Industrial Property Act 1994
No. 19 of 1994
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INDUSTRIAL PROPERTY ACT 1994
Industrial Property Act 1994 Arrangement of Sections
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INDUSTRIAL PROPERTY ACT 1994
Arrangement of Sections
Section
PART I - PRELIMINARY 5
1 Short title and Commencement........................................................................5
2 Interpretation....................................................................................................5
PART II - PATENTS 7
3 Inventions.........................................................................................................7
4 Matters excluded from patent protection. ........................................................7
5 Patentable Inventions. ......................................................................................7
6 Right to patent; naming of inventor. ................................................................8
7 Applications. ....................................................................................................9
8 Duty of invention; amendment and division of application...........................10
9 Right of priority under the Paris Convention.................................................10
10 Information concerning corresponding foreign applications for patents
or other titles of protection.............................................................................10
11 Filing Date; Examination...............................................................................11
12 Grant of patent. ..............................................................................................12
13 Rights conferred by patent; exploitation by Government or person
thereby authorized..........................................................................................12
14 Duration annual fees. .....................................................................................13
15 Non-voluntary licences. .................................................................................13
16 Invalidation. ...................................................................................................14
PART III - UTILITY MODEL CERTIFICATES 14
17 Applicability of provisions pertaining to patents. ..........................................14
Arrangement of Sections Industrial Property Act 1994
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18 Special provisions pertaining to utility model certificates. ............................15
19 Conversion of applications of patent or utility model certificates. ................15
PART IV - INDUSTRIAL DESIGNS 15
20 Registrable industrial designs.........................................................................15
21 Right to registration of industrial designs; naming of creator. .......................16
22 Application. ....................................................................................................17
23 Examination; registration of industrial design. ..............................................18
24 Rights conferred by registration; duration and renewal. ................................18
25 Invalidation. ...................................................................................................19
PART V - MARKS, COLLECTIVE MARKS AND TRADE NAMES 19
26 Acquisition of the exclusive right to a mark; registrability. ...........................19
27 Application for registration ............................................................................20
28 Examination; opposition; registration of mark...............................................20
29 Rights conferred by registration; duration; renewal. ......................................21
30 Invalidation; and removal on grounds of non-use..........................................22
31 Collective mark. .............................................................................................22
32 Licensing of marks and collective marks. ......................................................23
33 Trade names. ..................................................................................................23
PART VI - ACTS OF UNFAIR COMPETITION 23
34 Acts of unfair competition..............................................................................23
PART VII - GENERAL PROVISIONS 24
35 Representation by agent. ................................................................................24
36 Changes in ownership; licence contracts........................................................24
37 Registrar. ........................................................................................................26
38 Functions of the Registrar. .............................................................................27
39 Registers, Gazette...........................................................................................27
40 Correction or errors, extension of time. .........................................................27
41 Exercise of discretionary power. ....................................................................28
42 Competence of court. .....................................................................................28
43 Infringement, unlawful acts, offences. ...........................................................28
44 Regulations.....................................................................................................29
45 Administrative instructions. ...........................................................................29
46 Repeal of CAP 120. Savings and transitional provisions...............................29
Industrial Property Act 1994 Section 1
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INDUSTRIAL PROPERTY ACT 1994
No. 19 of 1994
AN ACT TO PROVIDE FOR THE REGISTRATION AND
PROTECTION OF PATENTS, UTILITY MODEL CERTIFICATES,
INDUSTRIAL DESIGNS AND TRADE MARKS
I assent,
TUPOUTO'A
[9th March, 1995.]
[9th November, 1994]
BE IT ENACTED by the King and Legislative Assembly of Tonga in the Legislature
of the Kingdom as follows:
PART I - PRELIMINARY
1 Short title and Commencement.
This Act may be cited as the Industrial Property Act 1994, and shall come into
operation on a date to be fixed by His Majesty in Council.
2 Interpretation.
In this Act, unless the context otherwise requires, —
Section 2 Industrial Property Act 1994
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“agent” means a law practitioner resident or having a place of business in
Tonga representing the applicant;
“collective mark” means any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any
other common characteristic, including the quality, of goods or service of
different enterprises which use the sign under the control of the registered
owner of the collective mark;
“court” means the Supreme Court of Tonga;
“industrial design” means any composition of lines or colours or any
three-dimensional form, whether or not associated with lines or colours,
where such composition or form gives a special appearance to a product
of industry or handicraft and can serve as a pattern for a product of
industry or handicraft but does not include anything in an industrial design
which serves solely to obtain a technical result;
“International Classification” means the classification according to the
Nice Agreement;
“invention” means an idea of an inventor which permits in practice the
solution of a specific problem in the field of technology;
“marks” means any visible sign capable of distinguishing the goods or
services of an enterprise;
“Minister” means the Minister of Labour, Commerce and Industries or
such Minister appointed by His Majesty in Council to be responsible for
the administration of this Act;
“Nice Agreement” means the Nice Agreement of June 15, 1957,
Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks as last revised;
“Paris Convention” means the Paris Convention for the Protection of
Industrial Property of March 20, 1883, as last revised;
“patent” means the title granted to protect an invention;
“patentee” means a person registered as grantee or proprietor of a patent;
“priority date” means the date of the earlier application that serves as the
basis for the right of priority provided for in the Paris Convention;
“registers” means the registers referred to in section 39(1);
“Registrar” means the person holding office in terms of section 37;
“regulations” means regulations made under section 45;
“trade name” means the name or designation identifying and
distinguishing an enterprise;
Industrial Property Act 1994 Section 3
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“utility model certificate” means a Certificate referred to in sections 17
to 19.
PART II - PATENTS
3 Inventions.
Subject to section 4, an invention may be or may relate to a product or a process.
4 Matters excluded from patent protection.
The following, even if they are inventions in terms of section 2, shall be
excluded from patent protection, —
(a) discoveries, scientific theories and mathematical methods;
(b) schemes, rules or methods for doing business, performing purely
mental acts or playing games;
(c) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods practised on the human or
animal body. This provision shall not apply to products for use in
any of those methods.
5 Patentable Inventions.
(1) An invention is patentable if it is new, involves an inventive step and is
industrially applicable.
(2) An invention is new if it is not anticipated by prior art.
(3) Prior art shall consist of everything disclosed to the public:
(a) anywhere in the world, by publication in tangible form; or
(b) in Tonga, by oral disclosure, by use or in any other way,
prior to the filing, or where applicable, the priority date, of the application
claiming the invention.
(4) For the purposes of subsection (3), disclosure to the public of the
invention shall not be taken into consideration if it occurred within twelve
months preceding the filing date or, where applicable, the priority date, of
the application, and if it was by reason or in consequence of acts
committed by the applicant or his predecessor in title or of an abuse
committed by a third party with regard to the applicant or his predecessor
in title.
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(5) An invention shall be considered as involving an inventive step if, having
regard to the prior art relevant to the application claiming the invention, it
would not have been obvious to a person having ordinary skill in the art.
(6) An invention shall be considered industrially applicable if it can be made
or used in any kind of industry.
(7) Industry shall be understood in its broadest sense; it shall include
handicraft, agriculture, fishery, pharmaceuticals and services.
(8) Inventions that are contrary to public order or morality shall not be
patentable.
6 Right to patent; naming of inventor.
(1) The right to a patent shall belong to the inventor.
(2) If two or more persons have jointly made an invention, the right to the
patent shall belong to them jointly.
(3) If and to the extent to which two or more persons have made the same
invention independently of each other, the person whose application has
the earliest filing date or, if priority is claimed, the earliest validly claimed
priority date and leads to the grant of a patent shall have the right to the
patent.
(4) The right to a patent may be assigned, or may be transferred by
succession.
(5) Where an invention is made in execution of an employment contract, the
right to the patent shall belong, in the absence of contractual provisions to
the contrary, to the employer.
(6) When an invention is made in execution of a commission or an
employment contract, the right to the patent for that invention shall
belong, in the absence of contractual provisions to the contrary, to the
person having commissioned the work or the employer, as the case may
be.
(7) When the invention has an economic value much greater than the parties
could have reasonably foreseen at the time of concluding the contract, the
inventor shall have a right to equitable remuneration, which shall be
determined by the court in the absence of agreement between the parties.
(8) Notwithstanding subsections (6) and (7), when an employee, whose
employment contract does not require him to engage in inventive activity,
makes, in the field of activities of his employer, an invention by using
data or means available to him through his employment, the right to the
patent for that invention shall belong, in the absence of contractual
provisions to the contrary, to the employer:
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Provided that the employee shall have a right to equitable remuneration
taking into account his salary, the economic value of the invention and
any benefit derived from the invention by the employer. In the absence of
agreement between the parties, the remuneration shall be determined by
the court.
(9) Any contractual provision which is less favourable to the inventor than the
provisions of this section shall be null and void.
(10) The inventor shall be named as such in the patent, unless in a special
written declaration addressed to the Registrar he indicates that he wishes
not to be named. Any promise or undertaking by the inventor made to any
person to the effect that he will make such a declaration shall be without
legal effect.
7 Applications.
(1) An application for a patent shall be filed with the Registrar and shall
contain a request, a description, one or more claims, one or more
drawings, where required, and an abstract. It shall be accompanied by the
payment of the prescribed application fee.
(2) The request shall contain a petition, to the effect that a patent be granted,
the name of the applicant and other prescribed data concerning the
applicant, the inventor and the agent, if any, and the title of the invention.
(3) Where the applicant is not the inventor, the request shall be accompanied
by a statement justifying the applicant's right to the patent.
(4) The description shall disclose the invention in a manner sufficiently clear
and complete for the invention to be evaluated, and to be carried out by a
person having ordinary skill in the art, and shall, in particular, indicate at
least one mode known to the applicant for carrying out the invention.
(5) The claim or claims shall determine the scope of the protection; the
description and the drawings may be used to interpret the claims.
(6) Claims shall be clear and concise and shall be fully supported by the
description.
(7) Drawings shall be required when they are necessary for the understanding
of the invention.
(8) The abstract shall merely serve the purpose of technical information; in
particular, it shall not be taken into account for the purpose of interpreting
the scope of the protection.
(9) The applicant may withdraw the application at any time before grant.
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8 Duty of invention; amendment and division of application.
(1) The application shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive concept.
(2) The applicant may at any time before grant, amend the application, but the
amendment shall not go beyond the disclosure in the initial application.
(3) The applicant may, up to the time when the application is in order for
grant, divide the application into two or more applications namely,
divisional applications, but each divisional application shall not go beyond
the disclosure in the initial application.
(4) The divisional application shall be entitled to the filing date and, where
applicable, the priority date of the initial application.
(5) The fact that a patent has been granted on an application that did not
comply with the requirement of unity of invention under subsection (1)
shall not be a ground for the invalidation of the patent.
9 Right of priority under the Paris Convention.
(1) The application may contain a declaration claiming the priority, as
provided for in the Paris Convention, of one or more earlier national,
regional or international applications filed by the applicant or his
predecessor in title in or for any State party to the said Convention.
(2) Where the application contains a declaration under subsection (1), the
Registrar may require that the applicant furnish, within the prescribed
time limit, a copy of the earlier application certified as correct by the
office with which it was filed.
(3) The effect of the said declaration shall be as provided in the Paris
Convention.
(4) If the Registrar finds that the requirement under this section and the
regulations pertaining thereto have not been fulfilled, the said declaration
shall be considered not to have been made.
10 Information concerning corresponding foreign applications for
patents or other titles of protection.
(1) The applicant shall, at the request of the Registrar, furnish him with the
date and number of any application for a patent or other titles of
protection filed by him abroad (herein referred to as “foreign
applications”), relating to the same or essentially the same invention as
that claimed in the application filed with the Registrar.
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(2) The applicant shall, at the request of the Registrar, furnish him with the
following documents relating to one of the foreign applications referred to
in subsection (1):
(a) a copy of the patent or other title of protection granted on the basis
of the foreign application;
(b) a copy of any communication received by the applicant concerning
the results of any search or examination carried out in respect of the
foreign application;
(c) a copy of any final decision rejecting the foreign application or
refusing the grant requested in the foreign application; and
(d) a copy of any final decision invalidating the patent or other title of
protection granted on the basis of the foreign application referred to
in subsection (1).
11 Filing Date; Examination.
(1) The Registrar shall accord as the filing date, the date of receipt of the
application, provided that, at the time of receipt, the application fee is paid
and the application contains —
(a) the name of the applicant;
(b) a part which on the face of it appears to be a description;
(c) a part which on the face of it appears to be a claim or claims;
(d) an express or implicit indication that the grant of a patent is sought.
(2) If the Registrar finds that the application did not, at the time of receipt,
fulfil the requirements referred to in subsection (1), he shall invite the
applicant to file the required correction and shall accord as the filing date
the date of receipt of the required correction, but if no correction is made,
the application shall be treated as if it had not been filed.
(3) Where the application refers to drawings which in fact are not included in
the application, the Registrar shall invite the applicant to furnish the
missing drawings.
(4) If the applicant complies with the invitation referred to in subsection (3),
the Registrar shall accord, as the filing date, the date of receipt of the
missing drawings. Otherwise the Registrar shall accord, as the filing date,
the date of receipt of the application and shall treat any references to the
said drawings as non-existent.
(5) After according a filing date, the Registrar shall examine whether the
application complies with the requirements of section 7(1), (2), (3) and
(4).
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12 Grant of patent.
(1) Where the Registrar finds that the conditions referred to in section 11(5)
are fulfilled, he shall grant the patent. Otherwise, he shall reject the
application and notify the applicant of his decision.
(2) When he grants a patent, the Registrar shall, —
(a) publish the fact that he has granted the patent;
(b) issue to the applicant a certificate of the grant of the patent and a
copy of the patent;
(c) record the patent; and
(d) make available copies of the patent to the public, on payment of the
prescribed fee.
13 Rights conferred by patent; exploitation by Government or person
thereby authorized.
(1) Exploitation in respect of a patented invention means any of the following
acts —
(a) when the patent has been granted in respect of a product, the
making, importing, exporting, offering for sale, setting and using
the products or stocking such products for the purposes of offering
for sale;
(b) when the patent has been granted in respect of a process, using the
process or doing any of the acts referred to in sub-paragraph (a) in
respect of a product obtained directly by means of the process.
(2) Subject to subsections (4) and (5} and section 15, the exploitation of the
patented invention in Tonga by persons other than the owner of the patent
shall require the patentee's permission.
(3) The patentee shall, in addition to any other rights, remedies or actions
available to him, have the right, subject to subsections (4) and (5) and
section 15, to institute court proceedings against any person who exploits
the patent without his permission, or who performs acts which may likely
infringe the patented invention.
(4) The rights under the patent shall not extend,
(a) to acts in respect of articles which have been put on the market in
Tonga by the patentee or with his consent;
(b) to the use of articles on aircraft, land vehicles, or vessels of other
countries which temporarily or accidentally enter the airspace,
territory or waters of Tonga;
(c) to acts done only for experimental purposes relating to a patented
invention;
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(d) to acts performed by any person who in good faith, before the filing
or, where priority is claimed, the priority date of the application on
which the patent is granted, was using the invention in Tonga or
was making effective and serious preparations in Tonga for such
use, to the extent that such acts do not differ in nature or purpose
from the actual or envisaged prior use; this right may be transferred
or devolve only together with the enterprise or business, or with
that part of the enterprise or business, in which the use or
preparations for use have been made.
(5)
(a) Where the public interest, in particular, national security, nutrition,
health or the development of other vital sector of the national
economy so require, the Minister may decide that, even without the
permission of the patentee, a government agency or a third person
designated by the Minister may exploit the invention, subject to the
payment of an equitable remuneration to the patentee.
(b) The decision of the Minister with regard to remuneration may be
the subject of an appeal before the Court.
14 Duration annual fees.
(1) Subject to subsection (2), a patent shall expire 20 years after the filing
date of the application for the patent.
(2) In order to maintain the patent or patent application, an annual fee shall be
paid in advance to the Registrar for each year, starting one year after the
filing date of the application for the grant of the patent. A period of grace
of six months shall be allowed for the late payment of the annual fee on
payment of the prescribed surcharge. If an annual fee is not paid in
accordance with the provisions of this subsection, the patent application
shall be deemed to have been withdrawn or the patent shall lapse.
15 Non-voluntary licences.
(1) On the request of any person who proves his ability to work a patented
invention in Tonga made to the Registrar after the expiration of a period
of four years from the date of filing of the patent application or three years
from the date of the grant of the patent, whichever period expires last, the
Registrar may grant a non-voluntary licence if the patented invention is
not worked or is insufficiently worked in Tonga.
(2) Notwithstanding subsection (1), a non-voluntary licence shall not be
granted if the patentee satisfies the Registrar that circumstances exist
Section 16 Industrial Property Act 1994
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which justify the non-working or insufficient working of the patented
invention in Tonga. Importation shall not constitute such a circumstance.
(3) The beneficiary of the non-voluntary licence shall have the right to
exploit, other than to import, the patented invention in Tonga according to
the terms set down in the decision granting the licence and, shall
commence the working of the patented invention in Tonga within the time
limit fixed in the said decision and, thereafter, shall work the patented
invention sufficiently in Tonga, subject to the payment of an equitable
remuneration therefore as determined in the said decision.
(4) The grant of the non-voluntary licence shall not exclude, —
(a) the conclusion of a licence contract by the patentee or the grant of
other non-voluntary licences; or
(b) the exploitation of the patented invention under section 13(5).
16 Invalidation.
(1) Any interested person may request the court to invalidate a patent.
(2) The court shall invalidate the patent if the person requesting the
invalidation proves that any of the requirements of sections 3, 4, 5, and
7(4), 7(5), 7(6) and 7(7) are not fulfilled or if the patentee is not the
inventor or his successor in title.
(3) Any invalidated patent, or claim or part of a claim, shall be regarded as
null and void ab initio.
(4) The final decision of the court shall be notified to the Registrar who shall
record it and publish the decision as soon as possible.
PART III - UTILITY MODEL CERTIFICATES
17 Applicability of provisions pertaining to patents.
(1) Subject to section 18, the provisions of Part II shall apply, mutatis
mutandis, to utility model certificates or applications therefore, as the case
may be.
(2) Where the right to a patent conflicts with the right to a utility model
certificate in the case referred to in section 6(3), the said provision shall
apply as if the word “patent” were replaced by the words “patent or utility
model certificate.”
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18 Special provisions pertaining to utility model certificates.
(1) An invention qualifies for a utility model certificate if it is new and is
industrially applicable.
(2) Sections 5(1) and 5(5) shall not apply in the case of inventions for which
utility model certificates are requested.
(3) A utility model certificate shall expire, without possibility of renewal, at
the end of the seventh year after the date of the filing of the application.
(4) Section 14 shall not apply in the case of a utility model certificate.
(5) In proceedings under section 16, the court shall invalidate the utility
model certificates on the following grounds —
(a) that the claimed invention did not qualify for a utility model
certificate, having regard to subsection (1) and to sections 5(2),
5(3), 5(4), 5(6) and 5(8);
(b) that the description and the claims do not comply with the
requirements of sections 7(4), 7(5), and 7(6);
(c) that any drawing which is necessary for the understanding of the
invention has not been furnished;
(d) that the owner of the utility model certificate is not the inventor or
his successor in title.
(6) Section 16(2) shall not apply in the case of utility model certificates.
19 Conversion of applications of patent or utility model certificates.
(1) At any time before the grant or rejection of a patent, an applicant for a
patent may, upon payment of the prescribed fee, convert his application
into an application for a utility model certificate, which shall be accorded
the filing date of the initial application.
(2) At any time before the grant or rejection of a utility model certificate, an
applicant for a utility model certificate may, upon payment of the
prescribed fee, convert his application into a patent application, which
shall be accorded the filing date of the initial application.
(3) An application may not be converted under subsection (1) more than once.
PART IV - INDUSTRIAL DESIGNS
20 Registrable industrial designs.
(1) An industrial design is registrable if it is new.
Section 21 Industrial Property Act 1994
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(2) An industrial design shall be new if it has not been disclosed to the
public —
(a) anywhere in the world by publication in tangible form; or
(b) in Tonga, by description or by use or in any other way, prior to the
filing date or, where applicable, prior to the priority date of the
application for registration.
(3) For the purposes of subsection (2), disclosure to the public of an industrial
design shall not be taken into consideration if it occurred within twelve
months preceding the filing date or, where applicable, the priority date of
the application, and if it was by reason or in consequence of acts
committed by the applicant or his predecessor in title or of an abuse
committed by a third party with regard to the applicant or his predecessor
in title.
(4) Industrial designs that are contrary to public order or morality shall not be
registrable.
21 Right to registration of industrial designs; naming of creator.
(1) The right to registration of an industrial design shall belong to the creator
of that industrial design.
(2) If two or more persons have jointly created an industrial design, the right
to the registration of the industrial design shall belong to them jointly.
(3) If and to the extent to which two or more persons have created the same
industrial design independently of each other, the person whose
application has the earliest filing date or, if priority is claimed, the earliest
validly claimed priority date and leads to the issue of a certificate of
registration of the industrial design shall have the right to the registration
of the industrial design.
(4) The right to the registration of an industrial design may be assigned, or
may be transferred by succession.
(5) Where an industrial design is made in execution of an employment
contract, the right to the registration of the industrial design shall belong,
in the absence of contractual provisions to the contrary, to the employer.
(6) When an industrial design is made in execution of a commission or an
employment contract, the right to the registration of the industrial design
shall belong, in the absence of contractual provisions to the contrary, to
the person having commissioned the work or to the employer, as the case
may be.
(7) When the industrial design has an economic value much greater than the
parties could have reasonably foreseen at the time of concluding the
Industrial Property Act 1994 Section 22
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contract the person who created the industrial design shall have a right to
equitable remuneration, which shall be determined by the court in the
absence of agreement between the parties.
(8) Notwithstanding subsections (6) and (7), when an employee, whose
employment contract does not require him to engage in inventive activity,
makes, in the field of activities of his employer, an industrial design by
using data or means available to him through his employment, the right to
registration of that industrial design shall belong, in the absence of
contractual provisions to the contrary, to the employer:
Provided that the employee shall have a right to equitable remuneration
taking into account his salary, the economic value of the industrial design
and any benefit derived from the creation of such industrial design by the
employer. In the absence of agreement between the parties, the
remuneration shall be determined by the court.
(9) Any contractual provision which is less favourable to the creator of the
industrial design than the provisions of this section shall be null and void.
(10) The creator of the industrial design shall be named as such in the
registration of the industrial design, unless in a special written declaration
addressed to the Registrar, he indicates that he wishes not to be named.
Any promise or undertaking by the creator made to any person to the
effect that he will make such a declaration shall be without legal effect.
22 Application.
(1) The application for registration of an industrial design shall be filed with
the Registrar and shall contain a request, drawings, photographs or other
adequate graphic representations of the article embodying the industrial
design and an indication of the kind of products for which the industrial
design is to be used. It may be accompanied by a specimen of the article
embodying the industrial design and shall be accompanied by the payment
of the prescribed fee.
(2) Where the applicant is not the creator, the request shall be accompanied
by a statement justifying the applicant's right to the registration of the
industrial design.
(3) Section 9 shall apply mutatis mutandis to applications for registration of
industrial designs under this section.
(4) The applicant may withdraw the application at any time before grant.
Section 23 Industrial Property Act 1994
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23 Examination; registration of industrial design.
(1) The Registrar shall accord as the filing date the date of receipt of the
application together with the application fee:
Provided that, at the time of receipt, the application contains the name of
the applicant and a pictorial representation of the article embodying the
industrial design or a specimen thereof. Section 11(2) shall apply mutatis
mutandis to the application under this subsection.
(2) After according a filing date, the Registrar shall examine whether the
application complies with the requirements of sections 22(1) and 22(2).
(3) The Registrar shall examine whether the industrial design complies with
the definition as contained in section 2 and whether it meets the
requirements of section 20(4).
(4) Where the Registrar finds that the conditions referred to in subsections (2)
and (3) are fulfilled, he shall register the industrial design, publish the fact
of the registration and issue to the applicant a certificate of registration of
the industrial design. Otherwise, he shall reject the application.
24 Rights conferred by registration; duration and renewal.
(1) Exploitation in respect of an industrial design means the making, selling
or importation of articles, incorporating the industrial design.
(2) The exploitation of a registered industrial design in Tonga by persons
other than the registered owner shall require the permission of the owner.
(3) The rights conferred by registration of an industrial design shall not
extend to acts in respect of articles which have been put on the market in
Tonga by the registered owner of the industrial design or with his consent.
(4) The registered owner of an industrial design shall, in addition to any other
rights, remedies or actions available to him, have the right to institute
court proceedings against any person who exploits the industrial design or
who performs acts which make it likely that infringement will occur.
(5) The registration of an industrial design shall be for a period of five years
from the filing date of the application for registration. The registration
may be renewed for two further consecutive periods of five years through
the payment of the prescribed fee. A period of grace of six months shall
be allowed for the late payment of the renewal fee on payment of the
prescribed surcharge.
Industrial Property Act 1994 Section 25
No. 19 of 1994
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25 Invalidation.
(1) Any interested person may request the court to invalidate the registration
of an industrial design.
(2) The court shall invalidate the registration if —
(a) the person requesting the invalidation proves that,
(i) the industrial design is not an industrial design as defined in
section 2; or
(ii) any of the requirements of section 20 are not complied with;
or
(b) the registered owner of the industrial design is not the creator or his
successor in title.
(3) An invalidated registration of an industrial design shall be regarded as null
and void ab initio.
(4) The final decision of the court shall be notified to the Registrar who shall
record it and publish a reference thereto.
PART V - MARKS, COLLECTIVE MARKS AND TRADE
NAMES
26 Acquisition of the exclusive right to a mark; registrability.
(1) The exclusive right to a mark shall be acquired by registration in
accordance with this Act.
(2) A mark cannot be validly registered —
(a) if it is incapable of distinguishing the goods or services of one
enterprise from those of other enterprises;
(b) if it is contrary to public order or morality;
(c) if it is likely to mislead the public or trade circles, in particular as
regards the geographical origin of the goods or services concerned
or their nature or characteristics;
(d) if it is identical with, or is an imitation of, or contains as an element,
an armorial bearing, flag and other emblem, a name or abbreviation
or initial of the name of, or official sign or hall mark adopted by, a
state, inter-governmental organization or organization created by an
international convention, unless authorised by the competent
authority of that State or organization;
Section 27 Industrial Property Act 1994
No. 19 of 1994 Page 20
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(e) if it is identical with, or confusingly similar to, or constitutes a
translation of, a mark or trade name which is well known in Tonga
for identical or similar goods or services of another enterprise; or
(f) if it is identical with a mark belonging to a different proprietor and
already on the Register, or with an earlier filing or priority date, in
respect of the same goods or services, or closely related goods or
services, or if it so nearly resembles such a mark as to be likely to
deceive or cause confusion.
27 Application for registration
(1) The application for registration of a mark shall be filed with the Registrar
and shall contain a request, a reproduction of the mark and a list of the
goods or services for which registration of the mark is requested, listed
under the applicable class or classes of the International Classification. It
shall be accompanied by the payment of the prescribed application fee.
(2) The application may contain a declaration claiming the priority, as
provided for in the Paris Convention, of an earlier national or regional
application filed by the applicant or his predecessor in title, in which case,
the Registrar may require that the applicant furnish, within the prescribed
time limit, a copy of the earlier application, certified as correct by the
office with which it was filed.
(3) The effect of the said declaration shall be as provided in the Paris
Convention.
(4) If the Registrar finds that the requirements under subsection 3 have not
been fulfilled, the said declaration shall be considered not to have been
made.
(5) The applicant may withdraw the application at any time before grant.
28 Examination; opposition; registration of mark.
(1) The Registrar shall examine whether the applications complies with the
requirements of section 27(1).
(2) The Registrar shall examine and determine whether the mark is a mark as
defined in section 2 and is registrable under section 26(2)(a) to (f).
(3) Where the Registrar finds that the conditions referred to in subsections (1)
and (2) are fulfilled, he shall forthwith cause the application, as accepted,
to be published in the prescribed manner.
(4) Any interested person may, within the prescribed period and in the
prescribed manner, give notice to the Registrar of opposition to the
registration of the mark on grounds that one or more of the requirements
Industrial Property Act 1994 Section 29
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of section 2, relating to the definition of a mark, or section 26(2) are not
fulfilled.
(5) The Registrar shall send forthwith a copy of a notice under the prescribed
subsection to the applicant, and, within the prescribed period and in the
prescribed manner, the applicant shall send to the Registrar a counter-
statement of the grounds on which he relies for his application. If he does
not do so, he shall be deemed to have abandoned the application.
(6) On receiving a counter-statement from the applicant, the Registrar shall
furnish a copy thereof to the person giving notice of opposition and, after
hearing the parries, if either or both wish to be heard, and considering the
merits of the case, shall decide whether the mark should be registered.
(7) After the application is published and until the registration of the mark,
the applicant has the same privileges and rights as he would have if the
mark had been registered:
Provided that it shall be a valid defence to an action brought hereunder in
respect of an act done after the application was published, if the defendant
establishes that the mark could not validly have been registered at the time
the act was done.
(8) If the Registrar is satisfied that the conditions referred to in subsections
(1) and (2) are fulfilled, and —
(a) the registration of the mark has not been opposed within the
prescribed time limit; or
(b) the registration of the mark has been opposed and the opposition
has been decided in the applicant's favour;
the Registrar shall register the mark, publish the fact of the registration
and issue to the applicant a certificate of registration.
29 Rights conferred by registration; duration; renewal.
(1) The use of a registered mark, in relation to any goods or services for
which it has been registered, by any person other than the registered
owner shall require the permission of the owner.
(2) The registered owner of a mark shall, in addition to any other rights,
remedies or actions available to him, have the right to institute court
proceedings against any person who infringes the mark by using, without
his agreement, the mark as referred to in subsection (1) or who performs
acts which make it likely that infringement will occur. The right shall
extend to the use of a sign similar to the registered mark and to the use in
relation to goods and services similar to those for which the mark has
been registered, where the effect may mislead the public.
Section 30 Industrial Property Act 1994
No. 19 of 1994 Page 22
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(3) The rights conferred by registration of a mark shall not extend to acts in
respect of articles which have been put on the market in Tonga by the
registered owner or with his consent.
(4) The registration of a mark shall be for a period of ten years from the filing
date of the application for registration. The registered mark may be
renewed for consecutive periods of ten years, provided that the registered
proprietor pays the prescribed renewal fee. A period of grace of six
months shall be allowed for the late payment of the renewal fee on
payment of the prescribed surcharge.
30 Invalidation; and removal on grounds of non-use.
(1) Any interested person may request the Registrar to invalidate the
registration of a mark.
(2) The Registrar shall invalidate the registration if the person requesting the
invalidation proves that,
(a) any of the requirements of a mark as defined in section 2; or
(b) any of the requirements of section 26(2) are not fulfilled.
(3) Any invalidation of a registration of a mark shall be deemed to have been
effective as of the date of registration, and it shall be recorded and a
reference thereto shall be published as soon as possible.
(4) Any interested person may request the Registrar to remove a mark from
the Register, in respect of any of the goods or services for which it is
registered, on the grounds that, up to one month prior to filing the request,
the mark had, after its registration, not been used by the registered owner
or a licensee during a continuous period of three years or longer;
Provided that a mark shall not be removed if it is shown that special
circumstances prevented the use of the mark and that there was no
intention not to use or to abandon the same in respect of those goods or
service.
31 Collective mark.
(1) Subject to subsections (2) and (3), the provisions of sections 26 to 30
relating to marks shall apply to collective marks.
(2) An application for registration of a collective mark shall designate the
mark as a collective mark and shall be accompanied by a copy of the
conditions governing the use of the collective mark.
(3) The registered owner of a collective mark shall notify the Registrar of any
changes made in respect of the condition referred to in subsection (2).
Industrial Property Act 1994 Section 32
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(4) In addition to the grounds provided in section 30(2), the Registrar shall
invalidate the registration of a collective mark if the person requesting the
invalidation proves that only the registered owner uses the mark, or that
he uses or permits its use in contravention of the conditions referred to in
subsection (2) or that he uses or permits its use in a manner liable to
mislead trade circles or the public as to the origin or any other common
characteristics of the goods or services concerned.
32 Licensing of marks and collective marks.
(1) Any licence contract concerning the registration of a mark, or an
application therefore, shall provide for effective control by the licensor of
the quality of the goods or services of the licensee in connection with
which the mark is used. If the licence contract does not provide for such
quality control or if such quality control is not effectively carried out, the
licence contract shall not be valid and the exclusive right referred to in
section 29(1) and (2) may not be exercised.
(2) The registration of a collective mark, or an application therefore, may not
be the subject of a licence contract.
33 Trade names.
(1) A name or designation may not be used as a trade name if by its nature or
the use to which it may be put, it is contrary to public order or morality
and if, in particular, it is liable to mislead trade circles or the public as to
the nature of the enterprise identified by that name.
(2) Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or
without registration, against any unlawful act committed by third parties.
(3) In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such use of a
similar trade name or mark, likely to mislead the public shall be deemed
unlawful.
PART VI - ACTS OF UNFAIR COMPETITION
34 Acts of unfair competition.
(1) Any act of competition contrary to honest practices in industrial or
commercial matters shall be unlawful.
Section 35 Industrial Property Act 1994
No. 19 of 1994 Page 24
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(2) The following acts, in particular, shall be deemed to constitute acts of
unfair competition, —
(a) all acts of such nature as to create confusion by any means
whatever with the establishment, the goods, or the industrial or
commercial activities of a competitor;
(b) false allegations in the course of trade of such nature as to discredit
the establishment, the goods, or the industrial or commercial
activities, of a competitor;
(c) indications or allegations the use of which in the course of trade is
likely to mislead the public as to the nature, the manufacturing
process, the characteristics, the suitability for their purpose, or the
quantity of goods.
PART VII - GENERAL PROVISIONS
35 Representation by agent.
Where the applicant’s ordinary residence or principal place of business is outside
Tonga, he shall be represented by an agent.
36 Changes in ownership; licence contracts.
(1) Any change in the ownership of a patent, utility model, industrial design,
mark or collective mark shall be in writing and shall, at the request of any
interested party to the Registrar, be recorded and, except in the case of an
application, be published by the Registrar. Such change shall have no
effect against third parties until it is recorded.
(2) Any change in the ownership of a collective mark, shall require previous
approval by the Minister.
(3) Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or the part thereof identified by that name and
shall be in writing.
(4) A change in the ownership of a mark or in the ownership of a collective
mark shall, however, be invalid if it is likely to deceive or confuse,
particularly in regard to the nature, origin, manufacturing process,
characteristics, or suitability for their purpose, of the goods or services in
relation to which the mark or collective mark is intended to be used or is
being used.
(5) Any licence contract concerning a patent, a utility model certificate, a
registered industrial design or a registered mark, or an application
Industrial Property Act 1994 Section 36
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therefore, shall, be submitted to the Registrar who shall keep its contents
confidential but record it and publish the fact of having recorded such
licence contract. Any such licence contract shall be deemed to be invalid
until submitted to the Registrar.
(6) Where the Registrar, after consultation with the Minister, is of the opinion
that any clause in a licence contract or relating to such a contract imposes
unjustified restrictions on the licensee with the consequence that the
contract, taken as a whole, is harmful to the economic interests of Tonga,
the Registrar shall notify the parties to the contract accordingly and invite
them to modify the contract so that it does not impose such restrictions
and, if they fail to do so, he shall declare the clause to be invalid from the
date of notification.
(7) For the purposes of this Act, “unjustified restrictions” are restrictions
which entail for the licensee, in the industrial or commercial field,
restrictions not deriving from the rights conferred by the grant of a patent
or a utility model certificate or the registration of an industrial design or a
mark or restrictions unnecessary for the safeguarding of those rights.
(8) In the examination of licence contracts relating to patents and utility
model certificates under subsection (6), the Registrar shall take into
consideration, in particular, any clause contained in a contract the effect of
which would be,
(a) to import technology from abroad when substantially similar or
equivalent technology may be obtained on the same or more
favourable conditions without any importation of the technology
from abroad;
(b) to oblige the licensee to give consideration which is
disproportionate to the value of the technology to which the
contract relates;
(c) to oblige the licensee to acquire any materials from the licensor or
from sources designated or approved by the licensor unless it is
otherwise impossible, for all practical purposes, to ensure the
quality of the products to be produced and provided that the said
materials are supplied at a reasonable price;
(d) to restrict the licensee's freedom to acquire any materials from any
source, unless it is otherwise impossible, for all practical purposes,
to ensure the quality of the products to be produced;
(e) to restrict the licensee's freedom to use any materials which are not
supplied by the licensor or by sources designated or approved by
the licensor, unless it is otherwise impossible, for all practical
purposes, to ensure the quality of the products to be produced;
(f) to oblige the licensee to sell the products produced by him
exclusively or principally to persons designated by the licensor;
Section 37 Industrial Property Act 1994
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(g) to oblige the licensee to make available to the licensor, without
appropriate consideration, any improvements made by the licensee
with respect to the technology to which the contract relates;
(h) to limit the quantity of the products produced by the licensee;
(i) to restrict the licensee's freedom to export or to allow others to
export the products produced by him, provided that such restriction
may be justified if the licensor owns in a country to which such a
restriction applies, a patent which would be infringed in case of
importation of the said products into the said country, if the licensor
has a contractual obligation not to allow others to export the said
products to such a country or if the licensor already supplies the
market in such a country with the same products;
(j) to oblige the licensee to employ persons designated by the licensor
not needed for the efficient transfer of the technology to which the
contract relates;
(k) to impose restrictions on research or technological development
carried out by the licensee;
(l) to restrict the licensee's freedom to use any technology other than
the technology to which the contract relates;
(m) to extend the coverage of the contract to technology not required to
achieve the objective of the contract and to oblige the licensee to
give consideration for such technology;
(n) to fix prices for the sale or resale of the products produced by the
licensee;
(o) to exempt the licensor from any liability resulting from any defect
inherent in the technology to which the contract relates or to restrict
such liability unreasonably;
(p) to restrict the licensee's freedom to use, after the expiration of his
contractual obligations, the technology acquired as a result of the
contract, subject, however, to any right of the licensor under a
patent;
(q) to establish the duration of the contract for a period which is
unreasonably long in relation to the economic function of the
contract, provided that any period which does not exceed the
duration of the patent to which the contract relates shall not be
regarded as unreasonably long.
37 Registrar.
(1) His Majesty in Privy Council may from time to time appoint some person
to be the Registrar of Industrial Property, and may make regulations,
Industrial Property Act 1994 Section 38
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consistent with this Act, prescribing the duties and powers of the
Registrar.
(2) The Registrar so appointed may hold his office in conjunction with any
other office which His Majesty in Privy Council deems not incompatible
therewith.
38 Functions of the Registrar.
(1) The Registrar shall, —
(a) grant patents and utility model certificates;
(b) register industrial designs, marks and collective marks; and
(c) perform such other duties and exercise such powers as are
conferred by this Act or the regulations made thereunder.
(2) Decisions of the Registrar shall be signed and sealed by the Registrar or
an official designated by him.
(3) The Minister shall determine the organizational structure and the financial
and budgetary systems of the Registry.
39 Registers, Gazette.
(1) The Registrar shall maintain separate registers for patents, utility model
certificates, industrial designs and marks. Collective marks shall be
registered in a special section of the register of marks.
(2) The registers may be consulted by any person and extracts therefrom
obtained by any person, on payment of the prescribed fee.
(3) The Registrar shall publish in the Gazette all matters required to be
published under this Act.
(4) The Registrar shall keep copies as last revised, of the Paris Convention,
the Nice Agreement and any other international agreement referred to in
this Act or in any Regulations made thereunder for public inspection at no
cost.
40 Correction or errors, extension of time.
(1) The Registrar may, subject to any provisions in the regulations, correct
any error of translation or transcription or clerical error in any application
or document filed with the Registrar or in any entry in a register effected
pursuant to this Act or the Regulations.
(2) If the Registrar is satisfied that the circumstances justify it, he may upon
receiving a written request, extend the time for doing any act or taking any
Section 41 Industrial Property Act 1994
No. 19 of 1994 Page 28
to
proceeding under this Act and the regulations made thereunder upon
notice to the parties concerned and upon such terms as he may direct. The
extension may be granted though the time for doing the act or taking the
proceeding has expired.
41 Exercise of discretionary power.
The Registrar shall give any party to a proceeding before him an opportunity to
be heard before exercising adversely to that party any discretionary power vested
in the Registrar by this Act or the regulations.
42 Competence of court.
(1) The court shall have jurisdiction in cases of dispute relating to the
application of this Act and the regulations and in matters which under this
Act are to be referred to the court.
(2) Any decision taken by the Registrar under this Act, in particular, the grant
of a patent or of a utility model certificate or the registration of an
industrial design or of a mark or collective mark, or the rejection of an
application for such a grant or registration, may be the subject of an
appeal by any interested party before the court and such appeal shall be
filed within two months of the date of the decision.
43 Infringement, unlawful acts, offences.
(1) Subject to sections 13(4) and (5), 15, 24(3) and 29(3), an infringement
shall consist of the performance, in Tonga, by any person other than the
owner of the title of protection, without the permission of the owner, of
any act referred to in sections 13, 24 and 29.
(2) On the request of the owner of the title of protection, or of a licensee if he
has requested the owner to institute court proceedings for a specific relief
and the owner has refused or failed to do so, the court may grant an
injunction to prevent infringement, an imminent infringement, or an
unlawful act referred to in sections 33 (2) and (3) and 34, award damages
and grant any other remedy provided for in the general law.
(3) On the request of any competent authority or any interested person,
association or syndicate, the court may grant the same relief in case of an
act of unfair competition referred to in section 34.
(4) Any person who performs an act which constitutes an infringement as
defined in subsection (1) or an unlawful act as defined in sections 33(2)
and (3), and section 34, commits an offence and is liable upon conviction
to a fine of T$5,000 or to imprisonment for a term of 5 years or to both.
Industrial Property Act 1994 Section 44
No. 19 of 1994
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44 Regulations.
(1) The Minister may with the consent of Cabinet make regulations for the
better carrying into effect of the purposes of this Act.
(2) Regulations made under subsection (1) may, in particular, prescribe,
(a) application fees for the grant of patents, utility model certificates
and for the registration of industrial designs, marks and collective
marks;
(b) the fees for copies of patents for the public;
(c) any other fees required under the Act;
(d) the surcharge payable in respect of late payment of maintenance or
renewal fees;
(e) conditions under which a person may obtain extracts from registers
in terms of section 39(2); and
(f) and any other matter required to be prescribed under this Act.
45 Administrative instructions.
The Registrar may issue administrative instructions relating to the procedures
under this Act and the regulations as well as to other functions of his office.
46 Repeal of CAP 120. Savings and transitional provisions.
(1) The Registration of United Kingdom Trade Marks Act is hereby repealed.
(2) A person who, on the date of entry into force of this Act, is the owner of a
trade mark registered in the Registration of United Kingdom Trade Marks
Act (Cap. 120) or has filed an application for registration of a trade mark
under the provisions of the United Kingdom; may within 12 months of
entry into force of this Act, file an application for the registration of a
trade mark under this Act. Such application shall be accorded the filing
date or priority date accorded to the application or registration in the
United Kingdom.
Passed in the Legislative Assembly this 9th day of November, 1994.
