may within one month, or such

further time, not exceeding three months, as the Registrar
may allow, of the advertisement of the application give
notice in duplicate at the Trade Marks Office of opposition
to registration of the trade mark, and the Registrar shall
send one copy of such notice to the applicant.

(2) Within one month after receipt of such notice, or
such further time as the Registrar may allow, the applicant
may send to the Registrar a counter statement in duplicate
of the grounds on which he relies for his application, and, if
he does not do so, shall be deemed to have abandoned his
application.

(3) If the applicant sends such counter statement, the
Registrar shall furnish a copy thereof to the person who
gave notice of opposition, and shall, after hearing the
applicant and the opponent, if so required, decide whether
the trade mark is to be registered, but his decision shall be
subject to appeal to the Court, and the said Court shall have
jurisdiction to hear and determine the appeal, and shall
hear the applicant and the opponent and the Registrar, and
shall make an order determining whether, and subject to
what conditions (if any) registration is to be permitted.

(4) If the applicant abandon his application after
notice of opposition in pursuance of this section, he shall be
liable to pay to the opponent such costs in respect of the
opposition as the Registrar may determine to be reasonable.

( 5 ) When the opponent is out of Antigua and
Barbuda, he shall give the Registrar an address for service in
Antigua and Barbuda.

Assignment and
hansmission of 11. A trade mark, when registered, shall be assigned
trade mark. and transmitted only in connection with the goodwill of the

business concerned in the particular goods or classes of
goods for which it has been registered, and shall be
determinable with that goodwill.

conflicting claims 12. Where each of several persons claims to be
to registration. registered as proprietor of the same trade mark, the

Registrar may refuse to register any of them until their

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Trade Marks (CAP. 435

rights have been determined according to law, and the
Registrar may himself submit, or require the claimants to
submit, their rights to the Court.

13. (1) Except where the Court has decided that Re+ctipns on
reptrahon. two or more persons are entitled to be registered as

proprietors of the same trade mark, the Registrar shall not
register in respect of the same goods, or description of
goods, a trade mark identical with one already on the
register with respect to such goods or description of goods.

(2) Except as aforesaid the Registrar shall not register,
with respect to the same goods or description of goods, a
trade mark having such resemblance to a trade mark
already on the register with respect to such goods, or
description of goods, as to be calculated to deceive.

14. It shall not be lawful to register as part of, or in Ez;~r
combination with, a trade mark any scandalous design or
any words, the use of which would, by reason of their being
calculated to deceive or otherwise, be deemed disentitled to
protection in a Court ofJustice.

15. (1) Nothing in this Act shall be construed to Savingforpower
to provide for

prevent the Registrar entering on the register, in the pre-
scribed manner, and subject to the prescribed conditions, of commonmarks

as additions to
as an addition to any trade mark, any distinctive word or ,de-h.
combination of words, though the same is common to the
trade in the goods with respect to which the application is
made.

(2) The applicant for registration of any such addition
must, however, state in his application the essential particu-
lars of the trade mark, and must disclaim in his application
any right to the exclusive use of the added matter, and a
copy of the statement and disclaimer shall be entered on
the register:

Provided that a person need not, under this section,
disclaim his own name or the foreign equivalent thereof, or
his place of business; but no entry of any such name shall
affect the right of any owner of the same name to use that
name or the foreign equivalent thereof.

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CAP. 435) Trade Marks

Effect of
application.

Right of fust
proprietor to
exclusive use of
trade mark.

Restrictions on
actions for
infringement.

Costs of action for
infringement of
trade marks.

Register of trade
marks.

Removal of trade
mark after
fourteen years
unless fee paid.

Effect of Registration

16. Application for registration of a trade mark shall
be deemhd to be equivalent to public use of the trade mark.

17. The registration of a person as proprietor of a
trade mark shall be prima facie evidence of his right to the
exclusive use of the trade mark, and shall, after the
expiration of five years from the date of the registration, be
conclusive evidence of his right to the exclusive use of the
trade mark, subject to the provisions of this Act.

18. A person shall not be entitled to institute any
proceeding to prevent or to recover damages for the
infringement of a trade mark, unless, in the case of a trade
mark capable of being registered under this Act, it has been
registered in pursuance of this Act.

19. In an action for infringement of a registered
trade mark, the Court or a Judge may certify that the right
to the exclusive use of the trade mark came in question, and
if the Court or a Judge so certifies, then, in any
subsequent action for infringement, the plaintiff in that
action, on obtaining a final order or judgment in his favour,
shall have his full costs, charges, and expenses as between
solicitor and client, unless the Court or Judge trying the
subsequent action certifies that he ought not to have the
same.

PART I11

Register of Trade Marks

20. There shall be kept at the Trade Marks Office a
book called the register of trade marks, wherein shall be
entered the names and addresses of proprietors of
registered trade marks, notifications of assignments and
transmissions of trade marks, and such other matter as may
be from time to time prescribed.

21. (1) At a time not being less than two months,
nor more than three months, before the expiration of
fourteen years from the date of the registration of a trade

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Trade Mark (CAP. 435 9

mark, the Registrar shall send notice to the registered
proprietor that the trade mark will be removed from the
register unless the proprietor pays to the Registrar before
the expiration of such fourteen years (naming the date at
which the same will expire) the prescribed fee; and if such
fee be not previously paid, he shall, at the expiration of one
month from the date of the giving of the first notice, send a
second notice to the same effect.

(2) If such fee be not paid before the expiration of
such fourteen years, the Registrar may, after the end of
three months from the expiration of such fourteen years,
remove the mark from the register, and so, from time to
time, at the expiration of every period of fourteen years.

(3) If, before the expiration of the said three months,
the registered proprietor pays the said fee together with the
additional prescribed fee, the Registrar may, without
removing such trade mark from the register, accept the said
fee as if it had been paid before the expiration of the said
fourteen years.

(4) Where, after the said three months, a trade mark
has been removed from the register for non-payment of the
prescribed fee, the Registrar may, if satisfied that it is just so
to do, restore such trade mark to the register on payment of
the prescribed additional fee.

( 5 ) Where a trade mark has been removed from the
register for non-payment of the fee or otherwise, such trade
mark shall, nevertheless, for the purpose of any application
for registration during one year next after the date of such
removal, be deemed to be a trade mark which is already reg-
istered, unless it is shown to the satisfaction of the Registrar
that the non-payment of the fee arises from the death or
bankruptcy of the registered proprietor, or from his having
ceased to carry on business, and that no person claiming
under that proprietor or under his bankruptcy is using the
trade mark.

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10 CAP. 435) Trade Marks

Fees

Fees for
registration. 2%. There shall be paid in respect of applications for

registration and other matters under this Act such fees as
may be from time to time prescribed.

General

Trade Marks
Office.

23. (1) The Cabinet may provide for the purposes
of this Act an office with all requisite buildings and
conveniences, which shall be called, and is in this Act
referred to as, the Trade Marks Office.

(2) Until a new Trade Marks Office is provided, the
office of the Registrar shall be the Trade Marks Office
within the meaning of this Act.

(3) The Trade Marks Office shall be under the
immediate control of the Registrar, who shall act under the
superintendence and direction of the Minister.

(4) Any act or thing directed to be done by or to the
Registrar may, in his absence, be done by or to any officer
for the time being in that behalf authorized by the Minister.

Officers and
clerks.

24. (1) The Public Service Commission may, at any
time after the passing of this Act, and from time to time,
appoint such officers and clerks with such designations and
duties as they shall think fit, and may from time to time
remove any of these officers and clerks.

(2) The salaries of these officers and clerks shall be
appointed by the Public Service Commission, with the
concurrence of Parliament, and the same, and the other
expenses of the execution of this Act, shall be paid out of
the money .provided by Parliament.

Trusts not to be 25. There shall not be entered in any register kept
entered in
registers. under this Act, or be receivable by the Registrar, any notice

of any trust expressed, implied, or constructive.

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Trade arks (CAP. 435 11

26. The Registrar may refuse to register a trade mark Refusal to register
trade mark in of which the use, in his opinion, would be contrary to law or ced ,.

morality.

27. Where a person becomes entitled by assignment, Entry of
assignments and transmission, or other operation of law to a registered trade ,missions in

mark, the Registrar shall on request, and on proof of title to register.
his satisfaction, cause the name of such person to be
entered as proprietor of the trade mark in the Register of
Trade Marks. The person for the time being entered in the
register of trade marks as proprietor of a trade mark shall,
subject to the provisions of this Act and to any rights
appearing from such register to be vested in any other per-
son, have power absolutely to assign, grant licences as to,
or otherwise deal with, the same, and to give effectual receipts
for any consideration for such assignments, licence or dealing:

Provided that any equities in respect of such trade mark
may be enforced in like manner as in respect to any other
personal property.

28. There shall be a seal for the Trade Marks Office, ~~;f~;;~,","
and impressions thereof shall be judicially noticed and
admitted in evidence.

29. Every register kept under this Act shall, at all Inspedonof,and
extracts from, convenient times, be open to the inspection of the public,

subject to the provisions of this Act and to such regulations
as may be prescribed; and certified copies, sealed with the
seal of the Trade Marks Office, of any entry in any such
register shall be given to any person requiring the same, on
payment of the prescribed fee.

30. Printed or written copies or extracts, purporting sealed copies to
be received in

to be certified by the Registrar and sealed with the seal of evidence.
the Trade Marks Office, of or from the registers and other
books kept there shall be admitted in evidence in all Courts
of Antigua and Barbuda, and in all proceedings, without
further proof or production of the originals.

31. (1) The Court may, on the application of any E&y;y;L.
person aggrieved by the omission, without sufficient cause,
of the name of any person, or of any other particulars, from

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12 CAP. 435) Trade Marks

any register kept under this Act, or by any entry made, with-
out sufficient cause, in any such register, make such order
for making, expunging, or varying the entry, as the Court
thinks&; or the Court may refuse the application; and, in
either case, may make such order with respect to the costs
of the proceedings as the Court thinks fit.

( 2 ) The Court may, in any proceeding under this section,
decide any question that it may be necessary or expedient to
decide for the rectification of a register; and may direct an
issue to be tried for the decision of any question of fact, and
may award damages to the party aggrieved.

(3) Any order of the Court rectifying a register shall
direct that due notice of the rectification be given to the
Registrar.

PowertoRegistrar 32. The Registrar may, on request in writing accom-
to correct clerical
errors. panied by the prescribed fee-

( a ) correct any clerical error in, or in connection
with, an application for registration of a trade mark, or

(b) correct any clerical error in the name, style or
address of the registered proprietor of the trade mark,
or

(c) cancel the entry, or part of the entry, of a
trade mark on the register, or

( d ) permit an applicant for registration of a trade
mark to amend his application by omitting any
particular goods or classes of goods, in connection with
which he has desired the trade mark to be registered:

Provided that the applicant accompanies his
request by a statutory declaration made by himself,
stating his name, address and calling, and that he is the
person whose name appears on the register as the
proprietor of the said trade mark.

Alteration of
registered trade

33. (1) The registered proprietor of any registered
mark. trade mark may apply to the Court for leave to add to or

alter such mark in any particular, not being an essential
particular within the meaning of this Act; and the Court
may refuse or grant leave on such terms as it may think fit.

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Trade Marks (CAP. 435 13

(2) Notice of any intended application to the Court
under this section shall be given to the Registrar by the
applicant; and the Registrar shall be entitled to be heard on
the application.

(3) If the Court grants leave, the Registrar shall, on
proof thereof and on payment of the prescribed fee, cause
the register to be altered in conformity with the order of
leave.

34. If any person makes, or causes to be made a false "sifiationof
entries in entry in any register kept under this Act, or a writing falsely registers.

purporting to be a copy of an entry in any such register, or
produces or tenders, or causes to be produced or tendered
in evidence any such writing, knowing the entry or writing
to be false, he shall be guilty of a misdemeanour.

3 ! k Where any discretionary power is by this Act Exerciseof
discretionary given to the Registrar, he shall not exercise that power powerby

adversely to the applicant for the registration of the trade Regis-.
mark, without giving the applicant an opportunity of being
heard personally or by his agent.

36. The Registrar may, in any case of doubt or diffi- Regiftrarma~
apply to Attomey-

culty arising in the administration of any of the provisions e n e d .
of this Act, apply to the Attorney-General for directions in
the matter.

37. A certificate purporting to be under the hand of Certificateof
Registrar to be the Registrar, as to any entry, matter, or thing which he is evidence.

authorized by this Act, or any general rules made there-
under, to make or do, shall be prima facie evidence of the
entry having been made, and of the contents thereof, and
of the matter or thing having been done or left undone.

38. (1) Any application, notice, or other document 4pficat'omand
notices by post.

authorized or required to be left, made, or given at the
Trade Marks Office, or to the Registrar, or to any other
person under this Act, may be sent by a prepaid letter
through the post; and if so sent shall be deemed to have
been left, made, or given respectively at the time when the
letter containing the same would be delivered in the
ordinary course of post.

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14 CAP. 435) Trade Marks

Provision as to
days for leaving
documents at
office.

Cap. 354.

Declaration by
infant, person
of unsound
mind, 8cc.

Power of Cabinet
to make general
rules for
classifying goods
and regulating
business of Trade
Marks Office.

(2) In providing such service or sending, it shall be
sufficient to prove that the letter was properly addressed
and put into the post.

' 39. Whenever the last day fixed by this Act, or by any
rule for the time being in force, for leaving any document,
or paying any fee, at the Trade Marks Office shall fall on
Christmas Day, Good Friday, or on a Saturday or Sunday, or
any day observed as a holiday under the Public Holidays
Act, or any day observed as a day of public fast or general
thanksgiving, herein referred to as excluded days, it shall be
lawful to leave such document, or to pay such fee, on the
day following such excluded day, or days, if two or more of
them occur consecutively.

40. If any person is, by reason of infancy, unsound-
ness of mind, or other inability, incapable of making any
declaration or of doing anything required or permitted by
this Act, or by any rules made under the authority of this
Act, then the guardian or committee (if any) of such
incapable person, or if there be none, any person appointed
by any Court or Judge possessing jurisdiction in respect to
the property of incapable persons, upon the petition of any
person on behalf of such incapable person, or of any other
person interested in the making of any such declaration or
doing any such thing, may make such declaration, or a
declaration as nearly corresponding thereto as circum-
stances permit, and do such thing in the name and on
behalf of such incapable person, and all acts done by such
substitute shall, for the purposes of this Act, be as effectual
as if done by the person for whom he is substituted.

41. (1) The Cabinet may, from time to time, make
such general rules and do such things as they think
expedient, subject to the provisions of this Act-

(a ) for regulating the practice of registration
under this Act;

( b ) for classifying goods for the purposes of trade
marks;

( c ) for making or requiring duplicates of any
documents;

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Trade Marks (W. 435 15

(d) for securing and regulating the publishing
and selling of copies, at such prices and in such
manner as the Cabinet may think fit, of any documents
in the Trade Marks Office;

(e) for securing and regulating the making,
printing, publishing, and selling of indexes to, and
abridgements of, any documents in the Trade Marks
Office; and providing for the inspection of indexes and
abridgements, and other documents;

(f) generally for regulating the business of the
Trade Marks Office and all things by this Act placed
under the direction or control of the Registrar, or of
the Cabinet.

(2) The Form in the Schedule may be altered or
amended by rules made by the Cabinet.

(3) General rules may be made under this section at
any time after the passing of this Act, but not so as to take
effect before the commencement of this Act; and shall
(subject as is hereinafter mentioned) be of the same effect
as if they were contained in this Act, and shall be judicially
noticed.

(4) Any rules made in pursuance of this section shall
be laid before Parliament if Parliament be in session at the
time of the making thereof, or if not, then as soon as
practicable after the beginning of the next session of
Parliament; and they shall be advertised twice in the Gazette.

(5) If Parliament resolve that such rules or any of them
ought to be annulled, the same shall, after the date of such
resolution, be of no effect, without prejudice to the validity
of anything done in the meantime under such rules or rule,
or to the making of any new rules or rule.

42. Any person authorized by any law in force in Authofit~for
'aking Antigua and Barbuda to take affidavits may take a declarations.

declaration authorized or required to be made under this
Act.

LAWS OF ANTIGUA AND BARBUDA

16 CAP. 435) Trade Marks

SCHEDULE S. 3.

Form of application for registration of Trade Mark.

(One representation to befixed within this square, and
two others on separate sheets of foolscap of same size.)

(Rgbresentations of a larger size may be folded, but
must be mounted upon linen and affixed hereto.)

You are hereby requested to register the accompanying trade
mark (in class , iron in bars, sheets, and plates;
in class , steam engines and boilers; and in class

warming apparatus) in the name of ( a )
who claims to be the

proprietor thereof:

Registration fees enclosed $

(Signed ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

To the Registrar,
Court House,
St. John's, Antigua.

NOTE.-If the trade mark has been in use before, state length of
user.

( a ) Here insert legibly the name, address, and business of the
individual or firm.