Long Title

Part I PRELIMINARY

Part II REGISTRATION OF TRADE MARKS

Introductory

Application for registration of trade mark

Grounds for refusal of registration

Priority

Registration procedure

Series of trade marks

Duration, renewal and alteration of registered trade mark

Cancellation, revocation and invalidity

Miscellaneous

Part III RIGHTS AND REMEDIES OF PROPRIETOR OF REGISTERED TRADE MARK

Rights of proprietor of registered trade mark

Infringement proceedings

Part IV REGISTERED TRADE MARK AS OBJECT OF PROPERTY

Part V LICENSING

Part VI OFFENCES

Part VII INTERNATIONAL MATTERS

The Madrid Protocol, etc.

The Paris Convention, the TRIPS Agreement and well known trade marks: supplementary provisions

Part VIII COLLECTIVE MARKS AND CERTIFICATION MARKS

Part IX ADMINISTRATIVE AND OTHER SUPPLEMENTARY PROVISIONS

The Registrar

The Register

Powers and duties of Registrar

Forms, fees, hours of business and publication

Trade mark agents

Part X ASSISTANCE BY BORDER AUTHORITIES

Border enforcement measures

Powers of search

Part XI MISCELLANEOUS AND GENERAL PROVISIONS

FIRST SCHEDULE Collective Marks

SECOND SCHEDULE Certification Marks

THIRD SCHEDULE Transitional Provisions

Legislative Source Key

Legislative History

Comparative Table

PART XI
MISCELLANEOUS AND GENERAL PROVISIONS
Registration to be prima facie evidence
101.  In all legal proceedings relating to a registered trade mark or any right thereunder (including proceedings for rectification of the register) —
(a)
the register shall be prima facie evidence of anything contained therein;
(b)
the registration of the prescribed particulars of any registrable transaction under section 39 shall be prima facie evidence of the transaction; and
(c)
the registration of a person as proprietor of a registered trade mark shall be prima facie evidence of —
(i)
the validity of the original registration; and
(ii)
any subsequent assignment or other transmission of the registration.
[20/2004]
Certificate of validity of contested registration
102.
—(1)  If in proceedings before the Court the validity of the registration of a trade mark is contested and it is found by the Court that the trade mark is validly registered, the Court may give a certificate to that effect.
(2)  If the Court gives such a certificate and in subsequent proceedings —
(a)
the validity of the registration is again questioned; and
(b)
the proprietor obtains a final order or judgment in his favour,
he is entitled to his costs as between solicitor and client unless the Court directs otherwise.
(3)  Subsection (2) does not extend to the costs of an appeal in any such proceedings.
[UK Trade Marks Act 1994, s. 73]
Certificate of Registrar
103.  A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing which he is authorised to make or do under this Act, 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 not done.
[Trade Marks 1992 Ed., s. 59]
Costs of proceedings before Court
104.  In all proceedings before the Court under this Act, the Court may award to any party (including the Registrar) such costs as it may consider reasonable, but the Registrar shall not be ordered to pay the costs of any other of the parties.
[Trade Marks 1992 Ed., s. 56]
Burden of proving use of trade mark
105.  If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.
[UK Trade Marks Act 1994, s. 100]
Composition of offences
105A.
—(1)  The Registrar or any person authorised by him in writing may, in his discretion, compound any offence under this Act which is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum of money not exceeding $2,000.
[3/2001]
(2)  The Office may, with the approval of the Minister, make regulations to prescribe the offences which may be compounded.
[3/2001]
(3)  On payment of such sum of money, no further proceedings shall be taken against such person in respect of the offence.
[3/2001]
(4)  All sums collected under this section shall be paid into the funds of the Office.
[3/2001]
Jurisdiction of Courts
106.  A District Court or a Magistrate’s Court shall have jurisdiction to hear and determine all offences under this Act and, notwithstanding anything to the contrary in the Criminal Procedure Code (Cap. 68), shall have power to impose the full penalty or punishment in respect of any such offence.
[Trade Marks 1992 Ed., s. 73D]
Offence committed by partnership or body corporate
107.
—(1)  Proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners; but without prejudice to any liability of the partners under subsection (3).
(2)  A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.
(3)  Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.
(4)  Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.
[UK Trade Marks Act 1994, s. 101]
Power to make rules
108.
—(1)  The Minister may make rules —
(a)
for any purpose for which rules are authorised or required to be made under this Act;
(b)
for prescribing matters authorised or required by this Act to be prescribed;
(c)
for prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act;
(d)
for prescribing matters necessary or convenient to be prescribed for the conduct of any proceedings or other matter before the Registrar.
[3/2001]
(2)  Without prejudice to the generality of subsection (1), the rules may make provision —
(a)
as to the practice and procedure of any proceedings or other matter before the Registrar;
(b)
as to the manner of filing of applications or other documents;
(c)
requiring persons to make such statutory declarations as may be prescribed in support of any application, notice or request;
(d)
requiring and regulating the translation of documents and the filing and authentication of any translation;
(e)
as to the service of documents;
(f)
authorising the rectification of irregularities of procedure;
(g)
prescribing time limits for anything required to be done in connection with any proceedings under this Act;
(h)
for the extension of any time limit which has been prescribed, or which the Registrar has specified, and which has not expired;
(i)
as to the giving of evidence in proceedings before the Registrar under this Act by affidavit or statutory declaration; and
(j)
for the reinstatement of —
(i)
any application which is treated as withdrawn; or
(ii)
any right which has been abrogated, or thing which has ceased to be in force or to exist, by reason of a failure to comply with any time limit which has been prescribed or which the Registrar has specified,
and the conditions for such reinstatement.
[UK Trade Marks Act 1994, s. 78]
Transitional provisions
109.
—(1)  The provisions of the Third Schedule have effect with respect to transitional matters on 15th January 1999.
(2)  The Minister may, by order published in the Gazette, amend the Third Schedule to make such further transitional provisions as he may consider necessary and expedient.