ACT
(Act 22 of 2001)
Act 22 of 2001 .. in force 1 April 2003 (S.I. 16/2003)
ARRANGEMENT OF SECTIONS
PART 1
PRELIMINARY
PART 2
INTERPRETATION
PART 3
TRADE MARKS AND TRADE MARK RIGHTS
| 3. | Categories of trade marks |
| 4. | Rights given by registration of trade marks |
| 5. | Nature of registered trade mark as property |
| 6. | Power of registered owner to deal with trade mark |
| 7. | Limitation on rights for similar trade marks |
| 8. | Trade mark as sign describing article |
| 9. | Trade mark relating to article etc. formerly manufactured under patent |
| 10. | Powers of authorised user of registered trade mark |
PART 4
APPLICATION FOR REGISTRATION
Division 1
General
| 11. | Making of application |
| 12. | Application by joint owners |
| 13. | Claim for priority |
| 14. | Notice of application to be published |
| 15. | Registrar to examine, and report on, application |
| 16. | Registrar to decide on disputed classification of goods etc |
| 17. | Application accepted or rejected |
| 18. | Notice etc. of decision |
| 19. | Appeal |
| 20. | Deferment of acceptance |
| 21. | Lapsing of application |
| 22. | Revocation of acceptance |
Division 2
Grounds for rejecting an application
| 23. | Trade mark containing certain signs |
| 24. | Trade mark that cannot be represented graphically |
| 25. | Trade mark not distinguishing applicant's goods or services |
| 26. | Trade mark scandalous or its use contrary to law |
| 27. | Trade mark likely to deceive or cause confusion |
| 28. | Identical etc. trade marks |
Division 3
Divisional applications
| 29. | Definition of divisional application |
| 30. | Divisional application possible only if initial application is pending |
| 31. | Divisional application for registration of part of trade mark |
| 32. | Divisional application for registration of trade mark in respect of some of goods etc. |
| 33. | Divisional application for registration of trade mark in respect of goods etc. excluded from the initial application |
| 34. | Filing date |
Division 4
Application for registration of series of trade marks
| 35. | Application—series of trade marks |
PART 5
OPPOSITION TO REGISTRATION
Division 1
General
| 36. | Opposition |
| 37. | Proceedings in name of a person other than the person who filed the notice |
| 38. | Opposition proceedings |
| 39. | Decision |
| 40. | Appeal |
Division 2
Grounds for opposing registration
| 41. | Registration may be opposed on same grounds as for rejection |
| 42. | Applicant not owner of trade mark |
| 43. | Applicant not intending to use trade mark |
| 44. | Trade mark similar to trade mark that has acquired a reputation |
| 45. | Trade mark containing or consisting of a false geographical indication |
| 46. | Application etc. defective etc. |
PART 6
AMENDMENT OF APPLICATION FOR REGISTRATION OF A TRADE MARK AND OTHER DOCUMENTS
| 47. | Amendment of application for registration of trade mark |
| 48. | Amendment before notice of application is published |
| 49. | Amendment after notice of application has been published |
| 50. | Amendment of other documents |
| 51. | Appeal |
PART 7
REGISTRATION OF TRADE MARKS
Division 1
Initial registration
| 52. | Obligation to register |
| 53. | Registration—how effected |
| 54. | Colours in registered trade marks |
| 55. | Notification of registration |
| 56. | Date and term of registration |
| 57. | Ceasing of registration |
| 58. | Disclaimers |
Division 2
Renewal of registration Request for renewal
| 59. | request for renewal |
| 60. | Notice of renewal date |
| 61. | Renewal before registration expires |
| 62. | Failure to renew |
| 63. | Renewal within 12 months after registration expires |
| 64. | Status of un-renewed trade mark |
PART 8
AMENDMENT AND CANCELLATION OF REGISTRATION
Division 1
Action by Registrar
| 65. | Correction of register |
| 66. | Adaptation of classification |
| 67. | Amendment of particulars of trade mark entered in Register |
| 68. | Cancellation of registration |
Division 2
Action by court
| 69. | Amendment to correct error or omission |
| 70. | Amendment or cancellation on ground of contravention of condition etc. |
| 71. | Amendment or cancellation—loss or exclusive rights to use trade mark |
| 72. | Amendment or cancellation—other specified grounds |
| 73. | Rectification may not be granted in certain cases if registered owner not at fault etc. |
| 74. | Duties and powers of Registrar |
Division 3
Amendment of certificate of registration
| 75. | Amendment of certificate of registration |
PART 9
REMOVAL OF TRADE MARK FROM REGISTER FOR NON-USE
| 76. | Application for removal of trade mark from Register etc. |
| 77. | Time for making application |
| 78. | Referral to court |
| 79. | Notification of application |
| 80. | Notice of opposition |
| 81. | Removal of trade mark from the Register etc. if application unopposed |
| 82. | Trade mark restored to Register if notice of opposition filed within extended time |
| 83. | Proceedings before Registrar |
| 84. | Burden on opponent to establish use of trade mark etc. |
| 85. | Determination of opposed application-general |
| 86. | Determination of opposed application-localised use of trade mark |
| 87. | Registrar to comply with order of court |
| 88. | Appeal |
| 89. | Certificate—use of trade mark |
PART 10
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
| 90. | Assignment etc. of trade mark |
| 91. | Applications for record to be made of assignment etc. of trade mark whose registration is sought |
| 92. | Recording of assignment etc. of trade mark whose registration is sought |
| 93. | Application for record of assignment etc. of registered trade mark to be entered in Register |
| 94. | Recording of assignment etc. of registered trade mark |
| 95. | Notice of application to be given to person recorded as claiming interest in trade mark etc |
PART 11
VOLUNTARY RECORDING OF CLAIMS TO INTERESTS IN AND RIGHTS IN RESPECT OF TRADE MARKS
Division 1
Preliminary
Division 2
Interests in, and rights in respect of, registered trade marks
| 97. | Application to have claims to interest etc. recorded |
| 98. | Record of claims to interest etc |
| 99. | Amendment and cancellation |
| 100. | Record not proof etc. of existence of right etc |
Division 3
Interests in, and rights in respect of unregistered trade marks
| 101. | Application to have claims to interest etc. recorded |
| 102. | Record of claims to interest etc |
| 103. | Amendment and cancellation |
PART 12
INFRINGEMENT OF TRADE MARKS
| 104. | Infringement of trade mark |
| 105. | Infringement of trade mark by breach of certain restrictions |
| 106. | Goods etc. to which registered trade mark has been applied by or with consent of registered owner |
| 107. | Prior use of identical trade mark etc |
| 108. | What courts may hear action for infringement of registered trade mark |
| 109. | What relief can be obtained from court |
| 110. | Special case—plaintiff not entitled to damages etc |
| 111. | Circumstances in which action may not be brought |
| 112. | Groundless threats of legal proceedings |
| 113. | Counterclaim by defendant in action on groundless threats |
PART 13
IMPORTATION OF GOODS INFRINGING SAINT LUCIAN TRADE MARKS
| 114. | Object of Part |
| 115. | Notice of objection to importation |
| 116. | Comptroller may seize goods infringing trade mark |
| 117. | Notice of seizure |
| 118. | Forfeiture of goods |
| 119. | Release of goods to owner-no action for infringement |
| 120. | Action for infringement of trade mark |
| 121. | Action for infringement by authorised user |
| 122. | Disposal of forfeited goods |
| 123. | Power of Comptroller to retain control of goods |
| 124. | Insufficient security |
| 125. | Government not liable for loss etc. suffered because of seizure |
| 126. | Power to require information |
PART 14
OFFENCES
| 127. | Falsifying etc. a registered trade mark |
| 128. | Falsely applying a registered trade mark |
| 129. | Manufacture and possession of die etc. for use in commission of offence |
| 130. | Selling etc. goods with false marks |
| 131. | Penalty for offence under section 127, 128, 129 or 130 |
| 132. | False representations regarding trade marks |
| 133. | False entries in Register etc |
| 134. | Disobeying summons etc |
| 135. | Refusing to give evidence etc |
| 136. | Unauthorised persons not to act in trade mark matters |
| 137. | False representation about Registry of Companies and Intellectual Property |
| 138. | Employee not to prepare documents etc |
| 139. | Conduct of directors, servants and agents |
PART 15
COLLECTIVE TRADE MARKS
| 140. | Object of Part |
| 141. | Collective trade mark |
| 142. | Application of Act |
| 143. | Application for registration |
| 144. | Limitation on rights given by registered collective trade mark |
| 145. | Assignment etc. of collective trade mark |
| 146. | Infringement of collective trade mark |
PART 16
CERTIFICATION TRADE MARKS
| 147. | Object of Part |
| 148. | Certification trade mark |
| 149. | Application of Act |
| 150. | Rights given by registration of a certification trade mark |
| 151. | Rights of persons allowed to use certification trade mark |
| 152. | Rules governing the use of certification trade marks |
| 153. | Grant of application to register |
| 154. | Refusal to register |
| 155. | Variation of rules |
| 156. | Rules to be available for inspection |
| 157. | Assignment of registered certification trade mark |
| 158. | Rectification of the Register by order of court |
| 159. | Variation of rules by order of court |
| 160. | Copy of order and rules |
PART 17
DEFENSIVE TRADE MARKS
| 161. | Object of Part |
| 162. | Defensive trade mark |
| 163. | Application of Act |
| 164. | Additional grounds for rejecting application for registration or opposing registration |
| 165. | Amendment or cancellation of registration by order of court |
| 166. | Cancellation of registration by Registrar |
PART 18
JURISDICTION AND POWERS OF COURTS
| 167. | Jurisdiction of the High Court |
| 168. | Transfer of proceedings |
| 169. | Appeals |
| 170. | Registrar may appear in appeals |
| 171. | Powers of High Court |
PART 19
ADMINISTRATION
| 172. | Registrar of Companies and Intellectual Property |
| 173. | Registrar's powers |
| 174. | Exercise of power by Registrar |
| 175. | Registrar to act as soon as practicable |
| 176. | Deputy Registrar |
| 177. | Delegation of Registrar's powers and functions |
PART 20
THE REGISTER AND OFFICIAL DOCUMENTS
| 178. | The Register |
| 179. | Register may be kept on computer |
| 180. | Inspection of Register |
| 181. | Register |
| 182. | Certified copies of documents |
PART 21
MISCELLANEOUS
Division 1
Applications and other documents
| 183. | Making and signing applications etc |
| 184. | Filing of documents |
| 185. | Withdrawal of application etc |
| 186. | Address for service |
| 187. | Change of name |
| 188. | Death of applicant etc |
Division 2
Proceedings before the Registrar or a court
| 189. | Description of registered trade mark |
| 190. | Evidence of trade usage |
| 191. | Death of party to proceeding before Registrar |
| 192. | Costs awarded by Registrar |
| 193. | Security for costs |
Division 3
General
| 194. | Fees |
| 195. | Extension of time |
| 196. | Publication of documents |
| 197. | Use of trade mark for export trade |
| 198. | Passing off actions |
| 199. | Expenses |
| 200. | Regulations |
| 201. | Transitional |
AN ACT to provide for the promotion and protection of trade marks and for related matters.
Commencement [1 April 2003]